2017 January Patent Prosecution Lunch

2. New Post-Prosecution Pilot (P3)
• Combines features
– Pre-Appeal Brief Review Conference Pilot (Pre-
Appeal)
– After Final Consideration Pilot Program (AFCP)
• Post-Prosecution Pilot (P3)
– Submit Proposed After Final Amendment for
Consideration by a Panel of Examiners
– Opportunity to Present to Panel (in person/phone)
– Panel Provide Brief Written Summary
 Claim status
 Reasoning for maintaining rejection
See, http://www.uspto.gov/patent/initiatives/post-prosecution-pilot

3. eMod Text Pilot Program
• eMod = Future EFS & PAIR
• Benefits
– Upload Applications (and other documents
eventually) as Word/text documents (.docx)
– Download documents as Word/text documents
(e.g., Office Actions)
• eMod Pilot Program Open
– BUT need to apply to the whole customer
number

4. eMod Text Pilot Program- Requirements
• Access to EFS-Web.
• Registered eFiler- opted into the eMod Text
Pilot Program via Customer Number.
• Registered eFilers may save a submission as
a work-in-progress for up to 7 days.
• Text intake feature
– Only available for new Utility Nonprovisional
submissions.
– Unavailable for all other submission types.
• All required fields must be completed in order
to proceed with the submission. The required
fields are indicated with an asterisk.

5. eMod Text Pilot Program- Requirements
• Open XML Word Processors (.docx)
– Microsoft Word 2007 or higher
– Google Docs
– Office Online
– LibreOffice
– Pages for Mac
• Specification, Claims, and Abstract submitted
as text (separately?)

6. eMod Text Pilot Program- EFS

7. eMod Text Pilot Program- EFS
• Warning Messages (yellow) for:
– Track changes,
– Comments*
– Bookmarks*
– Hidden Items*
– Continuous line numbering*
– Text decorations*
– Unused invalid fonts*
– Unnecessary document properties*
• *The system will automatically make changes
to the document.

8. eMod Text Pilot Program- EFS
• Warning Messages (yelllow) for:
– Abstract word count over 150
– Unsupported OLE Objects (Supported OLE
Objects include Visio.Drawing 11,
Equation.DSMT4, ACD.ChemSketch.20,
ChemDraw.Document.6.0, Equation.3)

9. eMod Text Pilot Program- EFS
• Unable to Proceed further (red warning):
– Duplicate application parts
– Invalid Page Size – cannot exceed Letter or A4
– Contains Content control
– Contains Custom XML
– Invalid font

10. eMod Text Pilot Program- EFS
• Valid/Recommended Fonts:
– Georgia
– Times New Roman
– Arial
– Arial Black
– Arial Narrow
– Arial Rounded MT Bold
– Tahoma
– Verdana
– Trebuchet MS
– Courier New
– Calibri

11. eMod Text Pilot Program- PAIR

12. eMod Text Pilot Program- EFS
• Download Outgoing Correspondence
(e.g., Office Actions)

13. BREXIT & European Unitary Patent and
Unitary Patent Court
• UK government has confirmed it is proceeding
with preparations to ratify the Unified Patent
Court Agreement. (28-Nov-2016)
• https://www.gov.uk/government/news/uk-
signals-green-light-to-unified-patent-court-
agreement

14. Inauguration- USPTO Changes
• USPTO Political Appointees Will
Resign by Inauguration
(Jan 20, 2017)
– Director- Michelle Lee???
– Deputy Director- Russ Slifer
– Chief of Staff- Vikrum Aiyer
– Chief Communications Officer-
Patrick Ross (Jan 19)
– Plus a few others
• Commissioner for Patents- Drew
Hirshfeld will then be Acting Director
for the USPTO.

15. India Changes
• India’s new law is now similar to Australia in
that they have a date of 6 months (previously
12 months) from the first official action for
putting an application in order for grant.
• There is an extendable period of 3 months, if
the extension of time & fee is paid before the
expiration of the 6 months’ time.
• Docketing
– 6-month deadline for the application to be in
order for grant.
– 1-month from the mail date of the examination
report to respond to the examination report
(“instructions due – soft deadline”).

16. India Changes
• Previously in India, the claims could not be
amended at the time of the national phase
entry.
• Under the new law, deletion of claims is now
allowed at the time of the national phase entry
to reduce the filing costs.
• However, no changes to the specification or
additional claims may be added at the time of
entry.