Note:
For latest updates go to www.Nolo.com, then Patent It Yourself, then Updates

The PTO changes things almost every month. I spent dozens of hours on these updates since it was a complicated matter and it was very hard to make it clear. It was harder than writing claims. I guess they'll change their mind again in a few months and I'll have to do it over.

You can get an entire copy of any patent at once at www.patentlogistics.com.

Current Fees As Of 2003 October 1

PTO Fees (Rule) (Small Entity/Large Entity)
Disclosure Document, Filing (21(c)): $10
PPA, filing (16(k)): $80/160
Printed copy of patent (19(a)): $3

Application Filing Fees:
Utility Patent: $385/770
Design Patent: $170/340
Plant Patent: $265/530
Each Independent claim Over Three: $43/86
Each Claim Over Twenty: $9/18
Multiple Dependent Claims: $145/290
Late Filing Fee or Declaration: $65/130
Bounced Check: $50

Petitions To Commissioner:
All drawing, inventorship, and make special petitions are $130
Extensions to Reply to Office Action
1st Month: $55/110
2d month: $210/420
3d month: $475/950
4th month: $740/1480
Petition to Revive Abandoned Appn.
Unavoidable Delay: $110/$55
Unintentional Delay: $665/1330
Certified copy application as filed: $20
Appeal to Board of Appeals & Pat. Intrfs.:
Filing Notice of Appeal: $165/330
Filing Brief: $165/330
Oral Hearing: $145/290

Application Issue Fees:
Utility Patent: $665/1330
Design Patent: $240/480
Plant Patent: $320/640

Miscellaneous
Certificate to Correct Patent (Applicant's Mistake): $100
Reexamination Fee: $2520 One Party; $8800 Between Parties
Request for Continued Examination (RCE): $385/770

Utility Patent Maintenance Fees:
I (3.5 years): $455/910
II (7.5 years): $1045/2090
III (11.5 years): $1610/3220
Late charge in six-month grace period: $65/130
Petition To Revive (after patent expires unintentional delay): $1640
Petition To Revive (after patent expires unavoidable delay): $700
Copy of patent file and contents (up to 400 pp.): $200
Certified copy of assignment record: $25
Disclaimer of claims or terminal part of patent: $55/110
Dedication of entire term or terminal part of patent: N/C

Other Fees:
Trademark Application filing (in PTO): $335
Trademark Application filing (in Californai): $70
Copyright Application Filing (in Copyright Office): $20
Filing a European patent application, $5000-$7000.

PCT Fees
Transmittal Fee: $300.

Search Fees:
In US PTO—No Corres. Prior US appn. Filed: $1000.
—Corres. Prior US appn. Filed: $300.
In EPO, 1920.


International Fees:
Filing Fee: $1134.
Each Additional Sheet Over 30: $12.

Chapter II Fees:
Handling Fee: $162
Examination Fee In PTO (where PTO made search): $600.

Patent It Yourself—Update to Eighth Ed., 1st Printing

Since this book went to press, the PTO came out with some significant rule changes. Here they are, arranged by Chapter in PIY, insofar as possible.

Ch. 3: Conversion Of PPA To RPA: An applicant can now convert a PPA to an RPA, but I advise against doing so since any patent granted on the RPA will expire 20 years from the earlier filing date of the PPA, rather than the later filing date of the RPA. Rule 53(c)(3). [Note that the PPA Transmittal in PIY (Form 3-5) now erroneously states that a PPA can’t be converted to an RPA. Also note that converting a PPA to an RPA is different from filing an entirely separate RPA which claims the benefit of the PPA.]

Taiwan and India Now Give Priority: The Republic of China (Taiwan) and India now have their own priority treaties with the U.S., so if you file in these countries within a year of your US filing date, you can obtain the benefit of your US filing date there.

Ch. 6: PTO Site Has Images Of All Patents: The PTO’s site now has the images of ALL pages of ALL patents, back to 1790, with some random exceptions. However one still can’t make a prior-art search of any patents before 1976.

Ch. 8: Headings Of Specification: Applicants should include the following headings in the specification, in uppercase, without underlining or bold: —Rule 77(b):

TITLE
DRAWINGS

FEDERALLY SPONSORED RESEARCH
DETAILED DESCRIPTION

SEQUENCE LISTING OR PROGRAM
CLAIMS

BACKGROUND
SEQUENCE LISTING

SUMMARY
ABSTRACT


[These headings are slightly different from the ones in the book. I recommend adding additional headings under these required headings so that the application has the following headings:

TITLE
DETAILED DESCRIPTION—Preferred Embodiment

FEDERALLY SPONSORED RESEARCH
—Operation—Preferred Embodiment

SEQUENCE LISTING OR PROGRAM
—Description—Additional Embodiment

BACKGROUND— Field of Invention
—Operation—Additional Embodiment

—Prior Art
—[etc]

—Objects and Advantages
—Conclusions, Ramifications, and Scope

SUMMARY
CLAIMS

DRAWINGS—Figures
SEQUENCE LISTING

—Reference Numerals
ABSTRACT


Abstract Size Limited: Applicants must now limit abstracts to 150 words. Rule 72(b).

Ch. 10: Black And White Photos No Longer Permitted Unless Necessary: The PTO will no longer accept black and white photos for drawings, unless necessary to illustrate the invention. Exception: An applicant can file B&W photos for drawing(s) without paying any fee if they can show that the applicant needs photos to illustrate the invention. Rule 84(b): [The former rule says B&W photos can be filed upon payment of a fee. Color drawings can still be filed on petition as explained inch. 10.]

Filing Application With Formal Drawings Recommended Since Drawings Must Be Corrected Before Examination: An applicant can still file an application with informal drawings, but may no longer defer the corrections until after allowance. The PTO will notify an applicant after filing if the drawings are informal and the applicant must now correct them before the PTO will examine the application. I recommend filing the application with formal drawings, if possible, to avoid delays in examination and possible shortening of the patent term. Rule 85(a).

Numbering Paragraphs Of Application: Applicants may now number all paragraphs (not including headings) of an application as follows: [0001], [0002], etc. [Include the brackets.] Rule 52(b). [Applicants may find this advantageous to do since it will facilitate amendments—one can now replace an entire paragraph by reference to its number. See Rule121(b) below for the new manner of amending the spec. by replacing paragraphs or sections.]

Standardized Paper Sizes: Applicants must now file all papers in the PTO in A4 or letter size with non-drawing papers having at least 2.5 cm left and 2 cm top, right, and bottom margins. (Drawings (A4 or letter size) must still have at least 2.5 cm left and top, 1.5 cm right, and 1.0 cm bottom margins.) Rule 52(a).

Optional Data Sheet: Applicants may now optionally file a data sheet with the application data for assisting the PTO in data entry. Rule 76(a). The form is on the PTO’s site as Form ___ (NA Yet) [I recommend doing this to reduce data input errors]

Simplified Small Entity Procedure: An applicant can now establish Small Entity status with a simple signed assertion or payment of a SE fee. Applicants no longer need file a separate SE Declaration. Rule 27(c). [Forms 10-3 and 10-4 (A-C) are no longer needed, although you still may use them.]

Program Listings On CD: Applicants can now file program listings and biotech sequence lists of over 300 lines on a CD (Read only), in duplicate for program listings. Rule 52(e). [See Rule 96(b) below for handling of shorter listing.]

Program Listings: If a program has 300 lines or less (72 characters/line), the applicant can submit it on a sheet of drawing or in the specification. If it has more than 60 lines, the applicant should put it at the end of the spec., before the claims. If it has more than 300 lines, it must be on a CD (read only). Rule 96(b).

Design application Headings: In design applications, applicants should include the following headings, in uppercase, without underlining or bold, insofar as applicable:—Rule 154.

PREAMBLE. (This should state the nature and intended use of the design.)

CROSS-REFERENCE TO RELATED APPLICATIONS

STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH

DRAWING FIGURES

FEATURE DESCRIPTION (State what you feel is novel in or what characterizes the design. Keep this statement as vague and general as possible so you won’t be unduly limited by it.)

CLAIM

Expediting Design Applications: An applicant can now pay to have a design application expedited under a new "Design Rocket Docket" procedure. File the application as usual, but with formal drawings. Add an IDS, PTO-1449, the references listed on the PTO-1449, a Request For Expedited Examination of a Design Application (Form 10-8A in later printings of PIY or Form PTO/SB/27 on PTO’s website), a Petition Fee (See Fee /Schedule), and a Statement that a search was made, indicating the field of search. Send everything to Box EXPEDITED DESIGN, Commissioner for Patents, Washington, DC 20231. Rules 155(a) & 17(k).

Ch. 13: The PTO Can Request Search Information and Literature: The PTO can now require the applicant to supply any search information and literature which the applicant knows of, which the applicant used to draft the application, or which the examiner can use to examine the application properly. Rule 105. The PTO is likely to include a form paragraph or letter in every application requesting this. If you receive such a Request, comply with it, but don’t include any information that you already included on your IDS.]

Obviousness Rejections: If the PTO rejects a claim of your application under Sec. 103 (obviousness) on an earlier patent and that patent is owned by you, you can disqualify the earlier patent as prior art. You should submit a terminal disclaimer with a fee (Ch. 14, Sec. 4) and a declaration stating that the patent is owned by the current applicant and has the same inventor. Rule 130.

Amendments To Specification: An applicant must now make amendments to the specification by replacing an entire paragraph(s) (or section of the application) in clean copy form. You must also enclose a marked-up copy showing the paragraphs or sections with the changes. (You do not have to file any marked-up copy to add or delete a paragraph.) Rule 121(b). Applicants will be able to replace paragraphs easily if they number the paragraphs when the application is filed, per Rule 52(b) above.

Amendments To Claims: Applicants must now make changes to claims in either of two ways:

(1) Rewrite the entire claim(s) in clean copy form, using the same claim number, followed by "(amended)", together with a marked-up copy of the claim on a page separate from the amendment. If an applicant rewrites all of the claims in this manner, the PTO will assume that any claim(s) without a marked-up copy has not been changed.

(2) Cancel the claim(s) and/or add any new claim(s) with new (higher) claim numbers. An applicant does not have to file any marked-up copy if any claim has a new claim number. Rule 121(c).

No More Extensions To File Drawings After Allowance: After the application is allowed, the applicant must pay the issue fee and file any new drawings within three months. An applicant may no longer buy an extension for filing drawings. Rule 136(c).

18-Month Publication Rules: The PTO will publish all applications 18 months after filing, unless: (1) the application is no longer pending, (2) the application is under a security classification, (3) the application has issued as a patent in sufficient time to be removed from the publication process. (4) the application was filed with a non-publication request which has not been rescinded. If an application is to be published 18 months after filing, the Notice of Allowance will include a Publication Fee (currently $300). A third party can cite prior art in the application file within two months after publication, provided they pay a Prior Art Citation Fee ($180), and they serve a copy of the citation on the applicant. The PTO will refuse to accept any explanation of the relevance of the cited prior art. An applicant can request earlier publication upon payment of a publication fee. Rules 99, 211 et seq.

Electronic Filing: Applicants can now file patent applications on-line. However the procedure is very complex: a special "Certificate" and software are needed. There is no real advantage is doing so as considerably more work is involved on the inventor’s end. More later.

2001 Jan 2

Other Corrections

Chapter 2, Sec. F: Delete "Inventors of California" and "Peninsula Inventors' Group" listings and substitute —Nevada Inventors, P.O. Box 9905, Reno, NV 89507, tel. 702-322-9636— and —Inventors Alliance, Santa Clara Co., CA, tel. 650- 321-3122 or 408-249-8968—.

P. 3/15, col 2, last bulleted paragraph (before heading "5."), change to:

If you've filed an RPA and wish to restart your 20-year term, you can do so by converting the RPA to a PPA and then filing a second RPA. To make the conversion, file a petition (a simple request letter will do) with the prescribed conversion fee ($50—see Fee Schedule in Appendix 4) within one year of the RPA's filing date. The PPA will take the first RPA's filing date. Then file the second RPA, also within one year of the first RPA's filing date. The second RPA should claim the benefit of the PPA's filing date. The second RPA will expire 20 years from its own filing date, so you've restarted your 20-year term about a year later, albeit at a price.

Chapter 6, Sec. D: Add IBM's Patent Search Site: http://www.patents.ibm.com

Chapter 6, Fig 6K: For updates of PDLs, go to http://www1.uspto.gov/web/offices/com/so1/og/index.html.

Chapter 6, Sec. O, Part 1: Change last paragraph to read: —The specifications of these patents cannot be searched, so it is necessary to order these patents.—

Chapter 10, Sec. K: Neither a petition nor a petition fee are now needed to file black-and-white photos for patent drawings.

Chapter 10, Sec. L: An Express Mail certification is no longer needed; just put the Express Mail number on the transmittal letter and it will be considered filed on the date it was properly Express Mailed.

Chapter 11, Sec. B, Part 1: Delete "Product Resources International" listing.



In the Forms Appendix, a Request For Continued Examination (RCE) has replaced the CPA (Continuing Prosecution Application). Get the RCE Form from the PTO's site, www.uspto.gov, form PTO/SB/30.