Attachment 23 - DataEntryManual-NON-UTILITY-2019.doc

DATA ENTRY MANUAL FOR NON-UTILITY PATENT DOCUMENTS, OTHER THAN PATENT APPLICATION PUBLICATIONS Design Patents

Plant Patents

Reissue Patents

Statutory Invention Registrations

Reexamination Certificates

Supplemental Examination Certificates

Patent Trial and Appeal Board Certificates This document has been updated to incorporate the relevant portions of Office of Data Management Data Capture Bulletins No. 2018-1 through No. 2018-30 (that is, DCBs finalized during calendar year 2018).

Office of Data Management

TABLE OF CONTENTS

Section_I. DESIGN PATENT

USC_CFR_MPEP_Designs

Key_Features_Designs

Form_PTOL_37D, Notice of Allowability for a Design Application

Masthead_Designs

Patent Number Bar Code

Office Identification & “Plain Language” Kind Designation

Code US, Patent Number, Kind Code

Inventor Surname

Patent Date

Columns_Designs

Title

Applicant Data

Inventor Data

Assignee Data

Terminal Disclaimer (TD) Notice

PTE/PTA & 20-Year-Term Notices [not relevant to designs]

37 CFR 1.130(b) Text

Indication of Design Patent Term

Application Number

Application Filing Date

Hague Agreement Data – International Design Application (Series Code 35)

National Stage PCT Data [not relevant to designs]

Prior (Pre-Grant) Publication Data [not relevant to designs]

Related U.S. Application Data

Improper RCE in Design Application

Foreign Application Priority Data

International (Locarno) Classification Data

U.S. Classification Data

Field of Classification Search

References Cited

Examiner Data

Attorney/Agent/Firm Data

Claim

Description – Design Application (Series Code 29)

Description – International Design Application (Series Code 35)

Claim, Drawing Sheet, Color Sheet Totals

Rep_Drawing_Series_Code_29

Rep_Drawing_Series_Code_35

Drawings_Series_Code_29

Drawings_Series_Code_35

Issue_Fee_Payments_Series_Code_35 Section_II. PLANT PATENT

USC_CFR_MPEP_Plants

Key_Features_Plants

Masthead_Plants

Bibliographic_Columns_Plants

Latin Name & Varietal Denomination

Term Notice

National Stage PCT Data

Prior (Pre-Grant) Publication Data [P3 only]

International Patent Classification Reform (IPCR) Data

Abstract

Claim and Drawing Sheet Totals

Specification_Columns_Plants

Drawings_Plants

Section_III. REISSUE OF UTILITY PATENT

USC_CFR_MPEP_ReissUtil

Key_Features_ReissUtil

Masthead_ReissUtil

Front_Page_Columns_ReisUtil

Prior (Pre-Grant) Publication Data

Related U.S. Patent Documents

“REEXAMINATION RESULTS” Heading and Paragraph [merged reissue/reexamination]

Microfiche Appendix Information

Representative_Drawing_ReissUtil

Drawings_ReissUtil

Specification_ReissUtil

Section_IV.

REISSUE OF DESIGN PATENT

USC_CFR_MPEP_ReissDes

Key_Features_ReissDes

Masthead_ReissDes

Columns_ReissDes

PTE/PTA & 20-Year-Term Notices [not relevant to design reissues]

Indication of Design Patent Term

Hague Agreement Data When Original Patent Issued From International Design Application (Series Code 35)

National Stage PCT Data [not relevant to design reissues]

Prior (Pre-Grant) Publication Data [not relevant to design reissues]

Description

Brackets/Italics Statement

Representative_Drawing_ReissDes

Drawings_ReissDes

Section_V. REISSUE OF PLANT PATENT

USC_CFR_MPEP_ReissPlt

Key_Features_ReissPlt

Masthead_ReissPlt

Bibliographic_Columns_ReissPlt

Prior (Pre-Grant) Publication Data [reissue of P3]

Specification_Columns_ReissPlt

Drawings_ReissPlt

Section_VI. STATUTORY INVENTION REGISTRATION—UTILITY

USC_CFR_MPEP_SIRutil

Key_Features_SIRutil

Masthead_SIRutil

SIR Number Bar Code

Code US, Registration Number, Kind Code

Publication Date

Front_Page_Columns_SIRutil

Term Notice [not relevant to SIRs]

Microfiche Appendix Information [***when microfiche appendix was filed before March 1, 2001***]

Statement of Attributes

Representative_Drawing_SIRutil

Drawings_SIRutil

Specification_SIRutil

SIR_eOG_Guidelines

Section_VII. STATUTORY INVENTION REGISTRATION—DESIGN

USC_CFR_MPEP_SIRdes

Key_Features_SIRdes

Masthead_SIRdes

Columns_SIRdes

Indication of 14-Year Term [not relevant to design SIRs]

National Stage PCT Data [not relevant to design SIRs]

Representative_Drawing_SIRdes

Drawings_SIRdes

Section_VIII. STATUTORY INVENTION REGISTRATION—PLANT

USC_CFR_MPEP_SIRplt

Key_Features_SIRplt

Masthead_SIRplt

Bibliographic_Columns_SIRplt

Specification_Columns_SIRplt

Drawings_SIRplt

Section_IX. EX PARTE REEXAMINATION CERTIFICATE

USC_CFR_MPEP_ex_parte_307

Key_Features_ex_parte_307

Masthead_ex_parte_307

Reexamination Number Bar Code

Certificate Heading & Sequential Number

Code US, Certificate Number, Kind Code

Certificate Date

Columns_ex_parte_307

Latin Name & Varietal Denomination [reexamination of plant patent]

Applicant Data [only when original patent issued from an application filed on or after September 16, 2012]

Reexamination Request Data

Reexamination Certificate Data

Prior Reexamination Certificate Data

Claim(s) Disclaimer Data

Certificate of Correction Data

35 U.S.C. 371 Data

Representative_Drawing_ex_parte_307

Amended_New_Drawings_ex_parte_307

Specification_ex_parte_307

Required in column 1 of every reexamination specification.

If original patent has not been amended.

If original patent has been amended so that (1) all claims are now canceled and/or disclaimed, (2) no new claims are present, and (3) the specification has not been amended.

If original patent has been amended so that there are (1) changes to the specification and/or (2) changes to the claims and/or (3) new claims.

EX PARTE REEXAMINATION CERTIFICATE … heading

NO AMENDMENTS … statement

AS A RESULT … preamble confirmation of patentability of claim(s) identification of previously canceled claim(s) identification of previously disclaimed claim(s) identification of claim(s) not reexamined identification of “other” claim(s) with “other” status(es)

THE PATENT IS HEREBY AMENDED … statement identification of currently disclaimed claim(s) identification of currently canceled claims

THE DRAWING FIGURES … preamble drawing amendment text

Matter enclosed … statement

ONLY THOSE PARAGRAPHS … statement text of amended paragraph(s) identification of claim(s) patentable as amended text of amended claim(s) identification of patentable claim(s) dependent upon amended claim(s) identification of patentable claim(s) being added text of added claim(s)

“printer rush” QUERIES

When the sole or last page … is more than 440 points …

Section_X. INTER PARTES REEXAMINATION CERTIFICATE

USC_CFR_MPEP_interpartes316

Key_Features_interpartes316

Masthead_interpartes316

Columns_interpartes316

Latin Name & Varietal Denomination [reexamination of plant patent]

Applicant Data [only when original patent issued from an application filed on or after September 16, 2012]

Reexamination Request Data

Reexamination Certificate Data

37 CFR 1.130(b) Text [not relevant to inter partes reexaminations]

35 U.S.C. 371 Data

Representative_Drawing_interpartes316

Amended_New_Drawings_interpartes316

Specification_interpartes316

Required in column 1 of every reexamination specification.

If original patent has been amended so that (1) all claims are now canceled and/or disclaimed, (2) no new claims are present, and (3) the specification has not been amended.

If original patent has been amended so that there are (1) changes to the specification and/or (2) changes to the claims and/or (3) new claims.

INTER PARTES REEXAMINATION CERTIFICATE … heading

NO AMENDMENTS … statement

AS A RESULT … preamble identification of “other” claim(s) with “other” status(es)

THE PATENT IS HEREBY AMENDED … statement identification of currently canceled claims

THE DRAWING FIGURES … preamble

Matter enclosed … statement

ONLY THOSE PARAGRAPHS … statement text of amended paragraph(s) identification of patentable claim(s) being added

“printer rush” QUERIES

When the sole or last page … is more than 440 points …

Section_XI. REEXAMINATIONS IN ELECTRONIC OFFICIAL GAZETTE

Section_XII. MERGED REISSUE/REEXAMINATION

Section_XIII. REEXAMINATION CERTIFICATE ISSUING FROM MERGED REEXAMINATION PROCEEDINGS

Section_XIV. PUBLICATION PROCESSING OF REEXAMINATION FILES THAT HAVE BEEN CONVERTED FROM PAPER TO THE IMAGE FILE WRAPPER SYSTEM

Section_XV. REEXAMINATION OF A REISSUE

Section_XVI. REEXAMINATION CERTIFICATE ISSUING WHEN THERE ARE PENDING REISSUE APPLICATION(S) FOR SAME PATENT AND/OR PENDING REEXAMINATION PROCEEDING(S)

FOR SAME PATENT

Section_XVII. SUPPLEMENTAL EXAMINATION CERTIFICATE Section_XVIII. EX PARTE REEXAMINATION CERTIFICATE FROM REEXAMINATION ORDERED UNDER 35 U.S.C. 257 Section_XIX. PATENT TRIAL AND APPEAL BOARD CERTIFICATES Section_XX. DAILY ISSUANCE OF CERTIFICATES, DAILY ELECTRONIC OFFICIAL GAZETTE FOR CERTIFICATES, AND REPORTING OF DAILY CERTIFICATES IN WEEKLY (TUESDAY)

ELECTRONIC OFFICIAL GAZETTE FOR PATENTS

Section I. DESIGN PATENT

USC, CFR, MPEP

35 U.S.C. 171

Patents for designs.

35 U.S.C. 172

Right of priority.

35 U.S.C. 173

Term of design patent.

37 CFR 1.151

Rules applicable.

37 CFR 1.152

Design drawings.

37 CFR 1.153

Title, description and claim, oath or declaration.

37 CFR 1.154

Arrangement of application elements in a design application.

MPEP 1503.01

Specification and Claim

MPEP 1503.02

Drawing

MPEP 1503.03

Design Claim

MPEP 1504.10

Priority Under 35 U.S.C. 119(a)–(d)

MPEP 1504.20

Benefit Under 35 U.S.C. 120

MPEP 1505

Allowance and Term of Design Patent.

Key Features

A single unnumbered claim is printed on the front page in place of an abstract.

The claim is followed on the front page by a description, usually limited to a brief description of the drawings, although there is sometimes additional descriptive matter.

There is no specification.

Form PTOL-37D, Notice of Allowability for a Design Application

Revised Form PTOL-37D (see next page) will be used beginning December 2006.

See below under Drawings.

Hague International Design Applications — Overview

( BASIC PROCESSING FLOW

See MPEP 2900, International Design Applications at http://www.uspto.gov/web/offices/pac/mpep/mpep-2900.html.

Under the Hague Agreement applicant can file a single international design application and designate the “Contracting Parties” (“countries and/or intergovernmental organizations that are parties to the Hague Agreement”) in which the applicant is seeking intellectual property protection for the design. The Hague application can include up to 100 different designs, as long as the designs have same design (Locarno) classification.

MPEP 2901 shows the “basic flow” of a Hague international design application filed by a U.S. applicant:

A. Filing

For a U.S. applicant the international design (Hague) application may be filed in one of two ways:

“direct” filing. The applicant files the Hague application directly with the International Bureau of WIPO (World Intellectual Property Organization).

“indirect” filing. The applicant files the Hague application indirectly through the USPTO who—specifically, the Office of Patent Application Processing—will make sure the application meets three requirements, which are:

1.

indicating “entitlement to file the application through the USPTO” and indicating the U.S. as the applicant’s contracting party (as shown here on Form DM/1, APPLICATION FOR INTERNATIONAL REGISTRATION)

2.

clearing a security review

3.

paying the transmittal fee (one amount for all status entities; no discounts)

The USPTO assigns the indirectly filed Hague application a U.S. application number with series code 35.

If all three requirements are not met, the applicant is sent a notice (HAGUE.2320) like the following, showing which requirement(s) have not been met. The application goes into an indefinite holding status. There is no time period for the applicant’s response. The applicant may respond at any time, or never.

If the three requirements are met, the USPTO transmits the application to the International Bureau and sends the applicant a notice (HAGUE.2320) like the following:

At this stage in an indirect filing, the USPTO will have accorded a “U.S. receipt date” only. If the application is transmitted to the International Bureau within 6 months after the receipt date, the international filing date accorded by the International Bureau may be the same as the U.S. receipt date.

B. Formal Examination by the International Bureau

For all Hague applications—both direct and indirect—the formalities review is conducted by the International Bureau.

Hague fees payable to WIPO:

( basic fee

( publication fee

( designation fee(s)—as described below, the U.S. designation fee is paid in two parts

( additional word fee—when description (specification) goes beyond 100 words

Except as described below, Hague fees must be paid in Swiss francs. WIPO provides an on-line tool for calculating application fees.

In an indirect filing an applicant may pay the above WIPO fees in U.S. dollars through the USPTO on or before the date he or she pays the required transmittal fee. However, if there are fluctuations in currency exchange rates, the International Bureau may later ask for the payment of deficiencies.

Otherwise, after receiving the Hague international design application—whether directly or indirectly—the International Bureau of WIPO will request that the applicant pay the required WIPO application fees and will give the applicant a prescribed time period in which to do so.

The only WIPO application fee subject to a discount is the U.S. designation fee. That is, if other Contracting Parties are designated, their designation fees must be paid in full. With respect to the U.S. designation fee, the Hague applicant may assert small-entity status or may certify micro-entity status.

The U.S. designation fee is paid in two parts:

· The first part of the U.S. designation fee is payable to WIPO more or less at the time of filing, as described above. This fee is analogous to the U.S. search, examination, and design filing fees.

( The second part of the U.S. designation fee must be paid within 3 months after the mailing of the Notice of Allowance. That is to say, “second part of the U.S. designation fee” is the Hague name for the issue fee, which may be paid either to the USPTO in U.S. dollars or through the International Bureau of WIPO in Swiss francs, as described here in Section I under Issue Fee Payments — International Design Application (Series Code 35).

Hague formal requirements:

If the formal requirements are not met, the International Bureau “will invite the applicants to make the required corrections within a prescribed time limit.” If the applicant does not timely respond, the application may go abandoned.

If the formal requirements are met, the application is accorded the following by the International Bureau:

· international filing date—filing date accorded to an international design application by the International Bureau when the international design application has met certain criteria under the Hague Agreement. For an indirect filing, the international filing date may be the same as the USPTO receipt date, except (for example) when the application is transmitted to the International Bureau more than six months after the USPTO receipt date, in which case the international filing date is a later date.

C. Registration and Publication by the International Bureau

Whether the application is a direct filing or an indirect filing, the International Bureau registers the application in the International Register, and the application is accorded the following:

· international registration date—date accorded by the International Bureau that is the later of the international filing date or the date of receipt of an additional mandatory content requirement of the Hague Agreement.

· international registration number—number (beginning with the prefix “DM/”) assigned by the International Bureau when an industrial design is registered in the International Register.

Whether the application is a direct filing or an indirect filing, the International Bureau publishes the application in an International Designs Bulletin, and the application is accorded the following:

· international registration publication date—date of publication of the international registration by the International Bureau in the International Designs Bulletin.

D. Examination by the Offices of the Designated Contracting Parties

The International Bureau sends the Hague application, after it has been published, to each Contracting Party (country or intergovernmental organization) that the applicant has designated. When the U.S. is the designated Contracting Party, the International Bureau sends the application to the USPTO, where the pre-examination processing is performed by the Office of Patent Application Processing.

· If the Hague application received from the International Bureau was a direct filing, this will be the first time that the USPTO has handled the application, and at this point the USPTO will assign a U.S. application number with series code 35. Per the Office of Patent Application Processing’s procedures, “Direct filings begin with application number 35/500,001.”

· If the Hague application received from the International Bureau was an indirect filing, this will be the second time that the USPTO has handled the application, and its U.S. application number beginning with series code 35 will already exist. The first U.S. application number for an indirect filing was 35/000,001.

The international publication data and other bibliographic data received in XML from the International Bureau is used to generate the “International Registration Publication Data” document, also known as the Hague Summary Sheet (code HAGUE.IR_PUB).

Once the Hague application has reached this stage (roughly analogous to the PCT national stage), it will be go to the Technology Center to be examined. Although the original Hague application may have included up to 100 designs, the series code 35 application will be limited to one patentably distinct design.

If the series code 35 application is allowed and the issue fee and other requirements are met, it will issue as a U.S. design patent.

( RENUNCIATION

It is possible for an applicant to “renounce” the designation of the United States pursuant to Article 16 of the Hague Agreement. See example below. The renouncement is analogous to abandonment of the application. A 35 series application that has the designation of the United States renounced will be placed in PALM status 170 and should not be processed for patent issuance.

Should the PaDaCap contractor encounter a HAGUE.ART.16. document (Recording Type: Renunciation) showing the renunciation of the US, the PaDaCap contractor will send an e-mail to the ODM Publication Branch (as of this writing, hung.vuong@uspto.gov). The ODM Publication Branch will obtain guidance by contacting IPLA (as of this writing, boris.milef@uspto.gov).

Masthead SYMBOL 110 \f "Wingdings" Patent Number Bar Code

See DATA ENTRY MANUAL FOR UTILITY PATENTS, 1. Patent Number Bar Code.

Composition―Positions 6–12 will be the prefix D and the six-digit design patent number:

start US00D453999S space stop SYMBOL 110 \f "Wingdings" Office Identification & “Plain Language” Kind Designation

See DATA ENTRY MANUAL FOR UTILITY PATENTS, 2. Office Identification & “Plain Language” Kind Designation.

Composition – The “plain language” kind designation is Design Patent, so that United States Design Patent is printed as follows:

18-point uppercase and lowercase

Times New Roman Bold

SYMBOL 110 \f "Wingdings"

Data Source code US. This code is non-variable.

patent number. See Technical Reference 15: FILE MAINTENANCE AND FINAL DATA CAPTURE ISSUE BUILD REQUIREMENTS.

kind code. Kind code S will be used for all U.S. design patents, including those that issue from international design applications under the Hague Agreement.

Composition – The design patent number is printed as follows:

14-point

· Times New Roman Bold

· code US (followed by a space) precedes the uppercase D uppercase D precedes the six-digit number (no space between the D and the six-digit number) six-digit number is printed with internal comma kind code S (preceded by a space) follows the six-digit design patent number

US D654,321 S

See DATA ENTRY MANUAL FOR UTILITY PATENTS, 4. Inventor Surname.

See DATA ENTRY MANUAL FOR UTILITY PATENTS, 5. Patent Date.

Composition – Two asterisks will precede the patent date. The two asterisks refer to the 14-year-term indication that appears in the front-page columns.

(45) Date of Patent: ** Dec. 24, 2002 If a terminal disclaimer notice is present on the design front page, the terminal-disclaimer-indicator asterisk is printed above the two asterisks.

Columns Title

NOTE

The following guidelines with respect to the design title apply both to U.S. design applications under 35 U.S.C. chapter 16 (series code 29) and to U.S. design applications that are international design applications under the Hague Agreement (series code 35). When an applicant files an international design application there is no requirement that the application include a title. When such an application is received by the USPTO from the International Bureau for examination, the product listed in the WIPO publication for the first design will be auto-loaded as the title in PALM. The title may be changed by the applicant or the examiner. The title will appear on the BIB or APP.FILE.REC. As with any other design title, the title in a series code 35 application must substantially agree with the wording of the design claim. If the title-change amendment does not specifically say that the claim is being amended as well but does include the “amended at each occurrence throughout the papers, original oath or declaration excepted” wording, the PaDaCap contractor will amend the claim and print it so that it agrees with the amended title. If the title-change amendment does not specifically say that the description is being amended as well but does include the “amended at each occurrence throughout the papers, original oath or declaration excepted” wording, the PaDaCap contractor will amend the description—including the product information section (Design No./Product(s)) in a Hague application—and print it so that it agrees with the amended title.

See DATA ENTRY FOR UTILITY PATENTS, 6. Title.

design title on most recent PALM bibliographic data sheet (document code BIB)—or, if present, any later-dated corrected filing receipt (document code APP.FILE.REC)—must substantially agree with wording of design claim. In a design application the PaDaCap contractor will verify that the design title as it appears on the most recent PALM bibliographic data sheet (document code BIB)—or, if present, any later-dated corrected filing receipt (document code APP.FILE.REC)—is in substantial agreement with the wording of the design claim (CLM). The PaDaCap contractor will follow “printer rush” query guidelines (a) through (o):

(a) NO query when BIB/APP.FILE.REC-versus-CLM discrepancy involves certain words and phrases at beginning of title: Current USPTO practice is that PALM will not show certain words—specifically A, AN, THE, DESIGN, DESIGN FOR/OF (A), ORNAMENTAL DESIGN, ORNAMENTAL, NEW, IMPROVED, IMPROVEMENT IN, and RELATED TO—as the first word(s) of the invention title. It is correct that these words are omitted from the design title. For example, the following would not be queried:

BIB/APP.FILE.REC:

FOOTWEAR CLEAT

CLM:

The ornamental design for a footwear cleat, as shown.

(b) NO query when BIB/APP.FILE.REC-versus-CLM discrepancy involves “a” or “and” or “the” within the wording of the design title: It is acceptable for the design title and the design claim to vary with respect to the use of “a” or “an” or “the” even when the word is used other than as the first word. For example, the following title/claim discrepancy—WITH PEAK versus “with a peak”—would not be queried:

BIB/APP.FILE.REC: CAP WITH PEAK

The ornamental design for a cap with a peak, as shown and described.

(c) NO query when BIB/APP.FILE.REC-versus-CLM discrepancy involves a hyphen in a compound word: It is acceptable for the design title and design claim to vary with respect to the use of a hyphen in a compound word. For example, the following title/claim discrepancy—FOOT-WEAR versus “footwear”—would not be queried:

BIB/APP.FILE.REC: FOOT-WEAR UPPER

The ornamental design for a footwear upper, as shown and described.

(d) NO query when BIB/APP.FILE.REC-versus-CLM discrepancy involves a space in a compound word: It is acceptable for the design title and design claim to vary with respect to the use of a space in a compound word. For example, the following title/claim discrepancy—FOOTWEAR versus “foot wear”—would not be queried:

FOOTWEAR UPPER

The ornamental design for a foot wear upper, as shown and described.

(e) If the CLM uses the singular form and the title on the BIB/APP.FILE.REC uses the plural form, the PaDaCap contractor will correct the title to the singular form. However, if the CLM uses the plural form and the title on the BIB/APP.FILE.REC uses the singular form, the PaDaCap contractor should initiate a printer RUSH.

(f) NO query regarding the phrasing of the design title or design claim. The PaDaCap contractor will not initiate a “printer rush” query regarding the phrasing of the design title or claim. For example, if the title and claim use a phrase such as “or the like,” no query is to be initiated. MPEP 1503.01 does distinguish between acceptable and unacceptable uses of such phrases, but it is not the PaDaCap contractor’s responsibility to interpret this. Similarly, it is acceptable for the word “substantially” to appear in the claim before “as shown” or “as shown and described.” MPEP 1503.03 states that the claim “should normally be in formal terms … .” Minor variations are possible and acceptable.

(g) “printer rush” QUERY when BIB/APP.FILE.REC-versus-CLM discrepancy involves different subject matter: The PaDaCap contractor must initiate a “printer rush” query when the design title and the design claim vary with respect to the subject matter of the design invention. For example, a query would be required for the following title/claim discrepancy—that is, TRAY COVER versus “drinking glass”:

TRAY COVER

The ornamental design for a drinking glass, as shown.

(h) “printer rush” QUERY when BIB/APP.FILE.REC-versus-CLM discrepancy involves the omission of a key word: The PaDaCap contractor must initiate a “printer rush” query when the design title and the design claim vary with respect to the omission of a key word. For example, a query would be required for the following title/claim discrepancy—that is, SNACK FOOD PRODUCT versus “snack product”:

SNACK FOOD PRODUCT

I claim the ornamental design for a snack product, as shown and described.

(i) design description (SPEC) of the figures is not required to agree precisely with the wording of the design title and design claim: For example, in the following discrepancy—the description’s use of “calculator” versus the title and claim’s use of “electronic calculator”—there would be NO query:

ELECTRONIC CALCULATOR

The ornamental design for an electronic calculator, as shown and described.

SPEC:

FIG. 1 is a front perspective view of a calculator showing the new design.

However, in the following subject-matter discrepancy—the description’s use of “personal digital assistant” versus the title and claim’s use of “tray cover”—a “printer rush” QUERY would be necessary:

TRAY COVER

The ornamental design for a tray cover, as shown and described.

FIG. 1 is a front perspective view of a personal digital assistant showing the new design.

NOTE #1: It is acceptable when the title and claim’s wording is not recited in the description and a nonspecific phrase is used instead. For example, in the following discrepancy—the description’s use of “my new design” versus the title and claim’s use of “watch”—there would be NO query:

WATCH

The ornamental design for a watch, as shown and described.

FIG. 1 is a front perspective view of my new design.

(j) “printer rush” QUERY when examiner-approved amendment amends the design title but does not amend the design claim and the design description, resulting in inconsistency between the title, claim and/or description: If the examiner-approved amendment amended the title but did not amend the design claim and the design description, the PaDaCap contractor should initiate a “printer rush” query. For example, the following would be queried:

TRAY COVER [per examiner-approved amendment]

The ornamental design for a food protector, as shown and described.

SPEC:

FIG. 1 is a front perspective view of a food protector showing the new design.

However, if an examiner-approved amendment amends the design claim and the design description but does not amend the design title, the PaDaCap contractor will capture the design title so that it includes the amendment. In the information under data source for design title, see Exception 2 (examiner-approved amendment to design claim and design description as source for PaDaCap contractor’s capture of amendment to design title).

NOTE #2: If the design title is amended in an examiner’s amendment, the amendment should use the following wording: “The title is amended at each occurrence throughout the papers, declaration excepted, to read as _________________.” Thus the title would be amended on the PALM bibliographic data sheet (BIB)—or, if present, a later-dated corrected filing receipt (APP.FILE.REC)—and the application would be amended in each instance where the language should agree with the title, such as in the claim, and in the description (unless the description uses a phrase like “my new design” as described in NOTE #1).

(k) NO query when the BIB/APP.FILE.REC-versus-CLM discrepancy involves different forms of the same root word. For example, the following is acceptable and should not be queried:

NAVIGATIONAL DEVICE

navigation device

(l) NO query when the same key words are used in BIB/APP.FILE.REC and CLM but each version uses different phrasing. For example, the following is acceptable and should not be queried:

GRAPEFRUIT AIR FRESHENER

air freshener in the form of a grapefruit

(m) “printer rush” QUERY when BIB/APP.FILE.REC -versus-CLM discrepancy involves a more precise key word versus a less precise key word. For example, a query would be required to correct the following discrepancy

CAMPFIRE COOKING GRIDDLE

campfire cooking device

(n) “printer rush” QUERY when BIB/APP.FILE.REC -versus-CLM discrepancy involves additional key wording that is not in both locations. For example, a query would be required to correct the following discrepancy:

VEHICLE CARGO LOAD FLOOR WITH TWO RECESSED STORAGE WELLS

vehicle cargo load floor

(o) “printer rush” QUERY when BIB/APP.FILE.REC-versus-CLM discrepancy involves naming an entire object versus naming a part of the object. For example, queries would be required to correct the following discrepancies:

SHOE UPPER

portion of a shoe upper

TIRE

tire sidewall data source for design title. The PALM bibliographic data sheet (document code BIB)—or, if present, any later-dated corrected filing receipt (document code APP.FILE.REC)—will be the source for the design title, with the exceptions shown below.

Exception 1 (other documents as sources for PaDaCap contractor’s capture of spelling correction in design title): An application data sheet (ADS) or design claim (CLM) or design description (SPEC) may be the source for spelling corrections in the design title. For example, if the BIB/APP.FILE.REC showed the title as SNACK FOOD PROLDUCT and the CLM and the SPEC showed “snack food product” then the PaDaCap contractor would capture the title as SNACK FOOD PRODUCT.

Exception 2 (examiner-approved amendment to design claim and design description as source for PaDaCap contractor’s capture of amendment to design title): When an examiner-approved amendment changes the wording of the design claim and the design description, the PaDaCap contractor will capture the design title so that it reflects the amended design claim and the amended design description. For example, the BIB/APP.FILE.REC document shows the design title as GARMENT AND PANELS OF A GARMENT. However, the record shows A…, SPEC, and CLM documents, all dated 3-28-2005, in which the description of FIG. 1 is amended to say “view thereof of our new design for panels of a garment” and the claim is amended to say “ornamental design for a garment, and panels of a garment.” The NOA dated 4-15-2005 is responsive to the amendment received on March 28, 2005. Therefore, despite what the BIB/APP.FILE.REC document shows as the invention title (GARMENT AND PANELS OF A GARMENT), the PaDaCap contractor would follow the examiner-approved amendment to the claim and description and would capture the title as PANELS OF A GARMENT so that the printed design patent would show the following:

(54) PANELS OF A GARMENT

(57) CLAIM

We claim the ornamental design for panels of a garment, as shown and described.

DESCRIPTION

FIG. 1 is a front elevation view of our new design for panels of a garment;

FIG. 2 is . . .

Although the PaDaCap contractor may change the design title to match an examiner-approved amendment to the design claim and the design description, the PaDaCap contractor may not change the design claim and/or the design description to match an examiner-approved amendment to the design title. See query guideline (j) above.

SYMBOL 110 \f "Wingdings" Applicant Data

For the processing of a series code 29 application: See DATA ENTRY MANUAL FOR UTILITY PATENTS, 7A. Applicant Data.

For the processing of an international design application under the Hague Agreement (series code 35):

Background

For an international design application designating the United States, the applicant may be any of the following:

· inventor

· legal representative (under 35 U.S.C. 117) of deceased or legally incapacitated inventor

· assignee

· obligated assignee (“a party to whom the inventor is under an obligation to assign”)

· proprietary party (“party who otherwise shows sufficient proprietary interest in the claimed invention”)

In an international design application, there can be multiple applicants. An inventor must be an individual. A non-inventor applicant—legal representative, assignee, obligated assignee, or proprietary party—may be either an individual or an organization.

See 37 CFR 1.46 and 37 CFR 1.1011.

Both applicants and inventors are identified in the WIPO publication of the international registration (also referred to as the published international design application). The WIPO publication, while viewable on WIPO’s website, is not available for download as an electronic document and thus does not appear in IFW. Rather WIPO publication XML data is transmitted to the USPTO, which is used to generate the document WIPO International Registration Publication Data (document code HAGUE.IR_PUB) in the application file, an example of which is set forth below. The document HAGUE.IR_PUB reflects only U.S. relevant data contained in the initial WIPO publication. It does not reflect any subsequent corrections or changes to such data. Document HAGUE.IR_PUB may be used as a source document for the original WIPO publication data.

The assignee, obligated assignee, or proprietary party may file the international design application and be identified as, and treated as, the applicant even when the inventor is living, is not legally incapacitated, is available, and is willing to sign an oath/declaration.

When the applicant is somebody other than the inventor:

· An applicant that is an assignee, obligated assignee, or proprietary party must be identified as the applicant in the WIPO publication of the international registration, or become an applicant pursuant to 37 CFR 1.46(c). Becoming an applicant pursuant to 37 CFR 1.46(c) requires the submission of a signed and marked-up application data sheet (document code ADS) indicating the change in applicant in the Applicant Information section, and comply with the changing the applicant section below.

· A legal representative who executes a substitute statement (OATH) on behalf of a deceased or legally incapacitated inventor is an applicant. The legal representative is an applicant even if not identified as an applicant in the published international registration. An ADS is not required to identify the legal representative in its Applicant Information section, even if other applicant(s) are identified there. In these circumstances if the latest BIB/APP.FILE.REC does not show the legal representative as an applicant, the PaDaCap contractor will make the appropriate update to PALM and will generate and send a corrected APP.FILE.REC showing the legal representative as an applicant. NOTE: As in any other application, the legal representative who is an original applicant may later assign the invention, and the new assignee may then file a request under 37 CFR 1.46 (see Changing the applicant below) and thereby replace the legal representative as the applicant.

· If the assignee or obligated assignee is the original applicant identified in the published international registration, documentary evidence of ownership such as an assignment is not required at that point. (The assignment should be recorded in the USPTO no later than payment of the issue fee. For when “an assignee who is not the original applicant” wants to become the applicant, see Changing the applicant below.)

· If the applicant is a proprietary party, the applicant must also file a petition and fee plus documentary evidence of proprietary interest and a “statement” that the filing “is appropriate to preserve the rights of the parties.” As shown below under Data Source & Pre-Capture Verification, the PaDaCap contractor is required to verify that the proprietary party has filed a proper petition and that the petition has been granted.

Correcting or updating the name of the applicant via ADS or Article 16. Per 37 CFR 1.46(c)(1):

Any request to correct or update the name of the applicant … must include an application data sheet under §1.76 specifying the correct or updated name of the applicant in the applicant information section (§1.76(b)(7)) in accordance with §1.76(c)(2). A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.”

Thus, in an international design application, the name of the applicant can be changed either through the submission of a signed and marked-up ADS or, in certain cases, through a recording of the change with the International Bureau under Hague Agreement Article 16.

NOTE: The HAGUE.IR_PUB reflects what is printed on the WIPO publication. In an “indirect” filing—a Hague application that is already present in the USPTO at the time of WIPO publication—it is possible for the applicant to see an error and file a signed and marked-up ADS before WIPO publication takes place. That is, the date of the signed and marked-up ADS precedes the date of the HAGUE.IR_PUB. In such a situation, the signed and marked-up ADS would be the data source.

A change in the corporate name (for example, from Poetry in Motion Ltd. to Villanelle Inc.) is such a correction/update. Typically, a transmittal letter accompanying the application data sheet will make clear that this is a change of company name and not a change of applicant. A 3.73(c) statement is not required to correct or update the name of the applicant.

Under Article 16, certain changes may be recorded at the International Bureau with effect in the designated offices. This includes changes to the name or address of the “holder” of the international registration. As stated by the International Patent Legal Administration office, “After international registration, the applicant becomes the ‘holder’ and thus all Art. 16 name/address changes refer to the ‘holder.’” Article 16 XML recording data is communicated to the USPTO and rendered in the application file under document code HAGUE.ART.16. The document HAGUE.ART.16 will be reviewed by the International Patent Legal Administration (IPLA) and annotated to indicate whether the change is to be entered. An example of an annotated HAGUE.ART.16 document indicating entry of an address change for an applicant is shown below.

A Hague Article 16 recording can arrive in the USPTO either pre- or post-allowance.

· When the PaDaCap contractor encounters a HAGUE.ART.16. document (Recording Type: Change in Name/address of the Holder) that has been annotated to indicate entry of the change, the contractor will use as the source the HAGUE.ART.16 document for the particular applicant whose name and/or address was changed (unless superseded by a subsequent change, e.g.., a change to applicant data via a signed and marked-up ADS).

· After IPLA annotates the Article 16 document to indicate entry of the correction to applicant name and/or residence, IPLA requests that its filing receipt contractor send out a corrected APP.FILE.REC. If there is an entered Article 16 document or a proper ADS making a change to the applicant data and such change is not shown on the BIB or later-dated APP.FILE.REC, the PaDaCap contractor will make any necessary PALM updates to the applicant name and residence (city + U.S. state, city + non-U.S. country) and will send out a corrected APP.FILE.REC.

The Article 16 document’s annotated/entered “holder” information, usually shown with INID code (73), will be used as the source for the INID code (71) applicant information printed on the U.S. patent. If it happens that the Article 16 document shows the “holder” information with INID code (78), the annotated/entered INID code (78) “holder” information will be used as the source for the INID code (71) applicant information printed on the U.S. patent.

NOTE: When the Article 16 document shows the “holder” information with INID code (73), the Article 16 name/address change for the applicant/holder has no relevance to the INID (73) assignee information that the PaDaCap contractor will capture from the PTOL-85B.

When the PaDaCap contractor encounters a HAGUE.ART.16. document (Recording Type: Change in Name/address of the Holder) that has not been annotated, the PaDaCap contractor will send an e-mail to the ODM Publication Branch (as of this writing, hung.vuong@uspto.gov). The ODM Publication Branch will obtain guidance by contacting IPLA (as of this writing, boris.milef@uspto.gov).

Changing the applicant. Per 37 CFR 1.46(c)(2), “Any request to change the applicant … after an original applicant has been specified must include an application data sheet under §1.76 specifying the applicant in the applicant information section (§1.76(b)(7)) in accordance with §1.76(c)(2) and comply with §§3.71 and 3.73 [prosecution of application by assignee].” That is, in addition to the ADS, the “assignee who is not the original applicant” must submit a signed 3.73(c) statement to establish ownership and take over the prosecution. The document code R3.73 is used for such a statement. Exception: If the applicant files a combination power-of-attorney and 3.73(c) statement, the 3.73(c) statement may be shown under document code PA.. .)

Rule 22 Corrections. Corrections of errors in the published international registration, including errors in applicant data, may be made by the International Bureau pursuant to Hague Rule 22. Rule 22 XML correction data is communicated to the USPTO and rendered in the application file under document code HAGUE.R.22. The HAGUE.R.22 document will be reviewed by the International Patent Legal Administration (IPLA) and annotated to indicate whether the correction is to be entered.

NOTE: A 3.73(c) statement and a marked-up application data sheet are required only in a change of applicant under U.S. Rule 1.46. A Hague Rule 22 correction to the applicant data is a different procedure, and a 3.73(c) statement and a marked-up application data sheet are not relevant to it.

Below is an example of an annotated HAGUE.R.22 document reflecting entry of a correction to the name of an applicant. As mentioned earlier (in the discussion of Article 16 documents), “holder” is the post-international registration word for “applicant.”

A Hague Rule 22 correction* can arrive in the USPTO either pre- or post-allowance.

· When the PaDaCap contractor encounters a HAGUE.R.22 document that has been annotated to indicate entry of the correction to applicant data, the contractor will use as a source the HAGUE.R.22 document for the applicant data that was corrected (unless superseded by a later change to applicant data, e.g., via a signed and marked-up ADS in accordance with U.S. rules).

· After IPLA annotates the Rule 22 document to indicate entry of the correction to applicant name and/or residence, IPLA requests that its filing receipt contractor send out a corrected filing receipt. If there is an entered Rule 22 document or a proper ADS making a change to the applicant data and such change is not shown on the BIB or later-dated APP.FILE.REC, the PaDaCap contractor will make any necessary PALM updates to the applicant name and residence (city + U.S. state, city + non-U.S. country) and will send out a corrected APP.FILE.REC.

The Rule 22 document’s annotated/entered “holder” information, usually shown with INID code (73), will be used as the source for the INID code (71) applicant information printed on the U.S. patent. If it happens that the Rule 22 document shows the “holder” information with INID code (78), the annotated/entered INID code (78) “holder” information will be used as the source for the INID code (71) applicant information printed on the U.S. patent.

NOTE: When the Rule 22 document shows the “holder” information with INID code (73), the Rule 22 name/address change for the applicant/holder has no relevance to the INID (73) assignee information that the PaDaCap contractor will capture from the PTOL-85B.

When the PaDaCap contractor encounters a HAGUE.R.22 document that has not been annotated, the PaDaCap contractor will send an e-mail to the ODM Publication Branch (as of this writing, hung.vuong@uspto.gov). The ODM Publication Branch will obtain guidance by contacting IPLA (as of this writing, boris.milef@uspto.gov).

Data Source & Pre-Capture Verification The applicant information consists of the applicant’s name and residence (city + state code + code US; or city + foreign country code).

In Hague applications as in all other applications, the PaDaCap contractor will compare the applicant data as shown in the verified source with what is shown on the latest BIB or APP.FILE.REC and, when there is a discrepancy with respect to the number and names of applicants, will update PALM and generate a corrected APP.FILE.REC.

· applicant who is not an inventor When the applicant is not an inventor:

Assignee/obligated assignee/proprietary party*: must be identified as the applicant either in the WIPO publication of the international registration or in a signed and marked-up application data sheet (ADS) legal representative(( of deceased/incapacitated inventor: may be identified as an applicant in the WIPO publication, in a substitute statement, or in a signed and marked-up (ADS) As shown below under PaDaCap contractor’s verification of “proprietary party” petition, the PaDaCap contractor is required to verify that the proprietary party has filed a proper petition and that the petition has been granted.

The “legal representative”—under 35 U.S.C. 117, which see below—is the person (such as heir, executor, or administrator) who acts on behalf of a deceased or legally incapacitated inventor. However, the legal representative may be an institution, in which case the institution itself, not the person who signs the ADS or OATH (substitute statement) on the institution’s behalf, is the legal representative.

· With two exceptions, the INID (71) Applicant data source for the name and residence of an applicant who is not an inventor is, in the following hierarchical order:

1. the latest signed and marked-up ADS that corrects, updates, or changes its Applicant Information section in accordance with U.S. rules

2. WIPO International Publication Data (HAGUE.IR_PUB)

The two exceptions:

· On a substitute statement (OATH) executed by a legal representative on behalf of a deceased or legally incapacitated inventor, the PERSON EXECUTING THIS SUBSTITUTE STATEMENT section will be the source for the name and residence of the legal representative, unless the legal representative later assigned the invention to an applicant added under 37 CFR 1.46(c). Such a legal representative will be printed in the (71) Applicant data whether or not that legal representative is identified as an applicant in the WIPO International Publication Data (HAGUE.IR_PUB) or in the Applicant Information section of an ADS.

· Changes or corrections concerning applicant data annotated as entered on document HAGUE.ART.16 or HAGUE.R.22 will also be a complementary source unless superseded by a subsequent correction, e.g., via a later filed signed and marked-up ADS. After IPLA annotates the Article 16/Rule 22 document to indicate entry of the correction to applicant name and/or residence, IPLA requests that its filing receipt contractor send out a corrected APP.FILE.REC. If there is an entered Article 16/Rule 22 document or a proper ADS making a change to the applicant data and such change is not shown on the BIB or later-dated APP.FILE.REC, the PaDaCap contractor will make any necessary PALM updates to the applicant name and residence (city + U.S. state, city + non-U.S. country) and will send out a corrected APP.FILE.REC.

For capturing applicant data from Form PTO/AIA/14, Application Data Sheet 37 CFR 1.76, and from a substitute statement (OATH) executed by a legal representative, see DATA ENTRY MANUAL FOR UTILITY PATENTS, 7A. Applicant Data.

· inventor-applicant Each inventor who is also an applicant will be identified on the patent front page in both INID (71) Applicant data and INID (72) Inventor data.

Unless corrected, inventorship in an international design application designating the United States is the inventorship set forth in the WIPO publication of the international registration. See 37 CFR 1.48(f): “The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3).