Attachment 24 - File Maintenance Final Data Capture and Issue Build 201900911.doc

File Maintenance, Final Data Capture and Issue Build

Processing Instructions

USPTO - September 11, 2019

FILE MAINTENANCE,

FINAL DATA CAPTURE

AND ISSUE BUILD REQUIREMENTS

The File Maintenance Facility (FMF) is responsible for maintaining the electronic application file for allowed applications. The FMF also processes all forms of communication received in any application after the mailing of the Notice of Allowance. The processing of these communications are necessary in order to prepare an application for Final Data Capture. The File Maintenance Facility also processes Notices to File Corrected Application Papers, Notices to Require an Inventor’s Oath or Declaration and Notices of Abandonment for failure to comply with either fee payments, drawing requirements, oath requirement or responses to Notices to File Corrected Application Papers. The File Maintenance Facility also reviews, assembles and prepares the weekly Patent Grants for mailing.

Post allowance communications include Fee payments, drawings, Request for Continued Examination (RCE)/Quick-Path Information Disclosure Statements (QPIDS) submissions, after allowance amendments (R312), Power of Attorney changes, and Change of Address requests, as well as other various petitions and requests.

The Final Data Capture process incorporates all of the information necessary for the patent grant that was changed or added to the application after Initial Data Capture.

The Issue Build process involves assigning patent numbers and issue dates weekly for all applications that have completed the Final Data Capture process.

FILE MAINTENANCE

RECEIPT OF APPLICATIONS

The Contractor shall send a daily electronic list of each application released from Initial Data Capture (IDC) to the Patent and Trademark Office (PTO). This electronic list is loaded into the Patent Application Location and Monitoring (PALM) system to create a Finalized Initial Data Capture (FIDC) contents entry indicating IDC has been completed.

PROCESSING POST-ALLOWANCE CORRESPONDENCE

The Contractor will receive a daily listing of all applications and associated document codes for documents received the previous day for any application in an allowed status. This is referred to as the Daily New Paper List. The list will be in an xml format and will include the following data elements:

- <NewPaperList>

- <NewPaperDoc>

<ApplicationNumber>########</ApplicationNumber>

<Code>ABCD</Code>

<MailDate>YYYYMMDD</MailDate>

<LoadDate>YYYYMMDD</LoadDate>

<IndexDate>YYYYMMDD</IndexDate>

</NewPaperDoc>

The Contractor shall process post-allowance correspondence in accordance with the guidelines herein and guidelines described in the most recent Data Entry Manuals.

DRAWINGS

Applications for which post allowance drawings have been indexed and scanned into IFW will be processed as follows:

1. Check the application serial number to ensure the drawings were indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the drawings be indexed and scanned to the correct application serial number and that the drawings in the incorrect application be closed.

2. Ensure the date of receipt is on or before the date due as stated on the notice requiring drawings.

3. If the drawings are late, then check for a Certificate of Mailing or Transmission.

a. If the Certificate of Mailing or transmission date is on or before the date due, proceed to step 4.

b. If the Certificate of Mailing or transmission date is later than the date due, then the application should be abandoned as described in the “Processing Applications for Abandonment” section below.

4. Locate the “Brief Description of Drawings” in the specification of the application.

5. Verify there is a brief description for each drawing figure.

a. If there is a brief description for each drawing figure, then the drawings are complete.

b. If there is not a brief description for each drawing figure, then complete and mail a “Notice to File Corrected Application Papers” as described in detail in the Data Entry Manuals.

6. Using PALM (Publication Case Action) enter transaction DRWF, enter the date of receipt of the drawings and enter the application serial number. This will close the drawing requirement and record the date the drawings were finalized in the PALM contents of the application.

ISSUE FEES

Applications for which Issue fee payments have been indexed and scanned into IFW will be processed as follows:

1. Check the application serial number to ensure the fee(s) transmittal was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the fee(s) transmittal be indexed and scanned to the correct application serial number and that the fee(s) transmittal in the incorrect application be closed.

2. Change the correspondence address as described in section “Change of Address”, when Block 1 on the Issue Fee Transmittal form contains a check mark in the Change of Correspondence Address box and PTO/SB/122 is attached.

3. Change the entity status as described in section, “Processing Post-Allowance Correspondence Entity Status Changes” when Block 5 on the Issue Fee Transmittal form contains a check mark in any box.

4. Using PALM (Publication Case Action) enter transaction 1084, enter the application number, the date of receipt, the Certificate of mailing or transmission date, if applicable, and the advanced order quantity as shown in Block 4a on the Issue Fee Transmittal.

Note: If transaction 1084 as described in step 3 was erroneously used to update issue fee payments in an incorrect application the Contractor shall use PALM transaction 1085 to reverse the error.

Amendments filed under 37 C.F.R 37 1.312 (Rule 312) Amendments filed under Rule 312 may be submitted in response to a Notice to File Corrected Application Papers or may be voluntarily submitted by the applicant. Amendments must be filed with or before payment of the issue fee unless in response to a Notice to File Corrected Application papers previously mailed by the contractor.

Applications for which post allowance Rule 312 Amendments have been indexed and scanned into IFW will be processed as follows:

1. Check the application serial number to ensure the amendment was indexed and scanned into the correct application.

2. Review all images for clarity and legibility.

3. Review the document to ensure all pages are present.

4. Ensure that the document has the correct document code (A.NA)

NOTE: If the document code is incorrect, the amendment is in the wrong application, an image is unclear or illegible, or there are missing pages then the contractor shall contact its Front-End Processing Scanning Customer Support entity for resolution.

5. If the amendment is filed in response to a notice, ensure the date of receipt is on or before the date due as stated on the notice requiring the amendment and the appropriate extension of time fee is paid if needed. NOTE: If the amendment is voluntarily submitted by the applicant, i.e. not in response to a notice, then timeliness is not a factor.

a. If the amendment is late, then check for a Certificate of Mailing or Transmission.

i. If the Certificate of Mailing or transmission date is on or before the date due, proceed to step 8.

ii. If the Certificate of Mailing or transmission date is later than the date due, then the application should be abandoned as described in the “Processing Applications for Abandonment” section below.

2. If the amendment is voluntarily submitted by the applicant, i.e. not in response to a notice, ensure the amendment was received with or before payment of the issue fee.

a. If submitted with or before payment of the issue fee, proceed to step 6.

b. If submitted after payment of the issue fee, proceed to step 9.

6. Review the Application Contents on the Editor Data Tab in eDRS to ensure the amendment was not entered. If already entered, go to step 8.

7. Using PALM (Incoming Correspondence) enter transaction 1689, enter the date of receipt and the application number.

8. Review the amendment and determine if it is accompanied by a post allowance Petition to Accept Color Drawings or if it is a response to a Notice to File Corrected Application Papers previously mailed by the contractor or if it is a voluntary submission by the applicant.

c. If filed with a petition related to color drawings, ensure the amendment is limited to inserting the required color drawing statement; “The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.” If so go to follow the instructions in the Data Entry Manual pertaining to Petitions for color drawings.

d. If in response to a Notice to Filed Corrected Application Papers, ensure the amendment is limited to the correction that the notice requested. If so go to step 9.

e. If the Rule 312 amendment is responding to a post-allowance Notice to File Corrected Application Papers but goes beyond the corrections that were requested by the notice, the contractor shall not enter any part of the Rule 312 amendment but instead shall use the “RUSH” PROCEDURE WILL BE USED FOR NOTIFYING EXAMINERS THAT ACTION IS NEEDED ON POST-ALLOWANCE (RULE 312) AMENDMENTS, POST ALLOWANCE INFORMATION DISCLOSURE STATEMENTS, AND POST ALLOWANCE PETITIONS THAT ARE TO BE DECIDED IN TECHNOLOGY CENTERS in Appendix 1.

f. If the Rule 312 amendment is a voluntary submission, i.e. not in response to a USPTO requirement, the contractor shall use the “RUSH” PROCEDURE WILL BE USED FOR NOTIFYING EXAMINERS THAT ACTION IS NEEDED ON POST-ALLOWANCE (RULE 312) AMENDMENTS, POST ALLOWANCE INFORMATION DISCLOSURE STATEMENTS, AND POST ALLOWANCE PETITIONS THAT ARE TO BE DECIDED IN TECHNOLOGY CENTERS in Appendix 1.

9. Prepare a Response to Rule 312 Communication (Form PTOL-271) by checking Box 1a on the form.

10. Using PALM (Publication Case Action) enter transaction 1408, enter the application number, the date of receipt and the Action Date.

11. The PTOL-271 generated by the contractor shall be processed for mailing to the applicant or for e-notification of the applicant as described in Appendix 2.

12. The PTOL-271 generated by the contractor shall be delivered to the Image File Wrapper.

Information Disclosure Statement (IDS) Additional instructions are in the Data Entry Manuals

13. Check the application serial number to ensure the IDS was indexed and scanned into the correct application.

14. Review all images for clarity and legibility.

15. Review the document to ensure all pages are present.

16. Ensure that the document has the correct document code (IDS)

NOTE: If the document code is incorrect, the IDS is in the wrong application, an image is unclear or illegible, or there are missing pages then the contractor shall contact its Front-End Processing Scanning Customer Support entity for resolution.

17. Insure the IDS is compliant with 37 CFR 1.97 (d)

a. An IDS is compliant when all of the following conditions are met:

i. The IDS is filed with the issue fee payment or before the issue fee payment, but after the mailing of the Notice of Allowance; AND

ii. The IDS submission contains the fee under 37 CFR 1.17(p); AND

iii. The IDS submission contains a statement under 37 CFR 1.97(e).

b. An IDS is Non-Compliant in any of the following conditions:

i. The IDS is filed after the issue fee payment; OR

ii. The IDS submission does not contain the fee under 37 CFR 1.17(p); OR

iii. The IDS submission does not contain a statement under 37 CFR 1.97(e).

18. If the IDS is compliant:

a. Review the Application Contents on the Editor Data Tab in eDRS to ensure the IDS was not entered. If already entered, go to step c.

b. Enter the IDS in PALM using transaction 1844 (paper filing) or 1845 (eFiling) and entering the appropriate information.

c. Initiate a RUSH as described in the Data Entry Manuals.

i. the contractor shall use the “RUSH” PROCEDURE WILL BE USED FOR NOTIFYING EXAMINERS THAT ACTION IS NEEDED ON POST-ALLOWANCE (RULE 312) AMENDMENTS, POST ALLOWANCE INFORMATION DISCLOSURE STATEMENTS, AND POST ALLOWANCE PETITIONS THAT ARE TO BE DECIDED IN TECHNOLOGY CENTERS in Appendix 1.

19. If the IDS is non-compliant, prepare a Notice of Non-Compliant Information Disclosure Statement using Official Correspondence (OC).

a. Create the outgoing correspondence by selecting Notice of Non-Compliant Information Disclosure option in OC.

b. Fill in the appropriate information and submit the document for scanning and mailing/eNotification.

NOTE: If there is authorization to charge the fee included with the IDS submission but the fee was not processed then the contractor will initiate a RUSH to the Office of Data Management requesting the fee to be processed.

Change of Correspondence Address (COA)

1. Check the application serial number to ensure the Change of Correspondence Address was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the Change of Correspondence Address be indexed and scanned to the correct application serial number and that the Change of Correspondence Address in the incorrect application be closed.

2. Verify that the Change of Address was signed by the attorney of record or all of the applicant’s or all of the assignees.

a. Review the latest dated Application Filing Receipt for currently recorded names of the Assignees

b. Using PALM General Information Screen review the Atty/Agent Info and the Applicants tabs for currently recorded attorneys and applicants.

3. If the Change of Correspondence Address is signed by the attorney of record or all of the applicant’s or all of the assignees then use PALM PreExam to update the Correspondence Address.

a. Open Preexam Application

b. Open Application Patent Case

c. Click on File

d. Click on Open

e. Type in Application Number

f. Click on OK

g. Re-type the Application Number

h. Click OK

i. Click on Show Menu

j. Click on Correspondence Address

k. Click on drop down box and select change reason

l. Type in any changes from the Change of Address form in IFW.

m. Click Save

4. If the Change of Correspondence Address is not signed by the attorney of record or all of the applicant’s or all of the assignees then an annotation, non-compliant COA is added to IFW and no further action is necessary.

Power of Attorney or Associate Power of Attorney NOTE: See Appendix 3 Establishing POA for more details

1. Check the application serial number to ensure the Power of Attorney was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the Power of Attorney be indexed and scanned to the correct application serial number and that the Power of Attorney in the incorrect application be closed.

2. Verify that the Power of Attorney was signed by all of the applicants.

a. Using PALM General Information Screen review the Applicants tabs for currently recorded applicants.

3. If the Power of Attorney is signed by all of the applicant’s then use PALM PreExam to update the Attorney information.

a. Open Preexam Application

b. Open Application Patent Case

c. Click on File

d. Click on Open

e. Type in Application Number

f. Click on OK

g. Re-type the Application Number

h. Click OK

i. Click on Show Menu

j. Click on Attorneys

k. Enter the Customer Number twice

l. Click Save

4. If the Power of Attorney is not signed by all of the applicants then use PALM PreExam to reject the Power of Attorney submission. Refer to Appendix 4 – Rejection of Power of Attorney Processing Revocation of Power of Attorney A power of attorney or authorization of agent may be revoked at any stage in the proceedings of an application. An attorney or will be notified of the revocation of the power of attorney or authorization. The applicant or patent owner will be notified of the withdrawal of the attorney or agent.

1. Check the application serial number to ensure the Revocation of Power of Attorney was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the Revocation of Power of Attorney be indexed and scanned to the correct application serial number and that the Revocation of Power of Attorney in the incorrect application be closed.

2. Verify that the Revocation of Power of Attorney was signed by the attorney of record or all of the applicant’s or all of the assignees.

a. Using PALM General Information Assignment link at bottom of page. The screen displays the assignment data.

b. Using PALM General Information Screen review the Atty/Agent Info and the Applicants tabs for currently recorded attorneys and applicants.

3. If the Revocation of Power of Attorney is signed by the attorney of record or all of the applicant’s or all of the assignees then use PALM PreExam to update the Attorney Information.

5. If the Revocation of Power of Attorney is not signed by the attorney of record or all of the applicant’s or all of the assignees then then use PALM PreExam to reject the Revocation of Power of Attorney submission

NOTE: If the Revocation and Power of Attorney is being submitted by ASSIGNEE: Refer to rules: 37 CFR 3.71 or 37 CFR 3.73 An assignment will not of itself operate as a revocation of a power or authorization previously given, but the assignee of the entire interest may revoke or appoint previous powers and be represented by an attorney or agent of the assignee’s own selection. The assignee must submit a Certificate letter with the Reel and Frame number or a copy of an assignment. If assignee has no Reel and Frame number use PALM to determine if it exists.

Inventor’s Oath The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application. Only inventors can execute an oath or declaration. The applicant for patent may execute a substitute statement in lieu of an oath or declaration under the permitted circumstances.

1. Check the application serial number to ensure the Inventor’s Oath was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the Inventor’s Oath be indexed and scanned to the correct application serial number and that the Inventor’s Oath in the incorrect application be closed.

2. An oath can be entered after verifying compliance to Rule 1.63 in 37Code of Federal Regulations

a. The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64. An oath or declaration under this section must:

i. Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;

ii. Identify the application to which it is directed;

iii. Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and

iv. State that the application was made or was authorized to be made by the person executing the oath or declaration.

b. Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:

i. Each inventor by his or her legal name; and

ii. A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

c. A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.

i. A newly executed oath or declaration is not required for an inventor in a continuing application that claims the benefit of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.

ii. The inventorship of a continuing application filed under is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a signed statement stating the name of each inventor in the continuing application.

iii. Any new joint inventor named in the continuing application must provide a compliant oath or declaration.

iv. An assignment may also serve as an oath or declaration required by this section if the assignment as executed:

(a) Includes the information and statements required under paragraphs (a) and (b) of this section; and

(b) A copy of the assignment is recorded as provided for in part 3 of this chapter.

v. Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.

d. With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64. With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.

e. An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed (i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.

f. (h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.

3. Using PALM (Publication Case Action) enter transaction 1600, enter the application number and the Mailroom Date.

Foreign Application Certified Priority Submission (Priority Paper)

1. Check the application serial number to ensure the Priority Paper was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the Priority Paper be indexed and scanned to the correct application serial number and that the Priority Paper in the incorrect application be closed.

2. Verify that the Priority Paper was signed by the attorney of record or all of the applicant’s or all of the assignees.

a. Review the latest dated Application Filing Receipt for currently recorded names of the Assignees

b. Using PALM General Information Screen review the Atty/Agent Info and the Applicants tabs for currently recorded attorneys and applicants.

3. Locate the Priority Paper in the IFW. It is usually a document that has an image of a ribbon and seal. The document code is FRPR.

4. Verify that the Foreign Priority information presented on the ADS matches the information on the priority paper.

a. Check the country name.

b. Check the application number,

c. Check the filing date.

i. If the above information does not match between the priority paper and the ADS then send on query to PTO as in Appendix 4.

5. Verify that the earliest foreign filing date is within one year of the request for priority or within one year from any continuation application filing date.

a. The US filing date must be within one year of the filing date of the foreign application (in the event that the Foreign priority was filed on a weekend, the applicant has until the following Monday to file the US application OR if the Foreign priority was filed on a US Federal holiday, the applicant has an additional work day).

6. Verify if the “Foreign priority claimed 35 USC 119 conditions met” boxes are marked “yes.” On the BIB Data Sheet.

a. If both boxes are not marked “yes”, then print the IFW document and use pen to mark both boxes “yes” and write initials on line next to “Verified and Acknowledged” and deliver changed document to IFW.

7. Verify that the priority paper was submitted with or before the Issue Fee Payment.

a. If the priority receipt date is after the fee payment date, then the priority paper must be accompanied by a petition. If there is a petition, Create and send an IFW message to the Office of Petitions PET.Receipt IFW mailbox.

8. After it is determined that the Priority Paper was filed compliantly, then the contractor shall acknowledgment the claim of Foreign Priority.

c. Using PALM (Publication Case Action) enter transaction 1378, enter the application number.

d. The priority acknowledgment, Form PTOL-147 generated by the contractor shall be processed for mailing to the applicant or for e-notification of the applicant.

e. The notice generated by the contractor shall be delivered to the Image File Wrapper as described in Appendix 2.

20. If the Foreign Priority Document was not filed compliantly then the contractor shall initiate a printer rush query as described in Appendix 5.

Request for Acknowledgment Foreign Priority

1. Check the application serial number to ensure the Acknowledgement request was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the request be indexed and scanned to the correct application serial number and that the request in the incorrect application be closed.

2. Determine if the request states the Certified Foreign Priority Paper is in a parent application.

a. Use PALM General Information Screen’s Continuity Tab to determine the parent application number.

b. Using the parent application and look at the contents entries. Find RXXX this indicates a priority filed and request for Acknowledgment is able to be entered.

3. Determine if the request states the Certified Foreign priority paper is in the present application.

a. Review the IFW for the Certified Foreign priority paper that was previously filed. If the actual priority documents are in the file this indicates a priority filed and request for Acknowledgment is able to be entered.

4. After it is determined that the Priority Paper was filed compliantly, then the contractor shall acknowledgment the claim of Foreign Priority.

a. Using PALM (Publication Case Action) enter transaction 1378, enter the application number.

b. The priority acknowledgment, Form PTOL-147 generated by the contractor shall be processed for mailing to the applicant or for e-notification of the applicant as described in Appendix 2.

c. The notice generated by the contractor shall be delivered to the Image File Wrapper

5. If the Foreign Priority documents are not in file then the contractor shall initiate a printer rush query as described in Appendix 5.

NOTE: If priority is for a PCT application, send to Technology Center to enter.

Small Entity Statements, Loss of Entitlement to Small Entity Statements and Micro Entity Statements

1. Check the application serial number to ensure the statement was indexed and scanned into the correct application. If the application serial number is incorrect the contractor shall contact its Front-End Processing Scanning Customer Support entity and ask that the statement be indexed and scanned to the correct application serial number and that the statement in the incorrect application be closed.

2. Verify that the Priority Paper was signed by the attorney of record or all of the applicant’s or all of the assignees.

a. Review the latest dated Application Filing Receipt for currently recorded names of the Assignees

b. Using PALM General Information Screen review the Atty/Agent Info and the Applicants tabs for currently recorded attorneys and applicants.

3. Compliant Small Entity Statements

a. Using PALM (Publication Case Action) enter transaction 1841, enter the application number and the mailroom date.

4. Compliant Micro Entity Statements

a. Process using guidelines in Appendix 6.

5. Compliant Loss of Entitlement to Micro or Small Entity

a. The contractor shall initiate send an IFW message to PET.RECEIPT for Loss of Entitlement Papers filed under 37 CFR 1.28 C.

i. Paper filed under 37 CFR 1.28 c 1 where a small entity fee was paid in error, the error was discovered within three months of the fee’s payment and a deficiency is paid.

ii. Paper filed under 37 CFR 1.28 c 2 where a small entity fee was paid in error thereby requiring a fee deficiency and a verified statement of facts as to how the error occurred.

iii. If the paper is filed under rule 1.28 c, charge case to Office of Petitions.

DOCUMENT CHANGES

If a correction is made to any document, for example, correcting document data on the information disclosure statement, the contractor shall deliver the corrected original to IFW.

PRINTER RUSH QUERIES

When certain inconsistencies are identified in applications as described in detail throughout the Data Entry Manual the contractor should generate a printer RUSH query to direct the application back to the Examiner for correction/clarification. Post Allowance Correspondence is also directed back to the Examiner for consideration as outlined in detail within the Data Entry Manual. The Contractor shall also provide weekly reporting to the PTO of all Printer RUSH Queries as described in Attachment 2.

The Contractor shall monitor the Daily New Paper List to determine if a resolution is provided for the Printer RUSH.

COLOR UTILITY AND PLANT DRAWINGS

Color drawings are maintained as artifacts in IFW or are located in SCORE. Artifacts should be forwarded by the Technology Center at allowance to the Office of Data Management who will forward to the Contractor for processing.

ARTIFACT FOLDERS

Artifact folders contain items that cannot be scanned into IFW. The USPTO stores the artifact inside an Artifact Folder and an Artifact Sheet (code ARTIFACT) is stored in the Image File Wrapper. After allowance, the USPTO transfers the Artifact Folder to the contractor at or near the same time as the Initial Data export. The Contractor shall show receipt of the artifact folder by using PALM (Dispatch and Receive –EXPO Receipt) to scan the artifact folder barcode label. The artifacts must be maintained in such a manner that they are readily available for any required processing.

· Disposition of Artifact Folders at Issuance or Abandonment

The Contractor shall record the Artifact Folder number on a spreadsheet. The Contractor shall scan the barcode label on the related artifact folder(s) to dispatch them to the USPTO Files Repository, PALM location 9200 prior to the issue date. For applications that become abandoned, the related artifact folder will be dispatched to the USPTO Files Repository, PALM location 9200, as soon as the Contractor mails the “Notice of Abandonment.” Movement of artifact folders must be recorded with the appropriate PALM transaction. After dispatching the artifact folders to USPTO Files Repository, PALM location 9200, the Contractor shall place the artifact folders in boxes provided for this function. The Contractor shall record the box number and the total number of boxes in the shipment on each box. i.e. 1 of 10, 2 0f 10 etc. The Contractor shall deliver the boxed artifact folders to the USPTO designated location on the 6th floor in the Randolph Square building in Shirlington, Virginia.

· Locating and Returning Artifact Folders to the USPTO The USPTO will transmit requests for artifact folders to the Contractor electronically or by telephone.

The Contractor shall locate the artifact folders, shall dispatch the artifact folders by using PALM (Dispatch and Receive –EXPO Dispatch to Location) Enter the PALM location 7590 and scan the artifact folder barcode label. The contractor shall deliver the artifact folders to the Office of Data Management.

OUTGOING MAIL RETURNED AS UNDELIVERABLE TO THE PTO BY THE U.S. POST OFFICE

· Outgoing mail that is returned to the USPTO by the US Post Office will be indexed as RETMAIL in IFW.

· The contractor shall send a weekly listing of all RETMAIL that appear on the New Paper to the USPTO.

· The listing shall include the Application Serial Number, the Technology Center associated with the application and the date the returned mail was received.

PROCESSING APPLICATIONS FOR ABANDONMENT

Applications that contain a Notice of Allowance date greater than 3.5 months from the current date will be reviewed weekly. The Contractor shall use the IFW system check for the existence of either the issue fee payment, the drawings, the inventor’s oath or other required document or submission.

If the issue fee payment is not found in IFW or was not timely received, the contractor shall prepare the abandonment notice.

1. The Contractor shall use the 1589 PALM transaction, enter the abandonment date (3 months from the mail date of Notice of Allowance plus 1 day) and key the application serial number.

2. Check the box “Applicant’s failure to timely pay the required issue fee within the statutory period of three months from the mailing date of the Notice of Allowance.”

3. Check the box “The issue fee has not been received.”

4. Attach the document, “Respond to the Notice of Abandonment.”

5. The Contractor shall deliver the original abandonment form to IFW.

6. Either mail the abandonment form to the applicant or perform the procedures described in Appendix 2.

If the drawings are not found in IFW or were not timely received, the contractor shall prepare the abandonment notice.

1. The Contractor shall use the 1579 PALM transaction, enter the abandonment date (3 months from the mail date of Notice of Allowability plus 1 day) and key (or wand) the application serial number (bar code label of the application).

2. Check the box “Applicant’s failure to timely file new formal drawings as required in the Notice of Allowability.”

3. Check the box “No proposed new formal drawings have been received.”

4. Attach the document, “Respond to the Notice of Abandonment.” The Contractor shall deliver the original abandonment form to IFW.

5. Either mail the abandonment form to the applicant or perform the procedures described in Appendix 2.

If the response to a Notice to File Corrected Application papers are not found in IFW or was not timely received, the contractor shall prepare the abandonment notice (this applies only when the Notice to File Corrected Application papers should result in abandonment in other situations the application should continue on to issuance).

1. The Contractor shall use the 1579 PALM transaction, enter the abandonment date (3 months from the mail date of Notice of Allowability plus 1 day) and key (or wand) the application serial number (bar code label of the application).

2. Check the box “Applicant’s failure to timely file new formal drawings as required in the Notice of Allowability.”

3. Check the box “No proposed new formal drawings have been received.”

4. Attach the document, “Respond to the Notice of Abandonment.” The Contractor shall deliver the original abandonment form to IFW.

5. Either mail the abandonment form to the applicant or perform the procedures described in Appendix 6.

PROCESSING THE NOTICE TO FILE CORRECTED APPLICATION PAPERS

The Contractor shall produce a Notice to File Corrected Application Papers in accordance with the Data Entry Manuals.

a.

Using PALM (Publication Case Action) enter transaction 1380d, enter the application number and the Action Date.

b.

The notice generated by the contractor shall be processed for mailing to the applicant or for e-notification of the applicant.

c.

The notice generated by the contractor shall be delivered to the Image File Wrapper

PROCESSING THE NOTICE REQUIRING INVENTOR’S OATH OR DECLARATION

The Contractor shall produce a Notice Requiring Inventor’s Oath or Declaration in accordance with the Data Entry Manuals.

a.

Using PALM (Publication Case Action) enter transaction 1380O, enter the application number and the Action Date.

b.

The notice generated by the contractor shall be processed for mailing to the applicant or for e-notification of the applicant.

c.

The notice generated by the contractor shall be delivered to the Image File Wrapper

DISPATCHING APPLICATIONS FOR FINAL DATA CAPTURE (FDC) EXPORT

The application will be dispatched for FDC Export after all required documents have been received and entered and all requirements for issuance have been fulfilled.

1. Using PALM (Publication Case Action) enter transaction 1935.

2. If no error messages appear the contractor shall prepare and provide to the PTO a daily listing of application ready for Final Data Export.

3. If an error message is returned then the problem associated with the message must be resolved.

a. Applications with License and review flags will be sent to the USPTO weekly. The report name is "NonGrouping PALM Errors". The report will identify the application number and the PALM error description.

5/15/2017

1. Applications with BCPA and BRCE workflow entries must have a matching FCPA or FRCE workflow entry, otherwise these flags prevent applications from moving to Final Data Capture

2. The Contractor shall provide the “WAOC Virginia Status Report” on a weekly basis. This report will list the total number of applications dispatched for Final Data Capture.

Sample report

FINAL DATA CAPTURE (FDC) AND ISSUE BUILD

When the issue fee payment is received and verified; and other post-allowance requirements are met, all documents received after allowance are exported for FDC. The FDC process updates any data captured in Initial Data Capture that was changed by the applicant or the examiner after the Notice of Allowance.

Applications are prepared for patent number and issue date assignment after FDC is completed. Applications will be prioritized in issue fee payment date order starting with the earliest fee paid applications and in accordance with the Patent Production Schedule.

An electronic file consisting of, but is not limited to, the following data elements: Serial Number, Patent Number, Issue Number, Issue Date, Classification Data will be created and transferred to a designated USPTO file server using file transfer protocol (FTP).

Sorting Applications by Classification and Assigning Patent numbers The applications are arranged by first determining the general classification of Mechanical, Chemical, Electrical, Design, Plant, and Reissue according to the classification table. General categories are further sorted into specific classification order. Applications having an identical classification will be further sorted by subclass.

An application's official class and subclass are located on the Issue Classification form (IIFW) in the Image File Wrapper.

Patent numbers are assigned to applications after they are arranged in class and subclass order. Utility (Mechanical, Chemical and Electrical), Design, Plant, and Reissue applications have separate patent numbering sequences.

Reexamination Certificates

Reexamination certificates are issued daily. Reexamination applications are arranged in ascending order by certificate number. [The certificate number is the reexamined patent's number, to which a prefix such as C1, C2, etc. has been added. The certificate number is located in the RXPATENT or RXFILJKT document images in the IFW] Instructions for daily issuance or Reexamination certificates are provided in Appendix 6, Appendix 7 and Appendix 8.

Numbering Reexamination Certificates

The Contractor shall process each reexamination application after the reexamination application files are arranged in order of certificate number. The sequential number indicates the location of the published certificate in the chronological order of publication of reexamination certificates. The sequential number must be an ordinal number in parentheses and it must appear in the appropriate style as shown in the following examples for ex parte reexamination certificates: (3,560th), (3,561st), (3,562nd), (3,563rd), and (3,564th). The numbering sequence for inter partes reexamination certificates is a separate sequence in the same style.

PATENT GRANT PRINTING

The contractor shall send the data captured for the patent grant as a Postscript file to the Patent Printing Contractor via electronic file transfer protocol on a weekly basis in accordance with the Prior Workday schedule shown in the Statement of Work.

REVIEW, ASSEMBLY AND MAILING OF THE PATENT GRANT

The Contractor shall receive a shipment of the printed patent (Patent Grant). A Delivery Receipt showing the number of boxes per shipment, issue date, and quantity/range of the shipment shall be included in the shipment The Contractor shall complete the Status of Inventor’s Copies Report for each issue. This report will include the status of each patent grant in the issue. The Status of Inventor’s Copies Report shall be sent to the USPTO on a daily basis. A Sample report is shown as Appendix 10.

The Contractor shall review each patent grant to ensure the following are printed and ordered correctly.

· The patent grant cover contains the Director's signature.

· The patent number on the front of the patent grant matches the patent number on the front sheet, on all sheets of the specification, and on all sheets of the drawings, if any.

· The sheets of specification are checked for page number order and for completeness by ensuring that the last column of the specification ends with five asterisks, indicating both the end of the specification and the end of the patent.

· The drawing sheet numbers on the top of each sheet of drawing(s) are sequential and complete.

· The drawings are printed on only one side of the paper.

· The specification is printed on both sides of the paper except for the front page(s) and possibly the last sheet.

· The front page has two columns that are not numbered.

· The specification pages begin after the drawings sheet(s) (if the patent contains drawing) and have two columns that are numbered except the last page that may have only one numbered column.

· Patent grants containing lengthy Sequence Listings on compact disc are identified to ensure proper cover binding.

The contractor shall use the spine width vs Sheet Capacity conversion chart below to choose the correct spine size cover for each patent grant.

The contractor shall position the patent grants on the heating plate and gently slide the support plate shut. This will ensure that documents stand as straight up as possible and thus make the best possible contact with the heating plate along the entire spine.

The contractor shall tap lightly on the documents to ensure that all of the sheets make good contact with the adhesive in the spine.

The patent grants containing lengthy Sequence Listings on compact disc will have a sleeved sheet(s) bound within the grant cover as the last page of the patent document that is, the sleeved sheet will be the next page after the last page of claims.

The contractor shall insert any lengthy Sequence listing on compact disc into the sleeved sheet(s) previously bound as the last page of the patent document.

The PTO will notify the Contractor if the assembly of a patent grant requires special handling.

The contractor shall prepare mailing labels as described below using the label data provided by the USPTO. The mailing labels will be affixed to the official mailing envelopes. The patent grants shall be placed into the appropriate envelopes.

The patent grants are delivered to the USPTO Mail Center on the morning of the issue date. A list of patents not mailed on issue date shall also be delivered to the USPTO as specified in the Statement of Work.

Mailing Grants after Issue Date

Patent grants that are mailed after issue date for the first time are recorded in PALM:

· Use PALM to enter transaction 1219. (PGM contents entry)

· Enter Patent Number.

Patent grants that are mailed after issue date as a result of a granted petition for duplicate letter patent are recorded in PALM:

· Use PALM to enter transaction 1218. (PGMD contents entry)

· Enter Patent Number.

Patent grants that are mailed after issue date as a result of a Certificate of Correction that includes a reprinted patent grant are recorded in PALM:

· Use PALM to enter transaction 1212.

· Enter Patent Number.

Printing of U.S. Patent Grant Mailing Labels

The USPTO will provide a weekly text file that contains the grant address label information for mailing each of the patent grants in that particular issue. The text file will be provided via electronic file transfer. Each week the data for the advance order labels will also be provided. This data file should then be transferred to the Patent Printing Contractor via electronic file transfer. The contractor shall create mailing labels from the weekly text file for each patent grant to be mailed on issue date.

The label data will consist of up to eight lines of text, printed in a size and font that conform to United States Postal Service guidelines:

· The first line will contain the patent number, the application number, and the issue date separated by two asterisks (**).

· The second line will contain the PALM location of the Office of Data Management. This data will be flush right on the label.

· The remaining six lines will contain the address information.

For example:

Sample of Weekly Issue Breakdown:

Sample of Weekly Issue Build List:

The weekly issue build file should be named based on the particular week’s issue build, issue date.

For example: 1820140506

18 equates to the 18th week (or issue) of the calendar year

2014 equates to the year for that issue 05 equates to the month for that issue

06 equates to the day for that issue The file should be a text file that contains leading zeroes (as necessary) and delimited by commas. It should also be in a two column format as shown and provide the weekly issue file name in row one with a comma after the name

For example:

1820140506, 13606728,8713712

13131015,8713713

13209603,8713714

14022037,8713715

13291480,8719961

13507630,PP24417

13507639,PP24418

13373724,PP24434

13617738,RE44878

13873364,RE44883

29440162,D703916

29403041,D703917

29445175,D704415

13246370,H002291

Appendices

1. “RUSH” procedure will be used for notifying examiners that action is needed on post-allowance (rule 312) amendments, post-allowance information disclosure statements, and post-allowance petitions that are to be decided in technology centers.

2. Establishing Power of Attorney

3. Rejection of Power of Attorney Processing

4. Printer RUSH query for non-compliant Foreign Priority Documents

5. Micro Entity Status (MES) Processing Guide

6. Daily issuance of certificates, daily electronic official gazette for certificates, and reporting of daily certificates in weekly (Tuesday) electronic official gazette for patents

7. Reporting of daily certificates in weekly (Tuesday) electronic official gazette for patents

8. Publication processing of supplemental examination certificates

APPENDIX 1

“RUSH” PROCEDURE WILL BE USED FOR NOTIFYING EXAMINERS THAT ACTION IS NEEDED ON POST-ALLOWANCE (RULE 312) AMENDMENTS, POST‑ALLOWANCE INFORMATION DISCLOSURE STATEMENTS, AND POST‑ALLOWANCE PETITIONS THAT ARE TO BE DECIDED IN TECHNOLOGY CENTERS The contractor’s one-month Match & Return procedure for

Post-allowance Requests for Continued Examination (RCE)

For a post-allowance Request for Continued Examination (RCE), including a post-allowance RCE that is accompanied by an amendment or Information Disclosure statement, the contractor will follow these Match & Return procedures:

The contractor will not send an IFW message to the Technology Center upon the initial receipt of the post-allowance RCE.

The contractor will wait up to one (1) month for the Technology Center to process the post-allowance RCE.

If at the end of the one-month period the Technology Center has not processed the post-allowance RCE and if the application is still in an allowed status, the contractor will send an IFW message to the Technology Center.

NOTE: The above-described Match…