Attachment 26 - DCB 2019-01 (2).docx
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- Attached to
- Patent Data and Document Management Federal contract opportunity
- Solicitation number
- ACQ-20-0057
About this file
This document outlines requirements for a federal contract to provide patent data and document management services to the United States Patent and Trademark Office. The contractor will perform indexing and scanning of all paper documents filed with the USPTO and quality review of electronically filed documents to form the official electronic file wrapper. Additional requirements include conversion and composition of patent application data from various sources for pre-grant publication, post-allowance processing, and post-issuance activities. The contractor must also create artifact folders, provide customer support, and mail correspondence to applicants. Key deliverables are to be provided on a weekly basis in accordance with production schedules. The contract will require front-end processing, pre-grant publication, post-allowance processing, and post-issuance activities in compliance with technical references to be provided.
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Text version
D a t a C a p t u r e B u l l e t i n
Number 2019-2 January 24, 2019
WHEN 37 CFR 1.46(c) REQUEST
IS SUBMITTED AFTER
PAYMENT OF ISSUE FEE
(AMENDS DCB NO. 2018-13)
This bulletin amends DCB No. 2018-13, APPLICANTS AND INVENTORS UNDER
AMERICA INVENTS ACT: DATA SOURCE AND VERIFICATION GUIDELINES.
The information in this bulletin will be included in the 2020 revision of
DATA ENTRY MANUAL FOR UTILITY PATENTS.
***This bulletin is effective immediately.***
In 2018-13 DCB No. 2018-13, APPLICANTS AND INVENTORS UNDER AMERICA INVENTS ACT: DATA SOURCE AND VERIFICATION GUIDELINES, the Page 52 guidelines under the heading when applicant change comes in after IFEE payment are superseded by what is shown below.
when applicant change comes in after IFEE payment
When a 37 CFR 1.46(c) request to correct/update the name of the applicant or to change the applicant is submitted after payment of the issue fee—unless such request is made in response to a post-allowance Notice to File Corrected Application Papers (see Guideline 12 above), or unless such request is accompanied by a request for continued examination (RCE) and a petition for withdrawal from issue under 37 CFR 1.313 (see next paragraph below)—the request will be treated as a Rule 312 amendment and will be processed as a RUSH in accordance with the instructions in 25. Overview. (It is improper to file a Rule 312 amendment in an application after the issue fee has been paid, and the Technology Center will reject it on those grounds. The RUSH should specifically state that the request is a Rule 312 amendment and that it should be denied entry on the grounds that it was filed after the payment of the issue fee. If the XRUSH is not accompanied by the examiner’s rejection of the Rule 312 amendment, the PaDaCap contractor will generate another RUSH, again pointing out that Rule 312 amendments are not permitted after issue fee payment. If the XRUSH is accompanied by the examiner’s entry in part and denial in part of the Rule 312 amendment, the PaDaCap contractor will initiate another RUSH that points out to the examiner that the Rule 312 amendment was filed after issue fee payment and therefore is improper.)
Once the issue fee has been paid, the proper way to correct/update the name of the applicant or to change the applicant is to submit the 37 CFR 1.46(c) request, a petition for withdrawal from issue under 37 CFR 1.313, and a request for continued examination (RCE).
DCB No. 2019-2 Office of Data Management Page 2 of 2
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