Attachment 31a - DCB 2019-03.docx

D a t a C a p t u r e B u l l e t i n

Number 2019-3 February 19, 2019

QUERIES IN CERTIFICATES OF CORRECTION

PROCESSING

The changes described in this bulletin will be applied to the 2020 revision of

CERTIFICATES OF CORRECTION GUIDELINES

FOR PATENT DATA CAPTURE CONTRACTOR.

***This bulletin is effective immediately.***

CERTIFICATES OF CORRECTION GUIDELINES

FOR PATENT DATA CAPTURE CONTRACTOR

is revised by the addition of Section FIFTEEN. Queries in Certificates of Correction Processing.

Section FIFTEEN Queries in Certificates of Correction Processing

This is the procedure by which the PaDaCap contractor seeks guidance from the Certificates of Correction Branch when the Form PTO-1050 or Form PTO/SB/44 is problematic. In this section the term “1050” will be used for Forms PTO-1050 and PTO/SB/44.

Query Procedure query. The PaDaCap contractor will send queries (PDF images) via the Omaha server. The file name will consist of the sent date in ddmmyy format, followed by COC, followed by the spelled-out month, followed by Queries.pdf. For example, queries sent on 18 September 2018 would be given the file name 180918COCSeptemberQueries.pdf. Each query form (showing certificate ID, patent number, sent date, query description) will be followed by the corresponding 1050.

query response. The Certificates of Correction Branch Supervisor and Team Leaders will retrieve the queries from the Omaha inbox, record the patent numbers, and distribute the queries to the team members for resolution. The query responses (PDF images) will be sent to the PaDaCap contractor via the Omaha server. The file name will consist of the sent date in ddmmyy format, followed by the initials of the LIE, followed by QUERY.pdf. For example, query responses sent by LIE Millard Fillmore on 28 September 2018 would be given the file name 280918MFQUERY.pdf. The first page of the query-response PDF file will be a cover page similar to the cover page for a workload PDF file (see Section TWELVE: Export of Files from USPTO to PaDaCap Contractor), showing the LIE’s name, sent date, patent numbers, etc., and the succeeding pages will be the query responses in the order identified on the cover sheet. Each query response will consist of a copy of the original query form followed by a (corrected) copy of the 1050.

Reasons for Queries

What follows is not intended to be an exhaustive list. Unless an exception is stated below, a query is required in the following situations:

· The 1050’s identification of the location of the correction is missing, incomplete, unclear, or misplaced, and the PaDaCap contractor cannot with certainty identify the location. For example, the 1050 does not provide the relevant column and/or line numbers of the specification; or the 1050 provides column and line numbers but the data being corrected is not present at that location; or the 1050 refers to paragraph numbers, page numbers, line numbers of the originally submitted specification; or the 1050 refers to the original claim number rather than the final claim number; or the 1050 correcting a bibliographic item refers to an incorrect INID code. No query is necessary if the PaDaCap contractor can with certainty determine the location.

· The 1050’s instructions are unclear, and the PaDaCap contractor cannot with certainty determine their meaning. For example, the 1050 does not make it clear whether the correction is an insertion or a replacement. If no instructions are present and it can be determined that the change shown on the 1050 is identical to what is already printed on the patent, the PaDaCap contractor will send a query. Otherwise, no query is necessary if the PaDaCap contractor can with certainty determine the meaning of the instructions.

· The 1050 mentions a correction but does not provide it. For example, replacement drawings are mentioned but replacement sheets have not been provided.

· The 1050 is a duplicate of, or overlaps with, a prior 1050, but there is no “supersedes” language.

· The data to be deleted/inserted are the same. If the PaDaCap contractor can determine with certainty that data to be deleted is incorrect, there is no need for a query. Otherwise, a query is necessary.

· The corrected version of the data contains typographical errors.

· The 1050 calls for a correction that is inconsistent with Appendix E: Style Rules in DATA ENTRY MANUAL FOR UTILITY PATENTS. A common example is when the 1050 requests the removal of the period after the C or F in a temperature, while Appendix E tells the PaDaCap contractor to print the C or F with such a period.

· The corrected version of the claim depends from a claim with a higher number.

· Claims or drawings are being added or deleted, but the 1050 does not also include a corrected title page.

· The inventorship is changed with respect to the first inventor but the inventor name in the masthead is not changed accordingly.

· The 1050 should have been treated as a supersede but was not.

· The corrected drawing or complex work unit is not sufficiently clear/legible. This sometimes happens even when such items are submitted for the purpose of increasing clarity/legibility.

· The Fig. label is missing from the corrected drawing. If the sheet number/total is also missing from the sheet, the query can also refer to that deficiency. If there is no problem with the Fig. label and the only problem is with the sheet number/total, the PaDaCap contractor may supply the sheet number/total with no need for a query. However, the PaDaCap contractor may not supply the Fig. label and must query when it is missing.

· The 1050 requests that applicant data be added even though the application was filed before September 16, 2012, or the 1050 requests an inventor data INID code change that is inappropriate for an application filed before September 16, 2012. For example, a query should be sent if the patent issued in 2011 but the 1050 requests that applicant data be added or requests that the inventor’s INID code be changed to (72). It is understood that the application’s filing date is not required in the header of the 1050, so a query should be sent in these circumstances when the PaDaCap contractor is uncertain about the application’s filing date with respect to September 16, 2012.

If possible, the PaDaCap contractor should resolve the following problems without the need for a query, but queries may be sent when necessary.

· Issue date on the 1050 is incorrect.

· Pages of the 1050 are missing. For example, the top of the 1050 says “Page 1 of 2” but there is only one page, and PAIR shows that only one page was filed.

· A distinction needs to be made as to whether a given character is numeric, alphabetic, uppercase, lowercase. For example, numeral 1, lowercase letter l, capital letter I.

· The 1050 changes the title on the patent’s front page but does not also change the title at column 1, line 1, of the specification. The PaDaCap contractor may make the appropriate addition with respect to the title change at Column 1, Line 1, of the specification. A query is not required.

· The patent number and the application number in the header of the 1050 do not identify the same application, or they identify an application that does not match the corrections that are shown on the 1050.

· The inventor’s name in the header of the 1050 does not match the patent number and/or the application number.

In accordance with Section TWELVE, the PaDaCap contractor is already e-mailing to CoC_mailbox@uspto.gov and CustomerServiceCoC@uspto.gov a report verifying that the items listed on the *IFW Certificate of Correction* cover page match the 1050s received and reporting any duplicates or other discrepancies. In addition, the report will now identify any instances in which the PaDaCap contractor needs to resolve data mismatches on the 1050s, such as discrepancies involving patent numbers, application numbers, and inventor names.

Additional guidelines:

· The inventor’s name in the header of the 1050 should reflect the (sole or first) inventor’s name that was printed on the issued patent, even when the certificate of correction will be changing the order of joint inventors so that a different inventor’s name will be moved to the first position in the order. Once the certificate of correction has changed the order of the inventors, the header of any future 1050 for that same patent will show the first inventor’s name in accordance with the new order.

· When the 1050 provides a correction to the number of drawing sheets on the patent’s front page, the PaDaCap contractor should not query for a new front page. If drawings are being added, the additional drawing sheets should be attached. If drawings are being deleted, the 1050’s correction to the number of drawing sheets is sufficient.

· If the 1050 specifies the changes to a particular drawing figure, an actual new drawing sheet is not needed. If the drawing figure being corrected is the representative (print) figure, the correction needs to apply not only to the relevant drawing sheet but also to the representative (print) figure on the patent front page. A drawing figure can be corrected by showing on the 1050 the figure as it appears on the patent and the figure in its corrected form, but the figure as shown on the 1050 must be of sufficient quality to overcome its reduction in size from how it would appear on a drawing sheet.

· If the 1050 lacks the appropriate heading like “In the Claims” or “In the Specification,” the PaDaCap contractor may supply such heading. A query is not required.

· The 1050 is not required to identify the location of a specification error in terms of column and line numbers if the nature of the error adequately locates it (such as in a claim or a chemical item).

DCB No. 2019-3 Office of Data Management Page 1 of 6