Prosecution Timeline (No PCT)
Prosecution Timeline (PCT)
Ownership— Outside counsel must pay particular attention to the assignee and applicant fields listed on the filing receipt and confirm that ARIZONA BOARD OF REGENTS ON BEHALF OF ARIZONA STATE UNIVERSITY is spelled properly and is free of any clerical errors (except at stages during prosecution in which the inventors must be identified as the applicants because the case was filed under micro-entity status). This is important because a typographical error, if not corrected swiftly, will detrimentally impact our global patent rankings. SI and ASU take this very seriously!
Secrecy Orders—Outside counsel should confirm that the PTO has not issued a secrecy order. If the PTO is extremely late issuing the filing receipt, outside counsel should confirm that the PTO has not “snail-mailed” outside counsel a secrecy order in hard copy form.
Foreign Filing License – Outside counsel should verify within the filing receipt that the PTO has granted a foreign filing license.
•Proofing the Applicant/Assignee fields—Please proof only the name of the applicant/assignee and confirm that ARIZONA BOARD OF REGENTS ON BEHALF OF ARIZONA STATE UNIVERSITY (as applicable depending on entity size) appears in full and is spelled without typographical errors. If any errors are present, please bring such errors to SI’s attention without delay. This is important because a typographical error, if not corrected swiftly, will detrimentally impact our global patent rankings. SI and ASU take this very seriously!
•Other proofing—Outside counsel should not spend any billable firm time proofing any parts of the patent publication other than the Applicant/Assignee fields as indicated above.
International Search Reports and Written Opinions (ISR/WO)
- Outside counsel should report ISR/WOs without any substantive analysis of the cited art unless SI expressly requests otherwise.
- In outside counsel’s reporting email, outside counsel should include a snip/snapshot of Box V of the ISR/WO in the body of the email (not as an attachment).
- Outside counsel should not respond to written opinions unless SI expressly requests otherwise.
- Same as above, except that outside counsel should also provide in its report a cost estimate for optionally having outside counsel analyze the ISR/WO and provide proposed amendments (if any) to facilitate prosecution at the national stage.
TYPES OF IDS FILINGS
- File-Scrape IDS: The “File-Scrape IDS” is an initial IDS prepared by outside counsel based on its scrape of case-related documents provided by SI (see below for further detail) or that have otherwise come to outside counsel’s attention.
- Other IDS: Any other IDS that outside counsel deems necessary should be filed as a matter of course (e.g., IDS containing references from cases OC identified as requiring cross-citing, references later made known to outside counsel by an inventor, etc.). These types of IDS should be clearly identified as an “Other IDS” so as to distinguish them from the File-Scrape IDS.
Even if outside counsel has already filed an IDS in a given case, experience has taught us that one should never assume that such IDS was actually the File-Scrape IDS. For instance, there have been situations in which outside counsel filed other IDS prior to getting to the File-Scrape IDS (e.g., where a U.S. national phase application was filed with an IDS containing the ISR/WO and its cited references, but outside counsel had not yet actually scraped the case file containing the invention disclosure and other case-related documents). This is a potential point of confusion that must be avoided because it can lead to SI, outside counsel, or both parties erroneously believing the File-Scrape IDS has been handled when in fact it has not. Thus, SI and outside counsel should always clearly specify whether a given IDS is (i) the File-Scrape IDS, or (ii) some IDS other than the File-Scrape IDS.
- Correspondence: Outside counsel should direct IDS correspondence to the appropriate contacts outlined in the Where the Send Communications section of this manual.
- Reporting: Outside counsel should report all IDS filings within one (1) month, whether a File-Scrape IDS or Other IDS. Within the reporting email, please include a brief description of the reason for filing (e.g., “This is the File-Scrape IDS filed in this application.” or “This is an Other IDS filed to disclose additional references provided by SI.”). In the event an Examiner finds an alleged deficiency in an IDS, outside counsel should promptly notify SI.
(i) the invention disclosure form;
(ii) accompanying documents provided alongside the invention disclosure form (e.g., a draft manuscript that provides the technical description of the invention disclosed in the invention disclosure form);
- Flat Fee: Outside counsel should handle File-Scrape IDS under SI’s standard $300 flat fee in accordance with the procedure described below. If outside counsel is unwilling to agree to SI’s standard $300 flat fee and/or outside counsel’s procedure is not functionally identical to the following procedure, outside counsel should not prepare or submit a File-Scrape IDS for a new application without SI’s prior approval. Instead, outside counsel must reach out to SI for instructions regarding the preparation of an File-Scrape IDS.
- Timing: SI aims to have a File-Scrape IDS on file well before the application receives a first action (ideally within the first three months following the application filing date). For national phase applications filed concurrently with a PPH request, the IDS procedure outlined below should be completed in advance of the national phase deadline so the IDS may be filed concurrent with the application and PPH request.
- Common Sources of References: In SI’s experience, common sources of references that appear in a File-Scrape IDS include (by way of example only):
(iii) references (if any) identified by SI during its internal technology evaluation process and included within SI’s technology evaluation form;
(iv) potentially related cases from the inventors’ past body of work;
(v) references embedded in the provisional/nonprovisional/PCT specification;
(vi) an ISR/WO along with cited references, in the case of a U.S. national phase application; and
(vii) any other references identified by inventors, outside counsel, and/or SI during communications throughout the application-preparation and/or prosecution process.
- Procedure leading to File-Scrape IDS: Outside counsel should prepare each File-Scrape IDS with internal support from SI as set forth below.
- SI ACTION: SI receives a completed invention disclosure form (IDF) from one or more inventors.
- SI ACTION: The SI Lead on the case completes a technology evaluation, which the SI Lead summarizes within a privileged and confidential technology evaluation form (TEF). The TEF may include several sources of IDS-related information to be scraped by outside counsel when preparing the File-Scrape IDS, including (i) references identified by SI during its internal novelty search, (ii) other references floating around email threads and/or Inteum related to the case (“floating references”), and (iii) a table of patents and/or published patent applications from the inventor’s past body of work that could potentially be deemed related to the case at hand.
- SI ACTION: When SI authorizes the U.S. nonprovisional or national phase application, SI sends outside counsel at least three categories of documents (i) the IDF, (ii) any accompanying attachments to the IDF, such as a draft manuscript prepared by the inventors, and (iii) the TEF.
- OUTSIDE COUNSEL ACTION: Outside counsel scrapes the entire case file, including the three categories of documents listed above, as well as the provisional/nonprovisional/PCT specifications for embedded references, the ISR/WO plus cited references (in the case of U.S. national phase applications), and any additional floating references that came to SI and/or outside counsel’s attention after SI had completed the TEF (and thus wouldn’t already have been captured in the TEF provided by SI). If outside counsel notices missing/incomplete references within any documents in the case file (e.g., where a manuscript contains in-text reference footnotes but no corresponding citation list, meaning one cannot determine the identity of the reference), outside counsel should notify SI.
- OUTSIDE COUNSEL ACTION: Outside counsel sends a reference-request list to SI via the appropriate contacts outlined in the Where the Send Communications section of this manual (i.e., the appropriate SI Lead on the case plus [email protected]). The reference-request list may take the form of a draft IDS listing (e.g., form PTO/SB/08a) or other document if outside counsel prefers using an intermediary document for tracking purposes before creating the formal IDS listing (e.g., an excel spreadsheet). After outside counsel has sent SI the reference-request list, outside counsel should send only two reminders to SI about the pending reference-request list: (i) when the application publishes, and (ii) when the USPTO issues a first action in the case; other than in these two instances, outside counsel should not spend any billable time preparing and sending SI reminders about the pending reference-request list.
- SI ACTION: SI analyzes the reference-request list provided by outside counsel, retrieves and labels all of the requested references, processes them into USPTO-ready format using the USPTO-provided Adobe plug-in, packages the USPTO-ready references into a labeled folder, and sends outside counsel a Dropbox link by which outside counsel can download the labeled, USPTO-ready references. The shared Dropbox folder may also contain an SI-annotated version of the reference-request list detailing issues SI encountered while obtaining the references.
- OUTSIDE COUNSEL ACTION: Outside counsel reviews the Dropbox folder, confirms that all references have been supplied, follows up with SI regarding any issued SI noted in the SI-annotated reference-request list, and then files the completed File-Scrape IDS. Note that SI may use certain student assistants when retrieving copies of references. Any questions for SI, however, should be directed not necessarily to the person who sent outside counsel the Dropbox link (which may be a student assistant), but rather to the appropriate contacts outlined in the Where the Send Communications section of this manual.
IDS Filings in Continuing Applications
- For unlicensed continuing applications, do not resubmit the IDS from the parent (identifying IDS references considered by the examiner in the parent) unless there are new unconsidered references to supply to the PTO during the continuation. For SI, the benefit of having the references listed on the cover of the unlicensed continuing application does not outweigh the cost of resubmitting the IDS.
- For licensed continuing applications, do resubmit the IDS from the parent (identifying IDS references considered by the examiner in the parent) after the application filing fees have been paid.
References Omitted by Outside Counsel
- If references are made known to outside counsel (i.e., included within documents provided to outside counsel for the file-scrape process) but not included in the requested-reference list, SI will presume outside counsel used outside counsel’s professional judgment and determined the references could be safely omitted because, for example, the references were cumulative and/or not material to patentability.
- For incoming case transfers, it is critical that outside counsel confirm for SI that outside counsel received from the transferring firm case-file documents such as the IDF (and any references attachments) and the TEF. If outside counsel did not receive copies of the IDF and TEF, for example, the receiving firm has not received the complete case file and should immediately confer with SI.
- Similarly, when sending an outgoing case transfer, it is critical that outside counsel confirm for SI that outside counsel has transferred the entire case file to the new firm – not merely editable versions of the as-filed applications. The transfer should include all case-related documents, including the IDF (with accompanying attachments, if any are referenced in the IDF) and TEF that SI originally provided to outside counsel. If any references were flagged for submission in an IDS (e.g., from communications with an inventor), these references must be relayed to the receiving firm. The receiving firm must be informed of any special IDS instructions or preferences (e.g., the case was identified for cross-citing with another case).
- Books: SI cannot provide copies of complete books, but can provide copies of specific page ranges if available.
- Web pages: SI will attempt to use archive.org to obtain a version of the page closest to the access date, if given. If no access date is available or the publication date is unclear, SI will attempt to obtain an archive version from before the earliest filing date.
- ArXiv.org e-print archive: If multiple versions are present, SI will obtain the closest match (e.g. by year).
- Unpublished applications: SI may request that certain pending, unpublished applications be cited in an IDS. We do not provide copies of these applications and request that copies not be furnished provided the applications are stored in the PTO’s Image File Wrapper system (as permitted under MPEP 609.04(a)).
- Requests for telephonic elections – If outside counsel receives a request for a telephonic electronic from an examiner who wants an answer in less than 72 hours, please immediately report the request by email and call the relevant SI Lead.
- Written restriction requirements – Outside counsel should report written restriction requirements without providing any substantive analysis unless there are special circumstances or facts outside counsel believes SI should consider based on outside counsel’s history with the case or ASU’s portfolio in general. Otherwise, the relevant SI Lead will get back to you with SI’s election instructions.
- Copy of pending claims – When reporting, please attach a copy of the pending claims in Word format to facilitate SI’s decision-making process.
- Default election preference – In the event outside counsel must make an election and cannot obtain instructions from SI (e.g., when facing a nonextendable deadline), outside counsel should elect claims according to the following default order of preference subject to the exception identified below: (1) compositions-of-matter / apparatuses, (2) systems (if no claims in category #1 are pending), (3) methods (if no claims in categories #2 or #3 are pending).
- Exception to default election preference – Regarding the above-identified default order of preference, outside counsel should proceed with electing method claims as the #1 preference if outside counsel knows, based on outside counsel’s experience with the case at hand, that the primary point of novelty is embodied in a new method (e.g., the invention is a new method of producing an existing composition of matter) and that composition-of-matter, apparatus, and/or system claims were included in the claim set as a secondary or “nice-to-have” consideration.
- SI generally does not undertake prolonged prosecution for unlicensed patent families. (See the General Patent Strategies section of this manual for further context.)
- Compact prosecution is key in light of ASU’s portfolio volume.
- In the absence of exceptional circumstances, unlicensed patent cases get three (3) opportunities to secure an allowance before SI ceases prosecution.
- As an internal policy SI, endeavors to consult with the inventors at least once prior to ceasing prosecution.
For any Office Action beyond Office Action #2 in an unlicensed case, simply report the Office Action within ten (10) working days without analysis and await further instructions from SI. This is important because, based on SI’s general Three-Strike Rule, the likelihood SI will continue to Invest resources in additional prosecution beyond a response to Office Action #3 is low. Additionally, in the event that SI does decide to cease prosecution, SI must be able to decide quickly due to federal reporting obligations.
No Allowed or Allowable Claims
- Upon receiving any Office Action #1 (first action on the merits; non-final) or Office Action #2 (second action on the merits; typically final) for an unlicensed case in which the examiner has not identified any allowed or allowable claims, outside counsel is automatically authorized to proceed with the following steps under a $2,500 flat fee:1. Analyze the Office Action and cited references
2. Report to SI: (1) the Office Action, (2) either a proposed response strategy (with comments and proposed amendments included in the body of the reporting email), in which case outside counsel should provide such report within four (4) weeks of the Office Action mailing date or a proposed full ready-for-filing response in Word format, in which case outside counsel should provide such report to SI within six (6) weeks of the Office Action mailing date, and (3) any focused technical questions for the inventors.
SI’s intent in automatically authorizing outside counsel to proceed with drafting a full ready-for-filing response for SI review is to promote efficiency during the draft-and-review process. Whether or not it makes sense for outside counsel to actually proceed with doing so or whether it makes more sense for outside counsel to instead first send a proposed response strategy via email for SI input is a decision for outside counsel to make based on outside counsel’s judgment and knowledge of the case at hand.
3. After SI approves the proposed response strategy or full ready-for-filing response (as applicable), outside counsel should telephonically interview the examiner, email SI a summary of the interview and any proposed adjustments to the draft response strategy and/or full ready-for-filing response (as applicable) based on the interview, and then prepare (if not previously prepared) and file the formal response upon receiving approval from SI.
Under the conditions identified here, outside counsel need not separately report the Office Action sooner than the applicable four (4) or six (6) week timeframes identified above. Please report the Office Action for the first time when concurrently providing the draft response strategy or proposed full ready-for-filing response in Word format (as applicable) and any focused technical questions for the inventors. This approach is designed to increase efficiency by reducing the number of email and database-management transactions involved in the process.
- Before reporting a new Office Action, outside counsel should always check to see whether the Examiner has identified allowed or allowable claims. This step is critical because SI requires outside counsel to follow two different sets of reporting and response-preparation procedures depending on whether or not the Examiner has identified allowed or allowable claims.
- Upon receiving any Office Action for an unlicensed case in which the examiner has identified one or more allowed or allowable claims, outside counsel should report the Office Action within ten (10) working days of receipt and expressly note in the body of the reporting email which claims have been identified as allowed or allowable.
- SI will then examine the Office Action and provide outside counsel instructions regarding whether SI wishes to take the allowed or allowable claims in the interest of compact prosecution.
In licensed cases, outside counsel should handle Office Actions as follows:
- Upon receiving any Office Action in a licensed case, outside counsel should report the Office Action within ten (10) working days of receipt to both SI and SI’s licensee (in a single email) along with:
- A brief summary of the Office Action, including a bolded statement as to whether any claims have been identified as allowed or allowable,
- A concise description of any decisions that need to be made by SI in consultation with its licensee along with an outline of possible decisions that could be made,
- A cost estimate associated each possible decision, noting both outside counsel fees and any separate government fees and/or foreign agent fees (e.g., in the case of a response to an office action, a cost estimate for analyzing the cited art (if any), interviewing the examiner by phone, and preparing and filing a written response to the Office Action), and
- A recommendation from outside counsel, with brief supporting reasoning, as to which option outside counsel believes would be most effective.
- Where outside counsel believes the prospects for advancing the case to allowance are unfavorable, outside counsel should schedule a call with SI and the licensee to discuss the issues by phone rather than in writing.
- Upon receiving the above report from outside counsel, SI will consult with the licensee (within the same email thread referenced above) and then instruct outside counsel accordingly.
Notices of Allowance
- Outside counsel should report any Notice of Allowance within fifteen (15) working days of the Notice of Allowance mailing date.
- When reporting a Notice of Allowance, outside counsel should indicate the following in the body of the reporting email to help SI quickly understand the status of the case (Note: This reporting summary is for SI’s information/convenience only and is not intended to be a substitute for, or exhaustive version of, OC’s own internal checklist for processing Notices of Allowance):
1. Whether any Examiner’s Amendments are present in the Notice of Allowance;
2. Whether all assignments have been recorded;
3. Whether the File-Scrape IDS has been filed and considered;
4. Whether the correct Federal Funding Statement is present in the specification (applicable when there is a “^” in the SI reference number); and
5. Current entity status on record with the PTO.
To assist SI in determining whether SI should file a continuing application, outside counsel should also include the additional information in the body of the reporting email under a header titled Considerations related to possible continuing application
- List of inventors
- Restriction requirement during prosecution? (Yes/No)
- How many office actions during prosecution? (This number should not include any applicable restriction requirement.)
- First issued US patent in the family? (Yes/No) If not, how many other parents have issued?
Outside counsel should also provide a clean copy of the allowed claims in Word format and a copy of the published application in PDF format.
- In unlicensed cases, outside counsel should not send SI reminders concerning challenges to the PTA calculation except in the case of therapeutics cases, in which case outside counsel should send SI one (1) reminder prior to the deadline along with a cost estimate.
- In licensed cases, outside counsel should send SI and its licensee reminders concerning challenges to the PTA.
- Proofing the Applicant/Assignee fields – Outside counsel should proof only the name of the applicant/assignee and confirm that ARIZONA BOARD OF REGENTS ON BEHALF OF ARIZONA STATE UNIVERSITY appears in full and is spelled without typographical errors. If any errors are present, outside counsel must bring such errors to SI’s attention without delay. This is important because a typographical error, if not corrected swiftly, will detrimentally impact ASU’s global patent rankings. SI and ASU take this very seriously!
- Other proofing – Outside counsel should not spend billable firm time proofing any parts of the patent publication other than the Applicant/Assignee fields as indicated above.
- In unlicensed cases, outside counsel should not send SI reminders concerning broadening reissue deadlines.
- In licensed cases, outside counsel should send SI and its licensee reminders concerning broadening reissue deadlines.
Maintenance Fees, Renewals, and Annuities
In most instances, SI manages and pays maintenance fees, renewals, and annuities through a third-party provider called Computer Packages Inc. (CPI).
- Outside counsel should not send SI pre-deadline reminders concerning maintenance fees, renewals, or annuities. Outside counsel should contact SI if outside counsel becomes aware that the deadline has passed into the grace period or outside counsel has received a notice of abandonment that outside counsel did not expect to receive.
- Outside counsel should send SI and its licensee pre-deadline reminders concerning maintenance fees, renewals, or annuities. Although SI may ultimately pay such fee, renewal, or annuity through CPI, these reminders are needed as a backup safety net in licensed cases.