Patent Prosecution Nuances: The General Authorization
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Jul 23, 2012 @ 7:30 am
I am in the middle of my busy travel season, criss-crossing the country with John White teaching the PLI Patent Bar Review Course. About every 3 weeks from mid-spring through the end of the first full week of August we are on the road, lecturing all things patent practice to would-be patent attorneys and agents. Lecturing on a variety of topics relating to patent prosecution keeps me up to date on the latest changes, but also keeps me intimately familiar with some of the — shall we say stranger rules of practice and procedure. One such peculiar rule set that applies to a relatively simple aspect of the practice are the rules relating to general authorizations.
A general authorization to charge all fees, or only certain fees, to a deposit account containing sufficient funds may be filed in an individual application. Such an authorization to charge fees can, generally speaking, pertain to the entire pendency of the application or be used with respect to a particular paper filed at any time. A general authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time that may later become necessary. Thus, having a general authorization on file with an adequately funded deposit account can be exceptionally helpful.
Of course, as is virtually inescapable at the USPTO, with every general rule there come exceptions. For example, according to 37 CFR 1.311(b), an authorization to charge the issue fee (37 CFR 1.18) to a deposit account may be filed in an individual application only after the mailing of the notice of allowance. 37 CFR 1.25(b) also makes clear that a general authorization made prior to the mailing of a notice of allowance does not apply to issue fees under 37 CFR 1.18. Thus, you must affirmatively do something after receiving a notice of allowance to accept the offer of a patent.
Furthermore, a general authorization does not apply to document supply fees under 37 CFR 1.19, such as those required for certified copies, to post issuance fees under 37 CFR 1.20, such as those required for maintenance fees, or to miscellaneous fees and charges under 37 CFR 1.21, such as assignment recording fees.
Thus, a general authorization does not always save you. For example, you cannot fail to pay the issue fee even if you have an express “all purpose” general authorization on file that purports to grant the USPTO permission to take any fees due out of your deposit account at any time during the case. Compounding matters is the fact that you almost always have at least 6 months to take any necessary action at the USPTO, but you only get 3 months to pay the issue fee. Peculiar and quirky, which means it should be considered to be fair game on the Patent Bar Examination, which likes to test on the peculiar, quirky exceptions to the rule. This is illustrative of what makes patent practice so difficult. There are seemingly always peculiar (and sometimes numerous) exceptions to what appear to be an otherwise easy general rule.
Of course, it is all fine and good to talk about something like a general authorization, but what is a general authorization really? For this I turn to IFW insight (by The Patent Box), created by a friend of mine who is a former Patent Examiner and now patent agent — Paul Dougherty. IFW insight is is a web-based application for searching US Patent Image File Wrapper (IFW) documents. If you are not familiar with the tool you need to give it a try. There are many times it would be particularly useful to see what other practitioners file, what they argue and learn what has been successful. This tool provides excellent intelligence and a format to follow, which can be particularly useful when you are faced with something bizarre or an examiner who just isn’t understand your arguments on a particular issue.
After logging in you’ll see the IFW insight search page. In the main search window you simply type “general authorization” (with quotes for exact phrase matching). In this case there are a reasonable number of hits using even the most basic, straight forward search terms, so there is really not a need for a complex search phrase. However, after looking at a few results you can typically determine what particular language seems to be most common.
In this situation you might notice, as I did, that the language “hereby authorized to charge” is quite common when communicating a general authorization. If you use that language in your query you will see thousands of examples. Practitioners have great flexibility with regard to authorizing the charging of fees, although there seem to be a couple of common mechanisms, as well as fairly standard language for communicating a general authorization to the Patent Office.
It used to be that a patent practitioner could authorize all fees for the entire pendency of an application by simply checking a box on the Application Data Sheet (ADS). See, for example , this general authorization on an ADS. The general authorization section has, however, disappeared from the currently ADS form provided by the USPTO. See current ADS via USPTO. Here’s a link to the current ADS on the USPTO’s website. Interestingly, it does still appear in the current 371 application transmittal form (PTO-1390). See example 371 application transmittal courtesy of IFW insight.
As mentioned, there is great flexibility and enormous variety with respect to how general authorizations get used. Here are some additional illustrative examples.
- Stand-alone general authorization with specific mention that the document is a constructive request for any extension of time necessary, applicable during the entire pendency of the case.
- A general authorization to charge all fees, or only certain fees for a particular paper filed, in the remarks to an Office Action response. (see Conclusion)
IFW insight is a great tool and I recommend it. If you are interested in giving this tool a try new users can sign up for a 14 day free trial. You can cancel prior to the end of the 14 day period, but you do need to provide a credit card number. This prevents from serially signing-up for a free trial, which unfortunately was happening. If you decide to purchase a subscription use this COUPON CODE: IPWD20, which will give you 20% off either the first 6 months of a monthly subscription or the first year of an annual subscription.
As for the PLI Patent Bar Review, I definitely recommend that, and with the USPTO announcing that the exam will again be updated effective October 2, 2012, to take account of the next wave of America Invents Act implementations, there is no better time than now to study and pass.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.