USPTO Updates Rules On Filing Translations and Allows Pre-Action Interviews

The USPTO has amended its rules of practice to require a copy of an English translation of any foreign-language provisional application that is used as a priority document for a nonprovisional application. The new rules, applicable to any application filed on or after November 25, 2005, require that the English translation be filed in the provisional application rather than filed in each nonprovisional claiming benefit of the filing date of the provisional.  37 C.F.R. 1.78.  The translation, however, may be filed after abandonment of the provisional, i.e., more than one year after filing.

Other changes to 37 C.F.R. include:

  • Examiner interviews will now be allowed “in any application if the examiner determines that such an interview would advance prosecution of the application.”  Thus, there will no longer be a prohibition on interviews before the first Office action in non-continuation cases.(Section 1.133).  
  • Requirement that, before taking action in a patent case, the assignee must establish ownership in the patent by recording an assignment at the PTO.
  • Defining “Patent practitioner” as “a registered patent attorney or registered patent agent under Section 11.6.”
  • When not using a customer number, the power of attorney must list the registration number of the patent practitioner (Section 1.32(c)(3)).
  • Assignment documents to be recorded should each include a single coversheet (and not multiple cover sheets).
  • A notice that attorneys must update the roster of patent practitioners.

Link: New Rules