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USPTO Modifies Declaration to Permit Access to Application by Foreign Patent Offices

By William F. Heinze

According to a notice from the USPTO published on February 13, 2008 (via Patent Docs),

the USPTO has modified its Declaration form (PTO/SB/01) to include a checkbox which provides the applicant with the option to preauthorize the EPO and JPO to access its US application(s) [in order to obtain priority dcouments]. Essentially, this updated Declaration form bypasses the need to file a separate form PTO/SB/39, "Authorization to Permit Access to Application by Participating Offices."

The requirement for a seprate paper has also been formally waived. However a new PTO/SB/39 (more information here) has also been provided for applicants that prefer to continue filing a separate paper. The new PTO/SB/39 form has also been modified in several othr respects, including a specific statement that "access be provided to information concerning the date of filing the Authorization to Permit Access to Application by Participating Offices" which is sometimes of critical significance to the JPO.

Other modifications to the USPTO Forms in February 2008 include:

PTO/SB/21 Transmittal Form
PTO/SB/22 Petition for Extension of Time under 37 CFR 1.136(a)
PTO/SB/23 Petition for Extension of Time under 37 CFR 1.136(b)
PTO/SB/24 Express Abandonment Under 37 CFR 1.138
PTO/SB/24a Petition for Express Abandonment to Avoid Publication under 37 CFR 1.138(c)
PTO/SB/24b Petition for Express Abandonment to Obtain a Refund
PTO/SB25 Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection over a Pending Second Application
PTO/SB26 Terminal Disclaimer to Obviate a Double Patenting Rejection over a Prior Patent
PTO/SB/27 Request for Expedited Examination of a Design Application (37 CFR 1.155)
PTO/SB/30 Request for Continued Examination (RCE) Transmittal
PTO/SB/31 Notice of Appeal from the Examiner to the Board of Patent Appeals and Interferences
PTO/SB32 Request for Oral Hearing before the Board of Patent Appeals and Interferences
PTO/SB/36 Rescission of Previous Nonpublication Request (35 U.S.C. 122(b)(2)(B)(ii)) and, if applicable, Notice of Foreign Filing (35 U.S.C. 122(b)(2)(B)(iii))
PTO/SB/37 Request for Deferral of Examination 37 CFR 1.103(d)
PTO/SB/38 Request to Retrieve Electronic Priority Application(s)
PTO/SB/39 Authorization to Permit Access to Application by Participating Offices
PTO/SB/42 37 CFR 1.501 Information Disclosure Citation in a Patent
PTO/SB/43 Disclaimer in Patent under 37 CFR 1.321(a)
PTO/SB/61 Petition for Revival of an Application for Patent Abandoned Unavoidably under 37 CFR 1.137(a)
PTO/SB63 Terminal Disclaimer to Accompany Petition
PTO/SB64 Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b) [2 pages]
PTO/SB64a Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))
PTO/SB/67 Power to Inspect/Copy
PTO/SB/68 Request for Access to an Abandoned Application under 37 CFR 1.14
PTO/SB/91 Deposit Account Order Form
PTO/SB/92 Certification of Mailing under 37 CFR 1.8
PTO/SB96 Statement Under 37 CFR 3.73(b)
PTO/SB/97 Certificate of Transmission under 37 CFR 1.8

Full post as published by I/P Updates on February 16, 2008 (boomark / email).