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Patent Prosecution General Procedures

At Caltech, patent prosecution is managed by the Office of Technology Transfer and Corporate Partnerships (OTTCP).

Our mailing address is:

Office of Technology Transfer and Corporate Partnerships
California Institute of Technology
1200 E. California Blvd, MC 6-32
Pasadena, CA 91125

Only original documents (e.g., assignments, issued patents) should be sent by mail. All other correspondence should be emailed to [email protected] for appropriate routing (unless otherwise stated below), with any relevant Caltech reference number(s) (CIT number) in the subject line.

On all correspondence, please include the following information:

  • Application type with serial number
  • Filing date
  • Title
  • Inventors
  • Your docket number
  • CIT number

DO NOT, UNDER ANY CIRCUMSTANCE, PROVIDE US WITH ANY CORRESPONDENCE WITHOUT A CIT NUMBER. NO RESPONSES WILL BE MADE AND NO INVOICES PAID WITHOUT A CIT NUMBER.

When sending attachments:

  • Please create a separate file for each type of document (e.g., an Office Action with cover letter and current claim set should be sent as three separate files).
  • Please minimize file sizes.

If an invention disclosure is provided directly to counsel by the inventor, or if there is any new material added to a disclosure or application by an inventor, it must be emailed to Melinda Bakarbessy ([email protected]). If you receive any new (including provisional) or continuing application request from an inventor, you must obtain authorization from OTTCP to proceed before incurring any expenses. If we decide to move forward, we will provide you with a CIT number for the new case.

Federal Funding and Bayh-Dole Compliance

37 CFR 401.14(f)(4) Requires any patent application that resulted from federal funding to contain a Government Support Clause at the beginning of the application that reads: "This invention was made with government suport under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention." We will advise you of whether federal funding was involved in the invention, and identify the grant number and agency, in the documentation that you receive from our office for filing applications.

Should you become aware of any change to requirements related to federal funding (e.g., a change in the Government Support Clause language), please inform our office.

If the information from our office requesting the filing of an application does not state that there was federal funding, we ask that you confirm with the inventors what funding was involved in the conception and first actual reduction to practice of the invention, and if there was any federal funding, report it to Becky Hernandez ([email protected]). We are committed to having the best possible Bayh- Dole compliance on the reporting of federally funded inventions, and the cooperation of prosecuting attorneys is an important part of this effort.

Initial Filing: All

When a case is first sent to you for filing, you will be asked to provide an estimate of filing costs (flat fee or not-to-exceed) which must be approved by OTTCP.

Initial Filing: U.S. Non-Provisional Application

Once the drafting of the claims is completed, verify inventorship with the principal inventor. Notify OTTCP in case of any discrepancy between the original disclosure or provisional application and the non-provisional application.

Provide copy of application as filed to [email protected], all inventors and joint owners as provided by OTTCP.

Provide OTTCP with serial number and Official Filing Receipt immediately upon receipt from the USPTO.

Forward all Powers of Attorney to [email protected] for signature by Fred Farina (Chief Innovation Officer, OTTCP) on behalf of Caltech. Blanket Power of Attorney documents will not be signed.

Mail all recorded assignments to OTTCP for retention.

Confirm Small Entity status with OTTCP and file as Small Entity unless otherwise instructed. Do not send Small Entity form statements for Caltech signature, as they are not necessary.

Respond as quickly as possible to Missing Parts notices. Work directly with the inventors to obtain executed declarations, assignments, and any additional signatures. Caltech does NOT require notarization of assignments. If the inventors do not respond to your requests, notify OTTCP in time for action to be taken here to avoid extension fees.

When filing continuing applications, identify the type of application and the reason for filing in your cover letter with our copy of the filed case (e.g., continuation application for further prosecution).

Initial Filing: PCT Application

Provide a copy of the international application, PCT cover page and filing receipts to [email protected].

Unless otherwise instructed, designate KIPO as the search authority.

Designate all members unless specifically instructed otherwise.

Do not file Chapter II unless specifically instructed otherwise and do not send any reminders.

Do not respond to International Search Reports.

Do not pay additional PCT search fees.

Initial filing: National Phase Application

Send the National Phase cover page and the filing receipts to [email protected].

When listing Caltech as the owner on EPO patent applications, please list the mailing address above, indicating the appropriate CIT number to identify the application.

Ongoing Prosecution

For all cases unlicensed, or billed to Caltech for licensee reimbursement:

  • Forward Office Actions (OAs) by email to [email protected] within 15 days of receipt for OAs subject to a two or three month shortened statutory period (SSP). If an OA is reported less than three weeks prior to the no-fee deadline, the law firm is expected to assume any necessary extension of time fees.
  • Please provide the following in a reporting letter:
    • Brief summary and recommendations
    • Current claim set, if relevant
    • Cost estimate for response preparation (including different alternatives, if applicable – e.g., RCE or Appeal after a final OA)
  • Do not incur OA response costs or other costs over $500 without authorization from OTTCP. Requests for authorization should be made when OAs are reported and should include in the email subject line:
    • CIT number
    • The phrase "Instruction required"
    • Brief description of the communication (e.g., non-final OA, final OA, restriction requirement, Notice of Missing Parts)
  • For restriction requirements, copy the inventor(s) and/or licensee(s) as necessary for their input when reporting to OTTCP; if you do not hear back before the SSP deadline, make an election and file a response without taking an extension of time.
  • Only send the references specifically needed to respond to the OA and send them only to the inventors when working with them to prepare responses. Do not send references to OTTCP unless specifically requested.
  • Once a response has been authorized by OTTCP, work directly with the inventors to prepare the response. Do not copy OTTCP except to provide a copy of the response as filed, unless otherwise requested.

Caltech will not pick up prosecution expenses unpaid by its licensees. Should a licensee be unresponsive or decide to abandon a licensed case, please contact OTTCP for direction as soon as possible and in advance of any bar date so that Caltech can either continue prosecution at its own expense, or timely fulfill its compliance obligations to sponsors.

For cases where patent expenses are being billed directly to the licensee, take direction from the licensee, confirming that licensees are still interested in moving forward on any given case before proceeding. Copy OTTCP on Office communications and responses. Reminders should be sent only to the licensee. Do not let any application go abandoned without notifying OTTCP well in advance of any lapse date; Caltech may wish to pick up prosecution at its own expense, and may have compliance obligations to sponsors.

Issuance

For U.S. cases, pay all issue fees and do NOT file any divisional or continuation applications unless otherwise instructed by OTTCP (or a directly-billed licensee).

  • Contact OTTCP for authorization to incur additional costs (e.g., review of reasons for allowance or patent term adjustment) over $500.
  • Authorization is not required for payment of the issue fee; however, please provide an estimate of total costs associated with issuance.
  • File a request with the USPTO to change the maintenance fee reminder address from your firm to Caltech (except for direct-billed cases, see below); Caltech's customer number with the USPTO is 29690.

For foreign cases (especially EPO), report notices of allowance/grant to OTTCP (or directly- billed licensee) and wait for instructions. Authorization IS required for costs associated with grant, validation or issue of foreign patents.

Mail original patent (no copies) to OTTCP within 30 days of receipt.

Do not send reminders about filing reissue applications (except to directly-billed licensees).

Post-issuance (maintenance fees and annuities)

Correspondence relating to maintenance fees and annuities should be sent to Stephanie Fry, [email protected]. It is not necessary to copy the patent prosecution email address.

For all cases unlicensed or billed to Caltech for licensee reimbursement, Caltech will attend to maintenance fee and annuity payments. For US maintenance fees, provide reminders only if you receive notice of non-payment. For foreign annuities, please provide us with a reminder at the time the first annuity is payable. We will attend to adding cases to our renewal service provider at time of issuance (US) or national phase filing (foreign).

For cases where patent expenses are being billed directly to the licensee, attend to payment of any maintenance fees and annuities and bill those charges to the licensee (unless licensee informs you of alternative arrangements). Do not let any application go abandoned without notifying OTTCP well in advance of any lapse date; Caltech may wish to pick up maintenance at its own expense, and may have compliance obligations to sponsors.

Billing

Invoices should reflect only completed work (e.g., preparation and filing of a patent application; preparation and filing of Office Action responses). Invoiced amounts for work in progress will NOT be processed for payment.

Invoices consolidated on a monthly basis are greatly appreciated.

All invoices must reference a CIT number for each matter as well as serial number and filing date.

Foreign and domestic costs associated with a matter must be listed separately.

Invoices should be sent to OTTCP at the address above, or by email to [email protected]. LEDES files are appreciated.

Any questions related to billing may be addressed to [email protected].