Reference Numbers and Copy To
Our reference numbers, which are thoughtfully designed to convey important information about a case in compact form (e.g., within email subject lines), follow this format:
| Example Reference Number | What this Example Reference Number Tells You |
|---|---|
| M21-001P^-US1-c$ | This is a US application (the first in the family) for a physical-science (or “P) technology, the work was federally funded (which means Bayh-Dole regulations apply), Januk Aggarwal is the SI Lead for this case, and the case is licensed. |
| M17-132L-WO1-a | This is a PCT application (the first in the family) for a life-science (or “L”) technology, the work was not federally funded to our knowledge, Jordan Bell is the SI Lead for this case, and the case is unlicensed. |
| M17-225L^-PR2-a | This is a provisional application (the second in the family) for a life-science (or “L”) technology, the work was federally funded, Jordan Bell is the SI Lead for this case, and the case is unlicensed. |
Where to Send Communications
Direct any and all patent preparation and prosecution correspondence to both (1) the appropriate SI Lead based on the below table and the pertinent SI reference number (e.g., M21-001L^-US1-c$) and (2) [email protected] (our master IP inbox).
Please do not send us any paper documents, other than ribbon copies of issued patents.
| SI Lead Identifier | SI Lead | Email Address | Phone Numbers |
|---|---|---|---|
| a | Jordan Bell | [email protected] | O: 480.884.1670 M: 713.502.9077 |
| b | Shen Yan | [email protected] | O: 480.884.1968 M: 480.688.4425 |
| c | Januk Aggarwal | [email protected] | O: 480.884.1567 M: 480.688.4425 |
| d | Tony Pullen | [email protected] | O: 617.775.7103 M: 480.688.4425 |
| e | Kyle Siegal | [email protected] | O: 480.884.1994 M: 623.293.8478 |
| f | Katherine (Katie) Grasso Bensalah | [email protected] | O: 480.884.1607 M: 571.226.7933 |
Email Subject Lines
Outside counsel should label email subject lines with an identifier and a simple descriptive phrase. Every subject line should clearly identify, by specific date, whatever deadline may be present; we rely on this information to prioritize emails. Please use the following subject line formats for correspondence to our office. The “Document Type” field should be populated with whatever type of Patent Office communication is at issue and, in the case of Office actions, should indicate where in the prosecution timeline the action falls.
| Due Dates: | Our Ref # | Your Ref # | Document Type | RESPONSE DUE [Due Date] |
| Reminders: | Our Ref # | Your Ref # | Document Type | REMINDER—RESPONSE DUE [Due Date] |
| Final Due Dates: | Our Ref # | Your Ref # | Document Type | FINAL DEADLINE—RESPONSE DUE [Due Date] |
| No Action Required: | Our Ref # | Your Ref # | Document Type | REPORTING ONLY—NO ACTION REQUIRED |
| First Non Final Office Action | M21-001P^-US1-c$ | 01210321.1321 | NFOA (S1) | RESPONSE DUE XX/XX/XX |
Subject Line Abbreviations
| Action Type | Email Subject |
|---|---|
| Restriction Requirement | RR |
| Restriction Requirement with Species Election | RRSE |
| First Non Final Office Action | NFOA (S1) |
| First Final Office Action | FOA (S2) |
| Second Non Final Office Action | NFOA (S3) |
| Advisory Action | AA |
| Notice of Allowance | NOA |
NOTE: S1 = strike one, S2 = strike two, S3 = strike three, and so forth (to the extent SI prosecutes a case beyond strike three). These labels correspond to SI’s internal “Three-Strike Rule” and help SI quickly orient itself relative to the patent-prosecution timeline in a given case.
Documents
With the exception of first and second office actions in unlicensed cases (as well as notices of allowance), outside counsel should report to SI all documents received from any patent office within ten (10) working days of receipt. For reporting timeframes regarding first and second office actions and notices of allowance, please see the specific sections in this manual that deal with those topics.
Outside counsel should include each document as a separate attachment (e.g. a Notice of Missing Parts and a Restriction Requirement should be separate attachments, even if reported in the same email).
When providing an as-filed copy of an application, outside counsel should provide a single unprotected/unlocked (i.e., able to be manipulated) and OCRed (i.e., keyword-searchable) PDF document that contain all parts of the application, including for example the Application Data Sheet or PCT Request, the specification, the claims, the drawings, and the electronic filing acknowledgement receipt. Please do not send us copies of applications split into multiple different PDFs.
Emergency Communications
If there is a short deadline or outside counsel needs to bring something to SI’s attention right away, please call—with a voicemail and immediate follow-up text if your call is not answered on the first try— the appropriate SI Lead in addition to sending an email.
If you do not hear from the SI Lead within an hour, please call—with a voicemail and immediate follow-up text if your call is not answered on the first try—Kyle Siegal on his mobile phone at (623) 293-8478.
Requests from Inventors
If outside counsel receives directly from inventors any requests to take certain prosecution actions in case (e.g., “Please file a divisional.”), outside counsel must relay such requests to SI (along with a cost estimate) and receive approval from SI before proceeding.