Patent and Trademark Office March 2006 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (Office) is proposing changes to the rules of practice relating to ex parte and inter partes reexamination. The Office is proposing to provide for a patent owner reply to a request for an ex parte reexamination or an inter partes reexamination prior to the examiner's decision on the request. The Office is also proposing to prohibit supplemental patent owner responses to an Office action in an inter partes reexamination without a showing of sufficient cause. The Office additionally proposes to designate the correspondence address for the patent as the correct address for all communications for patent owners in an ex parte reexamination or an inter partes reexamination, and to simplify the filing of reexamination papers by providing for the use of a single ``mail stop'' address for the filing of substantially all ex parte reexamination papers (such is already the case for inter partes reexamination papers). The Office is further proposing to make miscellaneous clarifying changes as to terminology and applicability of the reexamination rules. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before May 30, 2006. No public hearing will be held.

On November 29, 1999, the President signed into law the Patent and Trademark Office Efficiency Act (the ``Act''), Pub. L. 106-113, Appendix I, Title IV, Subtitle G, 113 Stat. 1501A-572, which, among other things, established two Public Advisory Committees to review the policies, goals, performance, budget and user fees of the United States Patent and Trademark Office (USPTO) with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee, and to advise the Director on these matters. The USPTO is requesting nominations for three (3) members to each Public Advisory Committee for terms of three years that begin from date of appointment.

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to comment on this new information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

Among other changes to patent and trademark fees, the Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), splits the patent application filing fee into a separate filing fee, search fee and examination fee. The Consolidated Appropriations Act also provides that the United States Patent and Trademark Office (Office) may refund part or all of the excess claims fee and the search fee in certain situations. This final rule revises the rules of practice to implement the provisions for refunding the search fee for applicants who file a written declaration of express abandonment before an examination has been made of the application.