Patent and Trademark Office 2010 – Federal Register Recent Federal Regulation Documents
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National Medal of Technology and Innovation Call for 2011 Nominations
The Department of Commerce (United States Patent and Trademark Office) is accepting nominations for the National Medal of Technology and Innovation (NMTI). Since establishment by Congress in the Stevenson-Wydler Technology Innovation Act of 1980, the President of the United States has awarded the National Medal of Technology and Innovation (initially known as the National Medal of Technology) annually to our nation's leading innovators. If you know of a candidate who has made an outstanding, lasting contribution to the economy through the promotion of technology or technological manpower, you may obtain a nomination form from: https://go.usa.gov/1dU.
Coding of Design Marks in Registrations
The United States Patent and Trademark Office (``USPTO'') proposes to discontinue its secondary design coding, the practice of coding newly registered trademarks in its searchable electronic database with design mark codes based on the old paper search designations.
Pilot Program for Extended Time Period To Reply to a Notice To File Missing Parts of Nonprovisional Application
The United States Patent and Trademark Office (USPTO) previously published a notice requesting comments on a proposed change to missing parts practice in nonprovisional applications. The USPTO has considered the comments and is implementing a pilot program (Extended Missing Parts Pilot Program) in which an applicant can request a twelve-month time period to pay certain fees and to reply to a Notice to File Missing Parts of Nonprovisional Application. Under the Extended Missing Parts Pilot Program, applicant must file a nonprovisional application within twelve months of the filing date of a provisional application and directly claim the benefit of the provisional application, as well as submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application. In addition, applicant must not file a nonpublication request. Applicant will be given a twelve-month period to decide whether the nonprovisional application should be completed by paying the search fee, the examination fee, any excess claim fees, and the surcharge ($130.00 for non-small entity or $65.00 for small entity) for the late submission of the search fee and examination fee within that twelve-month period. The nonprovisional application will be published under the existing eighteen-month publication provisions. Therefore, applicant should also submit the basic filing fee, an executed oath or declaration, and application papers that are in condition for publication, on filing of the application with the request to participate in the pilot. If the basic filing fee, an executed oath declaration, and/or application papers that are in condition for publication are not submitted with the application and the request to participate in the pilot, applicant will need to submit these items within a two-month (extendable) time period. In view of the comments, the USPTO is cautiously moving forward by implementing the proposed procedure as a pilot program. Specifically, the pilot program will require applicant to submit a certification and request to participate in the pilot program, rather than automatically applying the procedure to all applicants. The USPTO is providing a certification and request form that includes educational information regarding domestic benefit claims, foreign filings, patent term adjustment (PTA) effects, the need for a complete disclosure of the invention, potential increase in fees, and the benefits of submitting a complete set of claims. In addition, the USPTO is implementing a number of educational initiatives to assist independent inventors and other applicants. The Extended Missing Parts Pilot Program will benefit applicants by permitting additional time to determine if patent protection should be soughtat a relatively low costand by permitting applicants to focus efforts on commercialization during this period. The Extended Missing Parts Pilot Program will benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which applicants later decide not to pursue examination. Applicants are advised that the extended missing parts period does not affect the twelve-month priority period provided by the Paris Convention for the Protection of Industrial Property. Thus, any foreign filings must still be made within twelve months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign-filed application or if protection is desired in a country requiring filing within twelve months of the earliest application for which rights are left outstanding in order to be entitled to priority.
Extension of the Patent Application Backlog Reduction Stimulus Plan
The United States Patent and Trademark Office (USPTO) provides a basis (the Patent Application Backlog Reduction Stimulus Plan) under which an applicant may have an application accorded special status for examination if the applicant expressly abandons another copending unexamined application. The Patent Application Backlog Reduction Stimulus Plan allows applicants having multiple applications currently pending before the USPTO to have greater control over the priority with which their applications are examined while also stimulating a reduction of the backlog of unexamined patent applications pending before the USPTO. The USPTO is extending the Patent Application Backlog Reduction Stimulus Plan until December 31, 2011.
Trademark Manual of Examining Procedure, Seventh Edition
The United States Patent and Trademark Office (``USPTO'') issued the seventh edition of the Trademark Manual of Examining Procedure (``TMEP''), and made available archived copies of the fourth, fifth, and sixth editions, on October 15, 2010.
National Medal of Technology and Innovation Nomination Evaluation Committee Meeting
The National Medal of Technology and Innovation (NMTI) Nomination Evaluation Committee will meet in closed session on Tuesday, November 30, 2010. The primary purpose of the meeting is the discussion of relative merits of persons and companies nominated for the NMTI award.
Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals
The United States Patent and Trademark Office (USPTO or Office) proposes changes to rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals. After considering public comments raised in response to an Advanced Notice of Proposed Rulemaking, which proposed potential modifications to the stayed final rule, the Office is proposing to rescind the stayed final rule and is issuing this notice seeking public comment on proposed new revisions to the current rule. The goal of this proposed rulemaking is to simplify the appellate process in a manner that effects an overall lessening of the burden on appellants and examiners to present an appeal to the Board.
Expansion and Extension of the Green Technology Pilot Program
On December 8, 2009, the United States Patent and Trademark Office (USPTO) implemented the Green Technology Pilot Program, which permits patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction to be advanced out of turn for examination and reviewed earlier (accorded special status). The program is designed to promote the development of green technologies. Initially, participation was limited to applications filed before December 8, 2009. The USPTO is hereby expanding the eligibility for the pilot program to include applications filed on or after December 8, 2009. The program is also being extended until December 31, 2011. These changes will permit more applications to qualify for the program, thereby allowing more inventions related to green technologies to be advanced out of turn for examination and reviewed earlier.
Native American Tribal Insignia Database
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 take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Green Technology Pilot Program
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 take this opportunity to comment on the revision of a currently approved collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Performance Review Board (PRB)
In conformance with the Civil Service Reform Act of 1978, the United States Patent and Trademark Office announces the appointment of persons to serve as members of its Performance Review Board.
Grant of Interim Extension of the Term of U.S. Patent No. 5,407,914; SURFAXIN® (Lucinactant)
The United States Patent and Trademark Office has issued an order granting interim extension under 35 U.S.C. 156(d)(5) for a second one-year interim extension of the term of U.S. Patent No. 5,407,914.
Grant of Interim Extension of the Term of U.S. Patent No. 4,919,140; AndaraTM
The United States Patent and Trademark Office has issued an order granting interim extension under 35 U.S.C. 156(d)(5) for a third one-year interim extension of the term of U.S. Patent No. 4,919,140.
Request for Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System
The United States Patent and Trademark Office (USPTO) is considering pro-business strategies for incentivizing the development and widespread distribution of technologies that address humanitarian needs. One proposal being considered is a fast-track ex parte reexamination voucher pilot program to create incentives for technologies and licensing behavior that address humanitarian needs. Because patents under reexamination are often the most commercially significant patents, a fast-track reexamination proceeding would allow patent owners to more readily and less expensively affirm the validity of their patents. Therefore, the opportunity to utilize a voucher for a fast-track reexamination proceeding could provide a valuable incentive for entities to pursue humanitarian technologies or licensing. The USPTO is requesting comments from the public regarding this proposal as well as other incentive proposals set forth in this notice.
Global Intellectual Property Academy Program Survey
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 take this opportunity 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)).
Missing Parts Practice
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 take this opportunity 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)).
Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v.Teleflex
The United States Patent and Trademark Office (USPTO or Office) is issuing an update (2010 KSR Guidelines Update) to its obviousness guidelines for its personnel to be used when applying the law of obviousness under 35 U.S.C. 103. This 2010 KSR Guidelines Update highlights case law developments on obviousness under 35 U.S.C. 103 since the 2007 decision by the United States Supreme Court (Supreme Court) in KSR Int'l Co. v. Teleflex Inc. These guidelines are intended to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure when applying the law of obviousness under 35 U.S.C. 103. Members of the public are invited to provide comments on the 2010 KSR Guidelines Update. The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.
Streamlined Procedure for Appeal Brief Review in Inter Partes
The United States Patent and Trademark Office (USPTO) is streamlining the procedure for the review of appeal briefs filed in inter partes reexamination proceeding appeals to increase the efficiency of the appellate process and to reduce the pendency of appeals. The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively, ``Chief Judge''), will have the sole responsibility for determining whether appeal briefs filed in inter partes reexamination proceedings (i.e., appellant's briefs, respondent's briefs, and rebuttal briefs) comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations. The USPTO expects to achieve a reduction in inter partes reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to the BPAI's docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI. The USPTO expects further reduction in pendency because the streamlined procedure will increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal briefs and non- substantive returns from the BPAI that require parties to file corrected appeal briefs in inter partes reexamination proceeding appeals.
Pilot Program for Waiver of Patent Owner's Statement in Ex Parte Reexamination Proceedings
The United States Patent and Trademark Office (USPTO) recognizes the need to reduce the pendency of reexamination proceedings and improve the efficiency of the reexamination process. The USPTO is considering a number of short and long-range initiatives that can be implemented in three phases. In phase I, the USPTO will implement streamlined procedures, as well as optional programs in which patent owners and third party requesters may elect to participate in order to gain the benefit of shorter pendency. In phases II and III, the USPTO will consider the data gathered from phase I and the feedback from the patent owners and other stakeholders, and implement process changes that are likely to improve efficiency. Such changes may include internal procedural changes, rule making that includes opportunities for the public to comment, and/or administrative proposals for statutory changes to enhance the efficiency of the USPTO in conducting reexamination proceedings. As part of phase I to reduce pendency and improve efficiency in ex parte reexamination proceedings, the USPTO is implementing, in this notice, a pilot program in which patent owners may waive the right to file a patent owner's statement upon a request made by the USPTO. This will enable USPTO in suitable cases to issue the first Office action on the merits together with or soon after the reexamination order, and thereby reduce the pendency of the proceeding by about three to five months.
Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos
The United States Patent and Trademark Office (USPTO or Office) has prepared Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos (Interim Bilski Guidance) for its personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of the recent decision by the United States Supreme Court (Supreme Court) in Bilski v. Kappos, No. 08-964 (June 28, 2010). It is intended to be used by Office personnel as a supplement to the previously issued Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 dated August 24, 2009 (Interim Instructions) and the memorandum to the Patent Examining Corps on the Supreme Court Decision in Bilski v. Kappos dated June 28, 2010. This guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance. Any member of the public may submit written comments on the Interim Bilski Guidance. The Office is especially interested in receiving comments regarding the scope and extent of the holding in Bilski.
Treatment of Letters Stating That the USPTO's Patent Term Adjustment Determination Is Greater Than What the Applicant or Patentee Believes Is Appropriate
The United States Patent and Trademark Office (USPTO) is clarifying its treatment of letters submitted by applicants and patentees stating that the USPTO's patent term adjustment determination indicated on a notice of allowance, issue notification, or patent, is greater than what the applicant or patentee believes is appropriate. The USPTO will place these letters in the file of the application or patent without further review. The USPTO will no longer review these letters or issue certificates of correction on the basis of a review of these letters. If the applicant or patentee wants the USPTO to reconsider its patent term adjustment determination, the applicant or patentee must use the procedures set forth in 37 CFR 1.705 for requesting reconsideration of a patent term adjustment determination. A patentee may also file a terminal disclaimer disclaiming any period considered in excess of the appropriate patent term adjustment. However, the USPTO does not require an applicant or patentee to file either a request for reconsideration under 37 CFR 1.705 or a terminal disclaimer when the patent term adjustment indicated on a notice of allowance, issue notification, or patent is greater than what the applicant or patentee believes is appropriate.
United States Patent and Trademark Office Draft Strategic Plan for FY 2010-2015
This notice announces that the United States Patent and Trademark Office (USPTO) draft strategic plan for fiscal years (FY) 2010-2015 is available for public review and comment. The Government Performance and Results Act of 1993 (GPRA) requires Federal agencies to establish a strategic plan covering not less than five years, and to solicit the views and suggestions of those entities potentially affected by or interested in the plan. This plan which identifies the strategic goals and priorities of the administration and leadership of the agency is a revision of the FY 2007-2012 strategic plan. The USPTO's current plan, the FY 2007-2012 strategic plan, may be viewed on the USPTO Web site at https://www.uspto.gov as can the agency's draft plan for FY 2010-2015.
Trademark Trial and Appeal Board (TTAB) Actions
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 take this opportunity to comment on the revision of a currently approved collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Correspondence With the United States Patent and Trademark Office
The United States Patent and Trademark Office (Office) is
Clarification on the Procedure for Seeking Review of a Finding of a Substantial New Question of Patentability in Ex Parte
The United States Patent and Trademark Office (USPTO) is clarifying the procedure for seeking review of a determination that a substantial new question of patentability (SNQ) has been raised in an ex parte reexamination proceeding. This notice clarifies that while issues related to a SNQ determination are procedural, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) has been delegated the authority to review issues related to the examiner's determination that a reference raises a SNQ in an ex parte reexamination proceeding. The Chief Judge of the BPAI may further delegate that authority to the panel of Administrative Patent Judges who are deciding the appeal in an ex parte reexamination proceeding. This clarification of procedure will facilitate more efficient resolution of SNQ issues.
Notice of Enforcement Policy Symposium on Combating Counterfeiting in the 21st Century
To focus on the United States Government enforcement policy regarding counterfeit goods involving health and safety concerns and the United States Patent and Trademark Office's (USPTO) efforts at home and abroad combating counterfeiting, the USPTO and the National Intellectual Property Rights Coordination Center (IPR Center) are co- hosting an enforcement policy symposium on combating counterfeiting in the 21st century. A three panel program is planned for the symposium
Expansion and Extension of the Patent Application Backlog Reduction Stimulus Plan
The United States Patent and Trademark Office (USPTO) published a notice in the Federal Register providing an additional temporary basis (the Patent Application Backlog Reduction Stimulus Plan) under which a small entity applicant may have an application accorded special status for examination if the applicant expressly abandons another copending unexamined application. The Patent Application Backlog Reduction Stimulus Plan allows small entity applicants having multiple applications currently pending before the USPTO to have greater control over the priority with which their applications are examined while also stimulating a reduction of the backlog of unexamined patent applications pending before the USPTO. The USPTO is expanding the Patent Application Backlog Reduction Stimulus Plan to permit all applicants to participate by eliminating the small entity status requirement and adding a few new requirements in view of the expansion. The program is also being extended until December 31, 2010, or the date that 10,000 applications have been accorded special status for examination under the Patent Application Backlog Reduction Stimulus Plan, whichever occurs earlier. These changes allow more applicants to take advantage of the program.
Trademark Technical and Conforming Amendments
The United States Patent and Trademark Office (``USPTO'') is amending the Rules of Practice in Trademark Cases to implement the Trademark Technical and Conforming Amendment Act of 2010. The rule changes harmonize the framework for submitting trademark registration maintenance filings to the USPTO by permitting holders of international registrations with an extension of protection to the United States under the Madrid Protocol (``Madrid Protocol registrants'') to file Affidavits or Declarations of Use or Excusable Nonuse at intervals identical to those for nationally issued registrations. The changes additionally allow all trademark owners to cure deficiencies in their maintenance filings, including when the affidavit or declaration is not filed in the name of the owner of the registration.
Request for Comments on Proposed Changes to Restriction Practice in Patent Applications
In situations in which two or more independent and distinct inventions are claimed in a single patent application, the United States Patent and Trademark Office (Office) is authorized by the patent laws and implementing regulations to require the applicant to restrict the application to one invention. The practice for requiring an applicant to restrict an application to one invention in such situations is known as restriction practice. The Office is considering changes to restriction practice to improve the quality and consistency of restriction requirements made by Office personnel.
Enhanced Examination Timing Control Initiative; Notice of Public Meeting
This notice announces a public meeting to solicit public opinions on an initiative being considered by the United States Patent and Trademark Office (USPTO) to provide applicants with greater control over when their applications are examined and to enhance work sharing between intellectual property offices. Under the initiative, for applications filed in the USPTO that are not based on a prior foreign- filed application (e.g., that do not claim foreign priority benefit), applicant would be able to: (1) Request prioritized examination (Track I); (2) for non-continuing applications, request a delay lasting up to 30 months in docketing for examination (Track III); or (3) obtain processing under the current procedure (Track II) by not requesting either (1) or (2). For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USPTO until the USPTO receives a copy of the search report, if any, and first office action from the foreign office and an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO. Following or concurrent with the submission of the foreign office action and reply, applicant may request prioritized examination or obtain processing under the current procedure.
United States Patent Applicant Survey
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 take this opportunity to comment on the extension of a currently approved collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings
The United States Patent and Trademark Office (USPTO) is streamlining the procedure for the review of appeal briefs in ex parte reexamination proceeding appeals to increase the efficiency of the appeal process and reduce pendency of appeals. The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively, ``Chief Judge''), will have the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceeding appeals comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations. The USPTO expects to achieve a reduction in ex parte reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI. We are expecting further reduction in pendency because the streamlined procedure will increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs in ex parte reexamination proceeding appeals.
Notice Regarding the Elimination of the Fee for Petitions To Make Special Filed Under the Patent Prosecution Highway (PPH) Programs
The United States Patent and Trademark Office (USPTO) is eliminating the fee for the petition to make special under the Patent Prosecution Highway (PPH) programs. Currently, applicants must pay a petition fee under 37 CFR 1.17(h) to have an application to enter into the PPH program. With the elimination of the fee, applicants will no longer have to pay the petition to make special fee in order to request an application enter all current pilot and fully implemented PPH programs. The elimination of the petition fee will simplify the PPH requirements and is expected to encourage greater PPH participation.
Elimination of Classification Requirement in the Green Technology Pilot Program
The United States Patent and Trademark Office (USPTO) implemented the Green Technology Pilot Program on December 8, 2009, which permits patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction to be advanced out of turn for examination and reviewed earlier (accorded special status). The program is designed to promote the development of green technologies. However, the pilot program was limited to only applications classified in a number of U.S. classifications to assist the USPTO to balance the workload and gauge resources needed for the program. The USPTO has determined that the classification requirement is unnecessary because the workload has been balanced with other mechanism, and this requirement was causing the denial of petitions for applications that are drawn to green technologies. The USPTO is hereby eliminating the classification requirement for any petitions that are decided on or after the publication date of this notice. This will permit more applications to qualify for the program, thereby allowing more inventions related to green technologies to be advanced out of turn for examination and reviewed earlier.
Electronic Filing System-Web (EFS-Web) Contingency Option
The United States Patent and Trademark Office (USPTO) is increasing the availability of its patent electronic filing system, Electronic Filing SystemWeb (EFS-Web) by providing a new contingency option when the primary portal to EFS-Web has an unscheduled outage. Previously, the entire EFS-Web system is not available to the users during such an outage. The contingency option in EFS-Web will permit users to sign-on as unregistered EFS-Web users to file new applications, national stage submissions under the Patent Cooperation Treaty (PCT) submitted with the basic national fee necessary to enter the national stage, requests for reexamination, and certain petitions, during an unscheduled outage of the primary portal to EFS-Web.
Initial Patent Applications
The United States Patent and Trademark Office (USPTO), as part of its continuing efforts to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on this revision of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Notice of Roundtables and Request for Comments on Enhancement in the Quality of Patents and on United States Patent and Trademark Office Patent Quality Metrics
The United States Patent and Trademark Office (USPTO), in conjunction with the Patent Public Advisory Committee (PPAC), has undertaken a project related to enhancing overall patent quality. As part of this initiative, the USPTO is conducting two roundtables to obtain public input from organizations and individuals on actions that can improve patent quality and the metrics the USPTO should use to measure progress. The roundtables are open to the public. The USPTO plans to invite a number of roundtable participants from among patent user groups, practitioners, industry, independent inventor organizations, academia, and government. Any member of the public may submit written comments on USPTO patent quality enhancement and metrics as well as on any issue raised at the roundtable.
Patent Term Extension
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 take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Cancellation of Rule of Practice 41.200(b) Before the Board of Patent Appeals and Interferences in Interference Proceedings
The United States Court of Appeals for the Federal Circuit issued a decision in Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009). That decision impacted the continuing viability of portions of a patent interference rule. The United States Patent and Trademark Office (USPTO or Office) is therefore cancelling the affected portion of the interference rule.
Patents Ombudsman Pilot Program
The United States Patent and Trademark Office (USPTO) published a notice in the Federal Register seeking public comments on a proposed procedure for a Patents Ombudsman Pilot Program. The majority of the written comments from the patent community were positive and supported the implementation of such a program. After considering the written comments, the USPTO has decided to implement the Patents Ombudsman Pilot Program as set forth in this notice for a period of one year. The Patents Ombudsman Pilot Program is intended to provide patent applicants, attorneys and agents with assistance with application- processing issues regarding concerns with advancement of prosecution (e.g., stalled applications). The Patents Ombudsman Pilot Program is not intended to circumvent normal communication between pro se applicants or applicants' representatives and examiners or Supervisory Patent Examiners, and it is not intended to supersede the authority of the examiners or Supervisory Patent Examiners. After the one-year period, the USPTO may extend the pilot program with appropriate modifications based on the feedback from the participants, the effectiveness of the pilot program and the availability of resources.
Request for Comments on Proposed Change To Missing Parts Practice
The United States Patent and Trademark Office (USPTO), in response to a number of requests to reduce the costs due one year after filing a provisional application, is considering a change that would effectively provide a 12-month extension to the 12-month provisional application period (creating a net 24-month period). This change would be implemented through the missing parts practice in nonprovisional applications. Currently the missing parts practice permits an applicant on payment of a surcharge to pay the up-front filing fees and submit an executed oath or declaration after the filing of a nonprovisional application within a two-month time period set by the USPTO that is extendable on payment of extension of time fees for an additional five months. Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination and any excess claim fees due within that 12-month period. The proposal would benefit applicants by permitting additional time to determine if patent protection should be sought at a relatively low cost and by permitting applicants to focus efforts on commercialization during this period. The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which the applicants have decided not to pursue examination. Importantly, the extended missing parts period would not affect the 12-month priority period provided by the Paris Convention for the Protection of Industrial Property and, thus, any foreign filings would still need to be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign- filed application.
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