Patent and Trademark Office 2011 – Federal Register Recent Federal Regulation Documents

Changes To Implement the Prioritized Examination for Requests for Continued Examination
Document Number: 2011-32434
Type: Rule
Date: 2011-12-19
Agency: Department of Commerce, Patent and Trademark Office
The Leahy-Smith America Invents Act includes provisions for prioritized examination of patent applications. The United States Patent and Trademark Office (Office) implemented the Leahy-Smith America Invents Act prioritized examination provision following the prioritized examination track (Track I) of the proposed 3-Track examination process in a previous final rule. The final rule was made applicable to newly filed patent applications. In order to provide patent applicants with the flexibility to accelerate processing of their applications in which a request for continued examination has been filed, the Office is now permitting applicants to request prioritized examination for applications after the filing of a request for continued examination.
Sunset of the Patent Application Backlog Reduction Stimulus Plan and a Limited Extension of the Green Technology Pilot Program
Document Number: 2011-32115
Type: Notice
Date: 2011-12-15
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) has provided two procedures under which an applicant may have an application accorded special status for examination. The Patent Application Backlog Reduction Stimulus Plan is available if the applicant expressly abandons another copending unexamined application. The Green Technology Pilot Program is available to patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction. In view of the trend in filings under the Patent Application Backlog Reduction Stimulus Plan, this plan has fulfilled its purpose and will not be extended. In view of the success of the Green Technology Pilot Program, this plan will be extended until 500 additional applications have been accorded special status under this program or until March 30, 2012, whichever occurs earlier. Following the expiration of this extension, the program will be eliminated, and applicants may instead use the newly enacted Prioritized Examination (Track I) program. The Track I program not only provides advancement of examination, but sets a target of reaching final disposition within 12 months from the time advancement is initiated. Furthermore, the advancement in the Track I program is available to all technologies and is not restricted to certain categories of invention as in the Pilot Program.
Revision of Patent Term Adjustment Provisions Relating to Information Disclosure Statements
Document Number: 2011-30933
Type: Rule
Date: 2011-12-01
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is revising the patent term adjustment provisions of the rules of practice in patent cases. The patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) provide for a reduction of any patent term adjustment if the applicant failed to engage in reasonable efforts to conclude prosecution of the application. The Office is revising the rules of practice pertaining to the reduction of patent term adjustment for applicant delays to exclude information disclosure statements resulting from the citation of information in a counterpart application that are promptly filed with the Office. The rule change allows the diligent applicant to avoid patent term adjustment reduction for an IDS submission that results from a communication from the Office. Presently, the rule only provides relief if the IDS was cited as a result of a communication from a foreign patent office. Under this final rule, there will be no reduction of patent term adjustment in the following situations: when applicant promptly submits a reference in an information disclosure statement after the mailing of a notice of allowance if the reference was cited by the Office in another application, or when applicant promptly submits a copy of an Office communication (e.g., an Office action) in an information disclosure statement after the mailing of a notice of allowance if the Office communication was issued by the Office in another application or by a foreign patent office in a counterpart foreign application. The above changes are intended to ensure compliance with AIPA in light of the evolving case law.
Fee for Filing a Patent Application Other Than by the Electronic Filing System
Document Number: 2011-29462
Type: Rule
Date: 2011-11-15
Agency: Department of Commerce, Patent and Trademark Office
The Leahy-Smith America Invents Act provides an additional fee of $400 for applications not filed electronically. This final rule revises the rules of practice to include the fee for applications not filed electronically.
Trademark Technical and Conforming Amendments
Document Number: 2011-28890
Type: Rule
Date: 2011-11-08
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') is adopting as a final rule, with minor changes, an interim final rule amending the Rules of Practice in Trademark Cases and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (``Madrid Rules'') to implement the Trademark Technical and Conforming Amendment Act of 2010. The interim final rule was published in the Federal Register on June 24, 2010. This final rule makes minor changes to the interim final rule to incorporate additional statutory language being implemented.
Trademark Manual of Examining Procedure, Eighth Edition
Document Number: 2011-28775
Type: Notice
Date: 2011-11-07
Agency: Department of Commerce, Patent and Trademark Office
To provide information on trademark examination policy and procedure, the United States Patent and Trademark Office (``USPTO'') issued the eighth edition of the Trademark Manual of Examining Procedure (``TMEP''), and made available an archived copy of the seventh edition, on October 15, 2011.
Discontinuing the Mass Mailing of Paper Fee Schedules to Registered Attorneys, Agents, and Deposit Account Holders
Document Number: 2011-28536
Type: Notice
Date: 2011-11-03
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is discontinuing the mass mailing of revised paper fee schedules to registered attorneys, agents, and deposit account holders when fees are adjusted due to enactment of legislation or fluctuations in the Consumer Price Index. Since a substantial majority of filings and fee payments are submitted on-line, and the most up-to-date fee schedule is always available and maintained on-line, the USPTO has discontinued the mass mailing of the paper fee schedules. The current fee schedule is essentially built into the on-line systems (e.g., EFS-Web, TEAS, accessible through the USPTO home page, etc.), which display the current fee amounts required at the time of submitting the payment.
National Medal of Technology and Innovation Nomination Evaluation Committee Meeting
Document Number: 2011-28500
Type: Notice
Date: 2011-11-03
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
The National Medal of Technology and Innovation (NMTI) Nomination Evaluation Committee will meet in closed session on Friday, November 18, 2011. The primary purpose of the meeting is to discuss the relative merits of persons, teams and companies nominated for the 2011 NMTI Medal.
Grant of Interim Extension of the Term of U.S. Patent No. 5,407,914; SURFAXIN® (Lucinactant)
Document Number: 2011-28499
Type: Notice
Date: 2011-11-03
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
The United States Patent and Trademark Office has issued an Order Granting Interim Extension for a third one-year interim extension of the term of U.S. Patent No. 5,407,914.
Request for Comments on Intellectual Property Enforcement in China
Document Number: 2011-26757
Type: Notice
Date: 2011-10-17
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
As China has become a major trading partner for the United States, U.S. rights holders are increasingly seeking to protect and enforce their intellectual property (IP) in that country. China's patent and trademark offices are now among the largest in the world in terms of filings, and its IP enforcement system is being increasingly utilized by U.S. rights holders. Ensuring that the Chinese IP system works in a fair and timely manner for U.S. innovators is a top priority for the U.S. Government. To that end, the United States Patent and Trademark Office (USPTO), in collaboration with other U.S. Government agencies, is leading an effort to identify and assess the challenges U.S. inventors are facing with China's judicial and administrative patent enforcement systems. The USPTO would like to address the concerns of rights holders by working with them to identify problemssuch as difficulties in gathering evidence, meeting evidentiary requirements, protecting proprietary information, obtaining adequate damages, and enforcing preliminary injunctionsto then find ways to address these issues with the Chinese Government. As part of this effort, the USPTO, in coordination with the White House Intellectual Property Enforcement Coordinator (IPEC), has conducted a series of roundtables to obtain the views of diverse members of the patent community who have first-hand experience enforcing their patents in China. Roundtables were held on July 19, 2011, in Washington, DC; on July 26, 2011, in Beijing, China; on July 29, 2011, in Shanghai, China; and on August 1, 2011, in Guangzhou, China. Topics for discussion included: (1) Acquisition and enforcement of utility model and design patents; (2) evidence collection and preservation in Chinese courts; (3) obtaining damages and injunctions; (4) enforceability of court orders; and (5) administrative patent enforcement. To ensure that the USPTO receives a wide array of views, the USPTO would like to invite any member of the public to submit written comments on China's patent enforcement system, including, but not limited to, the five specific issues listed above. Examples of first- hand experience using China's patent enforcement system, and recommendations on ways to improve the system, are encouraged. Based on these comments, the USPTO intends to produce a report that details the patent enforcement landscape in China and identifies any challenges faced by U.S. innovators, together with recommendations for improving the system.
Performance Review Board (PRB)
Document Number: 2011-26751
Type: Notice
Date: 2011-10-17
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
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.
Request for Comments and Notice of Public Hearings on the Study of International Patent Protection for Small Businesses
Document Number: 2011-26157
Type: Notice
Date: 2011-10-07
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
Notice of Public Hearing and Request for Comments on the Study of Prior User Rights
Document Number: 2011-26154
Type: Notice
Date: 2011-10-07
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
Public User ID Badging
Document Number: 2011-26014
Type: Notice
Date: 2011-10-07
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
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 continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Submission for OMB Review; Comment Request
Document Number: 2011-24996
Type: Notice
Date: 2011-09-29
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
Notice of Availability of Patent Fee Changes Under the Leahy-Smith America Invents Act
Document Number: 2011-24672
Type: Notice
Date: 2011-09-23
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is publishing this notice to advise the public of the availability, on the USPTO's Web site, of the patent fee amounts that will be in effect ten days after the date of enactment of the Leahy-Smith America Invents Act (i.e., September 26, 2011) by operation of the fifteen percent surcharge provided for in section 11(i) and the prioritized examination fee provided for in Section 11(h). The USPTO's Web site also specifies the additional fee for applications not filed by electronic means in effect sixty days after the date of enactment of the Leahy-Smith America Invents Act (i.e., November 15, 2011) by operation of section 10(h). The USPTO's Web site for fee information is http:// www.uspto.gov/about/offices/cfo/finance/fees.jsp.
Submission for OMB Review; Comment Request
Document Number: 2011-24506
Type: Notice
Date: 2011-09-23
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures Under the Leahy-Smith America Invents Act
Document Number: 2011-24467
Type: Rule
Date: 2011-09-23
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
On April 4, 2011, the United States Patent and Trademark Office (Office) published a final rule that revised the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application upon payment of appropriate fees and compliance with certain requirements (Track I final rule). The prioritized examination procedure is the first track (Track I) of a 3-Track examination process designed to provide applicants with greater control over when their utility and plant applications are examined and to promote greater efficiency in the patent examination process. The Office subsequently published a final rule on April 29, 2011, indicating that the effective date of the Track I final rule was delayed until further notice due to funding limitations. The Leahy-Smith America Invents Act includes provisions for prioritized examination that emulate the requirements of the Office's Track I final rule, with revised fee amounts for prioritized examination (including a small entity discount) and a provision that addresses the funding limitations that required a delay in the implementation of the Track I final rule. This final rule implements the prioritized examination provisions of section 11(h) of the Leahy-Smith America Invents Act.
Request for Comments on Establishment of a One-Year Retention Period for Trademark-Related Papers That Have Been Scanned Into the Trademark Initial Capture Registration System
Document Number: 2011-24466
Type: Notice
Date: 2011-09-23
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') is considering establishing a retention period of one year for trademark- related documents submitted on paper that are subsequently scanned into the Trademark Initial Capture Registration System (``TICRS''). TICRS is available to the public through the Trademark Document Retrieval (``TDR'') database on the USPTO Web site. After the expiration of the one-year retention period, the USPTO would dispose of the paper documents unless, within sufficient time prior to disposal, the relevant trademark applicant or owner files a request to correct the electronic record in TICRS, and the request remains outstanding at the time disposal would otherwise have occurred. Specifically, the proposed one-year retention period begins on: September 26, 2011, for papers scanned into TICRS prior to September 26, 2011; or a paper's submission date, for papers scanned into TICRS on or after September 26, 2011. The proposal would reduce the costs currently associated with indefinitely warehousing paper documents, while permitting sufficient time for the review and rarely needed correction of the scanning of such paper documents.
Revision of Standard for Granting an Inter Partes Reexamination Request
Document Number: 2011-24464
Type: Rule
Date: 2011-09-23
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is revising the rules of practice governing inter partes reexamination to implement a transition provision of the Leahy-Smith America Invents Act that changes the standard for granting a request for inter partes reexamination. The Office is also revising the rules governing inter partes reexamination to reflect the termination of inter partes reexamination effective September 16, 2012, which is provided for in the Act. The Leahy-Smith America Invents Act replaces inter partes reexamination by a new inter partes review process effective one year after the date of enactment of the Leahy-Smith America Invents Act (i.e., September 16, 2012), and provides that any request for inter partes reexamination filed on or after September 16, 2011, will not be granted unless the information presented in the request establishes that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. This replaces the prior standard for granting a request for inter partes reexamination that required a substantial new question of patentability (SNQ) affecting any claim of the patent raised by the request. The Leahy-Smith America Invents Act does not revise the SNQ standard for granting an ex parte reexamination request.
Extension of Comment Period for Notice of Proposed Rulemaking on Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases
Document Number: 2011-23129
Type: Proposed Rule
Date: 2011-09-09
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') is extending until September 23, 2011, the period for public comment on the proposal to revise the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to permit the USPTO to require: any information, exhibits, and affidavits or declarations deemed reasonably necessary to examine an affidavit or declaration of continued use or excusable nonuse in trademark cases, or for the USPTO to assess the accuracy and integrity of the register; and upon request, more than one specimen in connection with a use-based trademark application, an allegation of use, an amendment to a registered mark, or an affidavit or declaration of continued use in trademark cases.
Recording Assignments
Document Number: 2011-23078
Type: Notice
Date: 2011-09-09
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
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)).
Rules for Patent Maintenance Fees
Document Number: 2011-22792
Type: Notice
Date: 2011-09-07
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
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)).
Patent and Trademark Resource Centers Metrics
Document Number: 2011-22044
Type: Notice
Date: 2011-08-30
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
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)).
Establishing a One-Year Retention Period for Patent-Related Papers That Have Been Scanned Into the Image File Wrapper System or the Supplemental Complex Repository for Examiners
Document Number: 2011-21964
Type: Notice
Date: 2011-08-29
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is considering establishing a retention period of one year for patent- related papers that have been scanned into the Image File Wrapper system (IFW) or the Supplemental Complex Repository for Examiners (SCORE). Specifically, the USPTO is considering establishing a one-year retention period that begins on September 1, 2011, for papers scanned into IFW or SCORE prior to September 1, 2011; or a paper's submission date, for papers scanned into IFW or SCORE on or after September 1, 2011. After the expiration of the one-year retention period (after September 1, 2012, or later), the USPTO would dispose of the paper unless, within sufficient time prior to disposal of the paper, the relevant patent applicant, patent owner, or reexamination party files a bona fide request to correct the electronic record of the paper in IFW or SCORE, and the request remains outstanding at the time disposal of the paper would have otherwise occurred. Establishing a one-year retention period for papers scanned into IFW or SCORE would replace the USPTO's past practice of indefinitely retaining the papers, which has been rendered unnecessary and cost-ineffective by improvements in scanning and indexing.
Public Key Infrastructure (PKI) Certificate Action Form
Document Number: 2011-20097
Type: Notice
Date: 2011-08-09
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
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)).
Submission for OMB Review; Comment Request
Document Number: 2011-19970
Type: Notice
Date: 2011-08-08
Agency: Department of Commerce, Patent and Trademark Office
Submission for OMB Review; Comment Request
Document Number: 2011-19497
Type: Notice
Date: 2011-08-02
Agency: Department of Commerce, Patent and Trademark Office
Revision of the Materiality to Patentability Standard for the Duty To Disclose Information in Patent Applications
Document Number: 2011-18408
Type: Proposed Rule
Date: 2011-07-21
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or PTO) is proposing to revise the standard for materiality for the duty to disclose information in patent applications and reexamination proceedings in light of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit or Court) in Therasense, Inc. v. Becton, Dickinson & Co. Specifically, the Office is proposing to revise the materiality standard for the duty to disclose to match the materiality standard, as defined in Therasense, for the inequitable conduct doctrine. While Therasense does not require the Office to harmonize the materiality standards underlying the duty of disclosure and the inequitable conduct doctrine, the Office believes that there are important reasons to do so. The materiality standard set forth in Therasense should reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, consequently reducing the incentive to submit information disclosure statements containing marginally relevant information and enabling applicants to be more forthcoming and helpful to the Office. At the same time, it should also continue to prevent fraud on the Office and other egregious forms of misconduct. Additionally, harmonization of the materiality standards is simpler for the patent system as a whole.
Statutory Invention Registration
Document Number: 2011-18092
Type: Notice
Date: 2011-07-19
Agency: Department of Commerce, Patent and Trademark Office
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 continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Patent Prosecution Highway (PPH) Program
Document Number: 2011-17077
Type: Notice
Date: 2011-07-08
Agency: Department of Commerce, Patent and Trademark Office
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)).
Trademark Board Manual of Procedure, Third Edition
Document Number: 2011-16605
Type: Notice
Date: 2011-07-01
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') issued the third edition of the Trademark Board Manual of Procedure (``TBMP'') on May 6, 2011.
Revision of Patent Fees for Fiscal Year 2012
Document Number: 2011-16001
Type: Proposed Rule
Date: 2011-06-27
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is proposing to adjust certain patent fee amounts for fiscal year 2012 to reflect fluctuations in the Consumer Price Index (CPI). The patent statute provides for the annual CPI adjustment of patent fees set by statute to recover the higher costs associated with doing business.
Applications for Trademark Registration
Document Number: 2011-15016
Type: Notice
Date: 2011-06-17
Agency: Department of Commerce, United States Patent and Trademark Office, Patent and Trademark Office
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 continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Patent and Trademark Financial Transactions
Document Number: 2011-14387
Type: Notice
Date: 2011-06-10
Agency: Department of Commerce, Patent and Trademark Office
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)).
Admittance to Practice and Roster of Registered Patent Attorneys and Agents Admitted to Practice Before the United States Patent and Trademark Office (USPTO) (Proposed Addition)
Document Number: 2011-13369
Type: Notice
Date: 2011-05-31
Agency: Department of Commerce, Patent and Trademark Office
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)).
Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures
Document Number: 2011-10376
Type: Rule
Date: 2011-04-29
Agency: Department of Commerce, Patent and Trademark Office
On April 4, 2011, the United States Patent and Trademark Office (Office) published a final rule that revises the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application upon payment of appropriate fees and compliance with certain requirements (Track I final rule). The prioritized examination procedure is the first track (Track I) of a 3-Track examination process designed to provide applicants with greater control over when their nonprovisional utility and plant applications are examined and to promote greater efficiency in the patent examination process. The Track I final rule states that the effective date is May 4, 2011, and that a request for prioritized examination may be submitted with any original utility or plant application filed on or after May 4, 2011. The Office is hereby notifying the public that the Track I final rule effective date and applicability date have been delayed until further notice.
Streamlined Patent Reexamination Proceedings; Notice of Public Meeting
Document Number: 2011-9805
Type: Proposed Rule
Date: 2011-04-25
Agency: Department of Commerce, Patent and Trademark Office
This document announces a public meeting to solicit public opinions on a number of changes being considered by the United States Patent and Trademark Office (USPTO) to streamline the procedures governing ex parte and inter partes reexamination proceedings. These changes are intended to achieve faster, more efficient resolution of the substantial new question of patentability (SNQ) for which reexamination is ordered. The proposed changes in this document are divided into three categories: changes to both ex parte and inter partes reexaminations, changes specific to ex parte reexamination, and changes specific to inter partes reexamination. After soliciting public opinions regarding this document, the USPTO may seek to adopt one or more of the proposed changes or a modified version thereof, or other changes suggested by the public, through a rule making or through internal operational changes as appropriate.
Public Advisory Committees
Document Number: 2011-9085
Type: Notice
Date: 2011-04-14
Agency: Department of Commerce, Patent and Trademark Office
On November 29, 1999, the President signed into law the Patent and Trademark Office Efficiency Act (the ``Act''), Public Law 106-113, 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 (now codified at 35 U.S.C. 5). The USPTO is requesting nominations for three (3) members to each Public Advisory Committee for terms of three years that begin at the expiration of the predecessors' terms, or on October 6, 2011.
Submission for OMB Review; Comment Request
Document Number: 2011-8502
Type: Notice
Date: 2011-04-11
Agency: Department of Commerce, Patent and Trademark Office
Revision of Patent Term Extension and Adjustment Provisions Relating to Appellate Review and Information Disclosure Statements
Document Number: 2011-8275
Type: Proposed Rule
Date: 2011-04-06
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is proposing to revise the patent term adjustment and extension provisions of the rules of practice in patent cases. The patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) and the patent term extension provisions of the Uruguay Round Agreements Act (URAA) each provide for patent term extension or adjustment if the issuance of the patent was delayed due to appellate review by the Board of Patent Appeals and Interferences (BPAI) or by a Federal court and the patent was issued pursuant to or under a decision in the review reversing an adverse determination of patentability. The Office is proposing to change the rules of practice to indicate that in most circumstances an examiner reopening prosecution of the application after a notice of appeal has been filed will be considered a decision in the review reversing an adverse determination of patentability for purposes of patent term adjustment or extension purposes. Therefore, in such situations, patentees would be entitled to patent term extension or adjustment. In addition, the AIPA provides for a reduction of any patent term adjustment if the applicant failed to engage in reasonable efforts to conclude prosecution of the application. The Office is also proposing to change the rules of practice pertaining to the reduction of patent term adjustment for applicant delays to exclude information disclosure statements resulting from the citation of information by a foreign patent office in a counterpart application that are promptly filed with the Office. For example, under the proposed rule, there would not be a reduction of patent term adjustment in the following situations: When applicant promptly submits a reference in an information disclosure statement after the mailing of a notice of allowance if the reference was cited by the Office in another application, or when applicant promptly submits a copy of an Office communication (e.g., an Office action) in an information disclosure statement after the mailing of a notice of allowance if the Office communication was issued by the Office in another application or by a foreign patent office in a counterpart foreign application.
Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures
Document Number: 2011-7807
Type: Rule
Date: 2011-04-04
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application upon payment of appropriate fees and compliance with certain requirements. In June of 2010, the Office requested comments on a proposal to provide applicants with greater control over when their utility and plant applications are examined and to promote greater efficiency in the patent examination process (3- Track). The Office, in addition to requesting written comments, conducted a public meeting to collect input from the public. The vast majority of public comments and input that the Office received were supportive of the prioritized examination track (Track I) portion of the 3-Track proposal. While the Office is in the process of considering and revising the other portions of the 3-Track proposal in view of the public comments and input, the Office wishes to implement the prioritized examination track (Track I) now to provide the procedure for prioritized examination to applicants as quickly as possible. In February of 2011, the Office published a notice of proposed rule making to set forth the proposed procedure for prioritized examination and to seek public comments on the proposed procedure. The Office considered the public comments and revised the proposed procedure in view of the public comments. The Office, in this final rule, is revising the rules of practice to implement the optional procedure for prioritized examination. The aggregate goal for processing applications under prioritized examination is to provide a final disposition within twelve months of prioritized status being granted. The Office is initially limiting requests for prioritized examination to a maximum of 10,000 applications during the remainder of fiscal year 2011.
Improving Regulation and Regulatory Review
Document Number: 2011-6660
Type: Proposed Rule
Date: 2011-03-22
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'' or ``Office'') is preparing a preliminary plan to review its existing significant regulations in response to the President's Executive Order 13563 on Improving Regulation and Regulatory Review. The purpose of this regulatory review is to determine whether any of these regulations should be modified, streamlined, expanded, or repealed in order to make the Office's regulatory program more effective and less burdensome. More effective and less burdensome regulations will help the Office in its mission to foster innovation and competitiveness through providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide. The Office is asking the public to provide ideas and information about preparing such a review plan and to help the Office identify which regulations should be reviewed.
Submissions Regarding Correspondence and Regarding Attorney Representation (Trademarks)
Document Number: 2011-5902
Type: Notice
Date: 2011-03-15
Agency: Department of Commerce, Patent and Trademark Office
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)).
Proposed Information Collection Requirements Under OMB Review; Certain Patent Petitions Requiring a Fee
Document Number: 2011-4456
Type: Notice
Date: 2011-03-02
Agency: Department of Commerce, Patent and Trademark Office
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)).
Proposed Collection; Patent Examiner Employment Application
Document Number: 2011-4458
Type: Notice
Date: 2011-03-01
Agency: Department of Commerce, Patent and Trademark Office
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)).
Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications
Document Number: 2011-2841
Type: Notice
Date: 2011-02-09
Agency: Department of Commerce, Patent and Trademark Office
These supplementary guidelines are intended to assist United States Patent and Trademark Office (Office) personnel in the examination of claims in patent applications for compliance with 35 U.S.C. 112, second paragraph, which requires that claims particularly point out and distinctly claim the subject matter that applicant regards as his or her invention. In addition, supplemental information is provided to assist Office personnel in the examination of claims that contain functional language for compliance with 35 U.S.C. 112, especially computer-implemented invention claims. The guidelines also include information to assist Office personnel in the examination of dependent claims for compliance with 35 U.S.C. 112, fourth paragraph. The guidelines are a supplement to the current provisions in the Manual of Patent Examining Procedure (MPEP) pertaining to 35 U.S.C. 112, and the current provisions in the MPEP pertaining to 35 U.S.C. 112 remain in effect except as where indicated in these guidelines.
Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures
Document Number: 2011-2585
Type: Proposed Rule
Date: 2011-02-04
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) requested comments on a proposal to provide applicants with greater control over when their utility and plant applications are examined and to promote greater efficiency in the patent examination process (3- Track). The Office, in addition to requesting written comments, conducted a public meeting to collect input, and has subsequently considered the wide range of comments received. The Office is in the process of refining the 3-Track proposal in light of the input. While that process continues, and in light of the fact that the vast majority of public input was supportive of the Track I portion of the 3-Track proposal, the Office proposes by this Notice to proceed with immediate implementation of the Prioritized Examination Track (Track I), providing fast examination for applicants desiring it, upon payment of the applicable fee and compliance with the additional requirements as described below.
Grant of Interim Extension of the Term of U.S. Patent No. 4,971,802; MIFAMURTIDE
Document Number: 2011-2088
Type: Notice
Date: 2011-02-01
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office has issued a certificate under 35 U.S.C. 156(d)(5) for a fourth one-year interim extension of the term of U.S. Patent No. 4,971,802.
Submission for OMB Review; Comment Request
Document Number: 2011-1731
Type: Notice
Date: 2011-01-27
Agency: Department of Commerce, Patent and Trademark Office