Patent and Trademark Office 2016 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (USPTO) implemented a pilot program (Extended Missing Parts Pilot Program) in which an applicant, under certain conditions, can request a 12-month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional application. The Extended Missing Parts Pilot Program benefits 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 benefits 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. While the USPTO has not yet completed its evaluation of the program, the number of participants in the program over the past several years indicates that there may be sufficient benefits to the patent community. Thus, the USPTO is extending the Extended Missing Parts Pilot Program until January 2, 2018, to allow the USPTO to continue its evaluation of the pilot program. The requirements of the program have not changed.

The United States Patent and Trademark Office published in the Federal Register on October 7, 2016 a final rule, which will become effective on January 14, 2017, revising the Rules of Practice before the Trademark Trial and Appeal Board. This document corrects errors in certain cross-references, clarifies the manner of testimony taken in a foreign country and the process in depositions upon written questions, and reincorporates the time frames for cross appeals and cross actions in that rule.

The Hague Conference on Private International Law (``The Hague Conference''), an international organization in the Netherlands, is sponsoring negotiations for a convention on the recognition and enforcement of foreign judgments in civil and commercial matters. In February 2016, the Council on General Affairs and Policy of The Hague Conference created a Special Commission on the Recognition and Enforcement of Foreign Judgments (``the Special Commission'') to prepare a preliminary draft text of the convention, which is subject to a formal diplomatic negotiation open to member States of The Hague Conference. At its first session in June 2016, the Special Commission produced a Preliminary Draft Convention that contains general and specific provisions that would apply to the recognition and enforcement of judgments arising from transnational intellectual property disputes. The United States Patent and Trademark Office (USPTO) seeks public comments on the June 2016 Preliminary Draft Convention (the ``Preliminary Draft'') as it relates to intellectual property matters. To assist the USPTO in determining the best way to address this topic, the USPTO will host a public meeting to obtain public input. The meeting will be open to the public and will provide a forum for discussion of the questions identified in this notice. Written comments in response to the questions set forth in this notice also are requested.

This document contains corrections to tables included in the preamble of the final rule implementing changes to trademark fees published in the Federal Register of Friday, October 21, 2016.

The United States Patent and Trademark Office (Office or USPTO) proposes to amend its rules regarding petitions to revive an abandoned application and petitions to the Director of the USPTO (Director) regarding other matters, and to codify USPTO practice regarding requests for reinstatement of abandoned applications and cancelled or expired registrations. The proposed changes will permit the USPTO to provide more detailed procedures regarding the deadlines and requirements for requesting revival, reinstatement, or other action by the Director. These rules will thereby ensure that the public has notice of the deadlines and requirements for making such requests, facilitate the efficient and consistent processing of such requests, and promote the integrity of application/registration information in the trademark electronic records system as an accurate reflection of the status of applications and registrations.

Patent applications that contain disclosures of nucleotide and/or amino acid sequences must contain sequence information in a separate part of the disclosure in a specified manner. The United States Patent and Trademark Office (Office) is seeking additional comments to obtain views of the public on the continuing international effort to revise the World Intellectual Property Organization (WIPO) standard for the presentation of nucleotide and/or amino acid sequences and the consequent changes to the United States rules of practice. The revised standard will be known as WIPO Standard ST.26. An interim version of WIPO Standard ST.26 was adopted in March 2016 by the Committee on WIPO Standards (CWS), but has not been implemented pending further consideration by the CWS. Since the adoption of the interim version, efforts have been undertaken to finalize WIPO Standard ST.26 and to improve its effectiveness once implemented. One aspect of that continuing effort is a proposed guidance document annex, which will include a variety of sequence disclosure examples, to ensure understanding and uniform application of standard requirements. Comments may be offered on any aspect of this effort, and in particular, (a) the comprehensiveness and clarity of WIPO Standard ST.26 and the proposed guidance document annex, and (b) the proposed authoring/validation tool for creation of a sequence listing in XML.

The United States Patent and Trademark Office (Office or USPTO) is amending its rules to set or increase certain trademark fees, as authorized by the Leahy-Smith America Invents Act (AIA). The fees will allow the Office to further USPTO strategic objectives by: Better aligning fees with the full cost of the relevant products and services; protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings and more efficient resolution of appeals and trials; and promoting the efficiency of the process, in large part through lower-cost electronic filing options. The changes will also continue to recover the aggregate estimated cost of Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations.

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)).

The United States Patent and Trademark Office (Office or USPTO) proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act (Act or AIA). The USPTO is a business- like operation where external factors affect the productivity of the workforce and the demand for patent products and services. The proposed fee adjustments are needed to provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations (based on current projections), while maintaining momentum towards achieving strategic goals. This rulemaking represents the second iteration of patent fee rulemaking by the USPTO to set fees under the authority of the AIA; the first AIA patent fee setting rule was published in January 2013. This current rulemaking is a result of the USPTO assessing its costs and fees, as is consistent with federal fee setting standards. Following a biennial review of fees, costs, and revenues that began in 2015, the Office concluded that further targeted fee adjustments were necessary to continue funding patent operations, enhance patent quality, and continue to work toward patent pendency goals, strengthen the Office's information technology (IT) capability and infrastructure, and achieve operating reserve targets. Further, in several instances, the fee change proposals offered during the biennial fee review process were enhanced by the availability of cost and workload data (e.g., the number of requests for a service) that was not available in 2013. As a result, the 205 proposed fee adjustments outlined in this proposed rule align directly with the Office's strategic goals and four key fee setting policy factors, discussed in detail in Part V.

The National Medal of Technology and Innovation (NMTI) Nomination Evaluation Committee will meet in closed session on September 9, 2016. The primary purpose of the meeting is to discuss the relative merits of persons, teams, and companies nominated for the 2015 NMTI.

The United States Patent and Trademark Office (USPTO) publishes this notice to announce the Cancer Moonshot Challenge, which was launched on August 22, 2016, to enlist the public's help to leverage the USPTO's intellectual property data, often an early indicator of meaningful research and development, and combine it with other economic and funding data. This challenge supports the goals and objectives of the National Cancer Moonshot, a Presidential initiative to speed up cancer advances, make more therapies available to more patients, and improve the ability to prevent cancer and detect it at an early stage. This notice provides the public with information on participation and application requirements for the challenge, including the judging criteria, submission requirements, and rules of eligibility.

The United States Patent and Trademark Office (USPTO) is hosting its third annual Cooperative Patent Classification (CPC) meeting with industry users at its Alexandria Campus. CPC is a bilateral classification system jointly developed by the USPTO and the European Patent Office (EPO). CPC is jointly managed and maintained by both offices, and is available for public search for classification. The upcoming meeting is open to the public and will inform attendees on the latest and upcoming developments concerning the CPC. The meeting also will be an opportunity for attendees to share their views about the CPC.

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 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)).

In 2006, the United States Patent and Trademark Office (USPTO or Office) introduced the accelerated examination program to permit an application to be advanced out of turn if the applicant files a grantable petition under the program. Since its institution, the patent landscape has witnessed numerous legal changes such as the America Invents Act (AIA), the Patent Law Treaties Implementation Act (PLTIA) implementing the provisions of the Patent Law Treaty (PLT), and the USPTO's adoption of the Cooperative Patent Classification system (CPC) along with changes to USPTO systems. Accordingly, the Office is updating the accelerated examination program to reflect these changes in the law and examination practice.

The United States Patent and Trademark Office (USPTO) implemented a Collaborative Search Pilot Program with the Japan Patent Office (JPO) on August 1, 2015, to study whether the exchange of search results between offices for corresponding counterpart applications improves patent quality and facilitates the examination of patent applications in both offices. Based upon feedback from the public, the USPTO is modifying the Collaborative Search Pilot Program between JPO and USPTO (JPO-CSP) by removing the requirement that the applications must be published in order to participate in the pilot program. The JPO and USPTO have determined that publication of the applications is unnecessary for participation in the pilot program and that unpublished applications can participate in the pilot program as long as applicants grant access to the unpublished application and provide a translated copy of the currently pending claims from the corresponding counterpart application(s). Accordingly, publication of an application will no longer be a prerequisite for participation in the JPO-CSP as of the effective date of this notice. Instead, if unpublished, applicant must provide an authorization of access to the unpublished application and submit a translation of the currently pending claims from the corresponding counterpart application(s). These modifications should permit more applications to qualify for the program, supporting the program's study of the efficacy of exchanging search results between corresponding counterpart applications to improve patent quality and facilitate examination.

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 continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

The United States Patent and Trademark Office (``Office'' or ``USPTO'') is issuing a final rule to comply with a Public Law enacted on December 16, 2014. This law requires the USPTO Director to establish regulations and procedures for application to, and participation in, the USPTO Law School Clinic Certification Program. The program allows students enrolled in a participating law school's clinic to practice patent and trademark law before the USPTO under the direct supervision of an approved faculty clinic supervisor by drafting, filing, and prosecuting patent or trademark applications, or both, on a pro bono basis for clients who qualify for assistance from the law school's clinic.

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register on April 1, 2016, revising the rules related to trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (``AIA'') providing for trials before the Office. This document corrects an error in that final rule.

The United States Patent and Trademark Office (``USPTO'' or ``Office'') proposes to amend the Trademark Rules of Practice (``Trademark Rules'' or ``Rules''), in particular the rules pertinent to practice before the Trademark Trial and Appeal Board (``Board''), to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings. Certain amendments are being proposed to reduce the burden on the parties, to conform the rules to current practice, to update references that have changed, to reflect technologic changes, and to ensure the usage of standard, current terminology. The proposed rules will also further strategic objectives of the Office to increase the end-to-end electronic processing.

The United States Patent and Trademark Office (USPTO) is requesting information from its stakeholders regarding issues to be discussed in upcoming World Intellectual Property Organization (WIPO) meetings related to intellectual property, genetic resources, and associated traditional knowledge.