Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (Office) is revising the rules of practice relating to the filing date requirements for ex parte and inter partes reexamination proceedings for consistency with the provisions of the patent statute governing ex parte and inter partes reexamination proceedings. The Office is specifically revising the rules to require that a request for ex parte reexamination or for inter partes reexamination must meet all the applicable statutory requirements before a filing date is accorded to the request for ex parte reexamination or for inter partes reexamination.

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)).

The United States Patent and Trademark Office (Office) proposes to amend its rules to require plaintiffs in Trademark Trial and Appeal Board (Board) inter partes proceedings to serve on defendants their complaints or claims; to utilize in Board inter partes proceedings a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and to delete the option of making submissions to the Board in CD-ROM form. In addition, certain amendments clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology.

Continued examination practice, including the use of both continuing applications and requests for continued examination, permits applicants to obtain further examination and advance an application to final agency action. This practice allow applicants to craft their claims in light of the examiner's evidence and arguments, which in turn may lead to well-designed claims that give the public notice of precisely what the applicant regards as his or her invention. However, each continued examination filing, whether a continuing application or request for continued examination, requires the United States Patent and Trademark Office (Office) to delay taking up a new application and thus contributes to the backlog of unexamined applications before the Office. In addition, current practice allows an applicant to generate an unlimited string of continued examination filings from an initial application. In such a string of continued examination filings, the exchange between examiners and applicants becomes less beneficial and suffers from diminishing returns as each of the second and subsequent continuing applications or requests for continued examination in a series is filed. Moreover, the possible issuance of multiple patents arising from such a process tends to defeat the public notice function of patent claims in the initial application. The Office is making every effort to become more efficient, to ensure that the patent application process promotes innovation, and to improve the quality of issued patents. With respect to continued examination practice, the Office is proposing to revise the patent rules of practice to better focus the application process. The revised rules would require that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. It is expected that these rules will make the exchange between examiners and applicants more efficient and effective. The revised rules should also improve the quality of issued patents, making them easier to evaluate, enforce, and litigate. Moreover, under the revised rules patents should issue sooner, thus giving the public a clearer understanding of what is patented. The revised rules would also ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application. The changes proposed in this notice will also allow the Office to focus its patent examining resources on new applications instead of multiple continued examination filings that contain amendments or evidence that could have been submitted earlier, and thus allow the Office to reduce the backlog of unexamined applications. This will mean faster and more effective examination for the vast majority of applicants without any additional work on the applicant's part. Additional resources will be devoted to multiple continued examination filings only where necessary. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before May 3, 2006. No public hearing will be held.

The United States Patent and Trademark Office (USPTO) has, in response to recent case law, revised its guidelines to be used by USPTO personnel in their review of patent applications to determine whether the claims in a patent application are directed to patent eligible subject matter. The USPTO is requesting comments from the public regarding these interim examination guidelines. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before June 30, 2006. No public hearing will be held.

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

In accordance with the requirements of the Privacy Act of 1974, as amended, the United States Patent and Trademark Office (USPTO) is amending the system of records listed under ``COMMERCE/PAT-TM-2 Complaints, Investigations and Disciplinary Proceedings Relating to Registered Patent Attorneys and Agents.'' This action is being taken to update the Privacy Act notice. We invite the public to comment on the amendments noted in this publication.

In accordance with the requirements of the Privacy Act of 1974, as amended, the United States Patent and Trademark Office (USPTO) is amending the system of records listed under ``COMMERCE/PAT-TM-1 Attorneys and Agents Registered to Practice Before the Office.'' This action is being taken to update the Privacy Act notice. We invite the public to comment on the amendments noted in this publication.

In conformance with the Civil Service Reform Act of 1978, 5 U.S.C. 4314(c)(4), the United States Patent and Trademark Office announces the appointment of persons to serve as members of its Performance Review Board.

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)).

The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) amends the patent laws to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met: The claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the CREATE Act.

The United States Patent and Trademark Office (Office) is amending its rules to permit an applicant to pay a reduced fee under certain circumstances when the applicant uses the Trademark Electronic Application System (TEAS) to file a trademark or service mark application for registration on the Principal Register under section 1 and/or section 44 of the Trademark Act. The Office will offer a reduced fee to TEAS applicants if the application meets certain filing requirements beyond those required to receive a filing date. The applicant must also file communications regarding the application through TEAS, and agree to receive communications concerning the application by electronic mail (e-mail) during the pendency of the application. TEAS applications that qualify for the reduced fee option will be referred to as ``TEAS Plus'' applications. The reduced fee option will not apply to applications filed pursuant to section 66(a) of the Act, because they cannot be filed through TEAS.

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

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)).

The United States Patent and Trademark Office (USPTO) has established a 21st Century Strategic Plan to transform the USPTO into a quality focused, highly productive, responsive organization supporting a market-driven intellectual property system. As a part of this plan, the USPTO is conducting a study of its restriction practice. As part of this study, the Office requested public comments to help guide the study. After careful consideration of the public comments and an internal review, the USPTO has prepared a ``Green Paper'' describing and evaluating four options to reform restriction practice suggested by various members of the public. Prior to considering the desirability of drafting proposed legislation in a ``White Paper'' on reforming restriction practice, the USPTO is seeking public comment on the Green Paper.

The United States Patent and Trademark Office has issued a certificate under 35 U.S.C. 156(d)(5) for a second one-year interim extension of the term of U.S. Patent No. 4,591,585.

The Uruguay Round Agreements Act (URAA) provided for a transitional procedure for the limited examination after final rejection in certain applications filed before June 8, 1995. The United States Patent and Trademark Office (Office) is changing its final action practice for the Office action immediately following a submission under the URAA transitional limited examination procedure. The Office is changing this final action practice to conform with the intent of the URAA and to facilitate the completion of prosecution of applications to which the URAA transitional limited examination procedure applies.