Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (Office) is proposing changes to the rules of practice concerning persons acting with limited recognition in a patent matter, the filing of the English translation of foreign-language provisional applications, and the submission of evidence ownership when an assignee takes action in a patent matter. The Office is proposing changes to the rules of practice to allow a person acting with limited recognition to be given a power of attorney and authorized to sign amendments and other correspondence respecting patent applications, reexamination proceedings, and other proceedings. A person granted limited recognition is not a registered patent attorney or agent. The Office is also proposing changes to the rules of practice to require that a copy of the English translation of a foreign-language provisional application be filed in the provisional application (rather than in either the provisional application or the nonprovisional application) if a non-provisional application claims the benefit of the provisional application. In addition, the Office is proposing changes to require that a copy of documentary evidence of ownership be recorded in the Office's assignment records when an assignee takes action in a patent matter, and that separate copies of a document be submitted to the Office for recording in the Office's assignment records, each accompanied by a cover sheet, if the document to be recorded includes an interest in, or a transaction involving, both patents and trademarks.

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, and requires an additional fee (application size fee) for applications whose specification and drawings exceed 100 sheets of paper, during fiscal years 2005 and 2006. The United States Patent and Trademark Office is in this notice proposing changes in the Office's practice for handling patent applications filed without the appropriate filing, search, and examination fees. The Office has implemented the changes to the patent fees provided in the Consolidated Appropriations Act in a separate rulemaking.

The Consolidated Appropriations Act, 2005 (Consolidated Appropriations Act), revises patent fees in general, and provides for a search fee and examination fee that are separate from the filing fee, during fiscal years 2005 and 2006. This final rule revises the patent fees set forth in the rules of practice to conform them to the patent fees set forth in the Consolidated Appropriations Act.

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.