Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

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Performance Review Board
Document Number: 2013-23606
Type: Notice
Date: 2013-09-27
Agency: Department of Commerce, 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 (PRB).
Trademark Public Advisory Committee
Document Number: 2013-19495
Type: Notice
Date: 2013-08-13
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''), Pubic 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 America Invents Act Technical Corrections Act made several amendments to the 1999 Act, including the requirement that the terms of the USPTO Public Advisory Committee members be realigned so that by 2014, December 1 be used as the start and end date, with terms staggered so that each year three existing terms expire and three new terms begin on December 1. Public Law 112-274, Sec. 1(l)(2) (January 14, 2013). Through this Notice, the USPTO is requesting nominations for up to three (3) members of the Trademark Public Advisory Committee for terms of approximately three years that begin on December 6, 2013. There are no vacancies expected on the Patent Public Advisory Committee for December 2013. Accordingly, no nominations are being sought for the Patent Public Advisory Committee at this time.
Patent Term Extension
Document Number: 2013-12620
Type: Notice
Date: 2013-05-28
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)).
Submission for OMB Review; Comment Request
Document Number: 2013-12135
Type: Notice
Date: 2013-05-22
Agency: Department of Commerce, Patent and Trademark Office
Submission for OMB Review; Comment Request
Document Number: 2013-09649
Type: Notice
Date: 2013-04-24
Agency: Department of Commerce, Patent and Trademark Office
Secrecy and License To Export
Document Number: 2013-09522
Type: Notice
Date: 2013-04-23
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)).
Changes to Representation of Others Before The United States Patent and Trademark Office
Document Number: 2013-07382
Type: Rule
Date: 2013-04-03
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association's (ABA) Model Rules of Professional Conduct (ABA Model Rules), which were published in 1983, substantially revised in 2003 and updated through 2012. The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings. These changes will enable the Office to better protect the public while also providing practitioners with substantially uniform disciplinary rules across multiple jurisdictions.
Privacy Act of 1974; System of Records
Document Number: 2013-07390
Type: Notice
Date: 2013-04-01
Agency: Department of Commerce, Patent and Trademark Office
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 currently listed under ``COMMERCE/ PAT-TM-11 Patent Examiner Testimony Files.'' This action is being taken to update the Privacy Act notice. We invite the public to comment on the amendments noted in this publication.
Changes To Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review
Document Number: 2013-06768
Type: Rule
Date: 2013-03-25
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the changes with respect to inter partes review that are set forth in section 1(d) of the Act to correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code (``AIA Technical Corrections Act''). Consistent with the statutory changes, this final rule eliminates the nine-month ``dead zone'' for filing an inter partes review petition challenging a first-to-invent patent or reissue patent. Under the final rule, a petitioner may file an inter partes review petition challenging a first-to-invent patent or reissue patent upon issuance, including during the first nine months after issuance.
Privacy Act of 1974; System of Records
Document Number: 2013-06262
Type: Notice
Date: 2013-03-19
Agency: Department of Commerce, Patent and Trademark Office
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 currently listed under ``COMMERCE/ PAT-TM-14 Users of Public Facilities of the Patent and Trademark 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.
Privacy Act of 1974; System of Records
Document Number: 2013-06254
Type: Notice
Date: 2013-03-19
Agency: Department of Commerce, Patent and Trademark Office
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 currently 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.
Extension of Comment Period for Request for Comments on a Patent Small Claims Proceeding in the United States
Document Number: 2013-05162
Type: Notice
Date: 2013-03-06
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') is extending until April 30, 2013, the period for public comment regarding a patent small claims proceeding. The USPTO is extending the public comment period to ensure stakeholders have adequate time to submit complete responses.
Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act
Document Number: 2013-03450
Type: Rule
Date: 2013-02-14
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is publishing examination guidelines concerning the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the patent laws pertaining to the conditions of patentability to convert the U.S. patent system from a ``first to invent'' system to a ``first inventor to file'' system, treats patents and patent application publications as prior art as of their earliest effective U.S., foreign, or international filing date, eliminates the requirement that a prior public use or sale activity be ``in this country'' to be a prior art activity, and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The changes to the conditions of patentability in the AIA result in greater transparency, objectivity, predictability, and simplicity in patentability determinations. The Office is providing these examination guidelines to Office personnel, and notifying the public of these guidelines, to assist in the implementation of the first inventor to file provisions of the AIA. These examination guidelines also clarify, in response to the public comment, that there is no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure (e.g., inventor discloses his invention at a trade show and the intervening disclosure is in a peer-reviewed journal). Additionally, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply. These guidelines also clarify that the exception applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor.
Patent Cooperation Treaty
Document Number: 2013-02263
Type: Notice
Date: 2013-02-04
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)).
Submission for OMB Review; Comment Request
Document Number: 2013-01736
Type: Notice
Date: 2013-01-29
Agency: Department of Commerce, Patent and Trademark Office
Setting and Adjusting Patent Fees
Document Number: 2013-00819
Type: Rule
Date: 2013-01-18
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) sets or adjusts patent fees in this rulemaking as authorized by the Leahy-Smith America Invents Act (Act or AIA). The fees will provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations, while helping the Office implement a sustainable funding model, reduce the current patent application backlog, decrease patent application pendency, improve patent quality, and upgrade the Office's patent business information technology (IT) capability and infrastructure. The fees also will further key policy considerations. The Office also reduces fees for micro entities under section 10(b) of the Act by 75 percent in this rulemaking and extends the existing fee discount of 50 percent for small entities to additional fees in this rulemaking.
Changes To Implement Micro Entity Status for Paying Patent Fees
Document Number: 2012-30674
Type: Rule
Date: 2012-12-19
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 the micro entity provision of the Leahy-Smith America Invents Act (AIA). Certain patent fees set or adjusted under the fee setting authority in the AIA will be reduced by seventy-five percent for micro entities. The Office is revising the rules of practice to set out the procedures pertaining to claiming micro entity status, paying patent fees as a micro entity, notification of loss of micro entity status, and correction of payments of patent fees paid erroneously in the micro entity amount. In a separate rulemaking, the Office is in the process of proposing to set or adjust patent fees under the Leahy-Smith America Invents Act, including setting fees for micro entities with a seventy-five percent reduction. The Office has sought to address the concerns of its stakeholders as expressed in the public comment, and plans to seek additional public comment on the micro entity provisions after the Office and the public have gained experience with the micro entity procedures in operation. The Office will pursue further improvements to the micro entity procedures in light of the public comment and its experience with the micro entity procedures.
Grace Period Study
Document Number: 2012-29637
Type: Notice
Date: 2012-12-10
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 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)).
Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term
Document Number: 2012-28333
Type: Proposed Rule
Date: 2012-11-26
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is considering promulgating regulations that would require greater public transparency concerning the ownership of patent applications and patents by requiring the provision of real-party-in-interest information during patent prosecution and at certain times post- issuance. As part of this initiative, the USPTO is conducting a roundtable to obtain public input from organizations and individuals on how the USPTO could change its rules of practice to collect and provide such ownership information and make it publicly available. The USPTO plans to invite a number of roundtable participants from among patent user groups, practitioners, industry, independent inventor organizations, academia, and government. The roundtable also is open for any member of the public to provide input.
Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures
Document Number: 2012-26471
Type: Notice
Date: 2012-10-29
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)).
Extension of Comment Period for Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications
Document Number: 2012-23135
Type: Notice
Date: 2012-09-19
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'' or ``Office'') is extending until October 22, 2012, the period for public comment regarding possible adjustments to trademark application filing fees. The USPTO is considering such adjustments so as to promote efficiency for the USPTO and customers by incentivizing complete electronic communication.
Changes To Implement Derivation Proceedings
Document Number: 2012-22204
Type: Rule
Date: 2012-09-11
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (AIA) that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the AIA will take effect on March 16, 2013, eighteen months after the date of enactment, and apply to applications for patent, and any patent issuing thereon, that are subject to first-inventor-to-file provisions of the AIA.
CPI Adjustment of Patent Fees for Fiscal Year 2013
Document Number: 2012-21974
Type: Rule
Date: 2012-09-05
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) is adjusting certain patent fee amounts for fiscal year 2013 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 as reflected by the CPI.
Revision of Patent Term Adjustment Provisions Relating to Appellate Review
Document Number: 2012-20238
Type: Rule
Date: 2012-08-16
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 to better reflect the period of appellate review. The patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) provide for patent term adjustment if, inter alia, the issuance of the patent was delayed due to appellate review by the Board of Patent Appeals and Interferences (Board) or by a Federal court, and the patent was issued under a decision in the review reversing an adverse determination of patentability. The Office is specifically revising the rules of practice to indicate that the period of appellate review under the patent term adjustment provisions of the AIPA begins when jurisdiction over the application passes to the Board rather than the date on which a notice of appeal to the Board is filed.
Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications
Document Number: 2012-20127
Type: Notice
Date: 2012-08-16
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'' or ``Office'') is considering adjusting trademark application filing fees so as to promote efficiency for the USPTO and customers by incentivizing complete electronic communication. The USPTO invites the public to submit comments regarding such possible adjustments.
International Trademark Classification Changes
Document Number: 2012-19568
Type: Rule
Date: 2012-08-09
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') issues a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (``Nice Agreement''). These changes became effective January 1, 2012, and are listed in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed., 2011), which is published by the World Intellectual Property Organization (``WIPO''). In addition, the USPTO is amending some punctuation and grammar to conform to what appears in the Nice Agreement.
Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act
Document Number: 2012-18121
Type: Proposed Rule
Date: 2012-07-26
Agency: Department of Commerce, Patent and Trademark Office
The Leahy-Smith America Invents Act (AIA) amends the patent laws pertaining to the conditions of patentability to convert the United States patent system from a ``first to invent'' system to a ``first inventor to file'' system; treats United States patents and United States patent application publications as prior art as of their earliest effective United States, foreign, or international filing date; eliminates the requirement that a prior public use or sale be ``in this country'' to be a prior art activity; and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The AIA also repeals the provisions pertaining to statutory invention registrations. The current rules of practice in patent cases have a number of provisions based on the conditions of patentability of a ``first to invent'' patent system. The United States Patent and Trademark Office (Office) is proposing to amend the rules of practice in patent cases to implement the changes to the conditions of patentability in the AIA, and to eliminate the provisions pertaining to statutory invention registrations.
Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act
Document Number: 2012-17898
Type: Proposed Rule
Date: 2012-07-26
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is publishing proposed examination guidelines concerning the first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the patent laws pertaining to the conditions of patentability to convert the United States patent system from a ``first to invent'' system to a ``first inventor to file'' system, treats United States patents and United States patent application publications as prior art as of their earliest effective United States, foreign, or international filing date, eliminates the requirement that a prior public use or sale activity be ``in this country'' to be a prior art activity, and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The changes to the conditions of patentability in the AIA result in greater transparency, objectivity, predictability, and simplicity in patentability determinations. These guidelines will assist Office personnel in, and inform the public of how the Office is, implementing the FITF provisions of the AIA. The Office is concurrently proposing in a separate action (RIN 0651-AC77) published elsewhere in this issue of the Federal Register to amend the rules of practice in patent cases to implement the FITF provisions of the AIA.
Trademark Board Manual of Procedure, Third Edition, Revision 1
Document Number: 2012-17019
Type: Notice
Date: 2012-07-12
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') issued the third edition, revision 1, of the Trademark Board Manual of Procedure (``TBMP''), and made available an archived copy of the May 6, 2011 third edition, on June 19, 2012.
Submission for OMB Review; Comment Request
Document Number: 2012-17000
Type: Notice
Date: 2012-07-12
Agency: Department of Commerce, Patent and Trademark Office
Extension of the Full First Action Interview Pilot Program and Request for Comments
Document Number: 2012-16596
Type: Notice
Date: 2012-07-09
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is extending the First Action Interview (FAI) Pilot Program while completing a comprehensive review of the program, deciding what, if any, adjustments should be made to the program, and whether the program should be extended further or made permanent. The program is intended to expedite disposition of an application by enhancing communication between an applicant and an examiner at the beginning of the examination process. Specifically, the program allows an applicant to conduct an interview with an examiner prior to the issuance of an Office action, but after receiving the examiner's search results and initially identified issues. During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.
Cooperative Patent Classification External User Day
Document Number: 2012-15447
Type: Notice
Date: 2012-06-25
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is hosting a Cooperative Patent Classification (CPC) External User Day event at its Alexandria Campus. CPC is a partnership between the USPTO and the European Patent Office (EPO) in which the Offices have agreed to develop a joint patent classification system that will incorporate the best classification practices of the two Offices. This CPC event is the next step, in a series of steps, to be undertaken by the USPTO in educating and informing external stakeholders about the current development and future implementation plans of the CPC.
Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases
Document Number: 2012-12178
Type: Rule
Date: 2012-05-22
Agency: Department of Commerce, Patent and Trademark Office
In order to help assess and ensure the accuracy of the trademark register, the United States Patent and Trademark Office (``USPTO'') is revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to allow the USPTO to: Upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark. These revisions aim to ensure the ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration, and thereby reduce costs and burdens on the public.
Trademark Petitions
Document Number: 2012-4085
Type: Notice
Date: 2012-02-22
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)).
Transitional Program for Covered Business Method Patents-Definition of Technological Invention
Document Number: 2012-2538
Type: Proposed Rule
Date: 2012-02-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) proposes a new rule to implement the provision of the Leahy- Smith America Invents Act that requires the Office to issue regulations for determining whether a patent is for a technological invention in a transitional post-grant review proceeding for covered business method patents. The provision of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment. The provision and any regulations issued under the provision will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
Changes To Implement Derivation Proceedings
Document Number: 2012-2535
Type: Proposed Rule
Date: 2012-02-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy- Smith America Invents Act that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on March 16, 2013, eighteen months after the date of enactment, and apply to applications for patent, and any patent issuing thereon, that are subject to first-inventor-to-file provisions of the Leahy-Smith America Invents Act.
Changes to Implement Inter Partes Review Proceedings
Document Number: 2012-2534
Type: Proposed Rule
Date: 2012-02-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy- Smith America Invents Act that create a new inter partes review proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment, and apply to any patent issued before, on, or after the effective date.
Changes To Implement Transitional Program for Covered Business Method Patents
Document Number: 2012-2532
Type: Proposed Rule
Date: 2012-02-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy- Smith America Invents Act that create a new transitional post-grant review proceeding for covered business method patents to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment. These provisions and any regulations issued under these provisions will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
Changes To Implement Post-Grant Review Proceedings
Document Number: 2012-2529
Type: Proposed Rule
Date: 2012-02-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy- Smith America Invents Act that create a new post-grant review proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment, and generally apply to patents issuing from applications subject to first-inventor-to-file provisions of the Leahy-Smith America Invents Act.
Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
Document Number: 2012-2525
Type: Proposed Rule
Date: 2012-02-09
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) proposes new rules of practice to implement the provisions of the Leahy-Smith America Invents Act that provide for trials before the Patent Trial and Appeal Board (Board). The proposed rules would provide a consolidated set of rules relating to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. The proposed rules would also provide a consolidated set of rules to implement the provisions of the Leahy-Smith America Invents Act related to seeking judicial review of Board decisions.
Practice Guide for Proposed Trial Rules
Document Number: 2012-2523
Type: Proposed Rule
Date: 2012-02-09
Agency: Department of Commerce, Patent and Trademark Office
The Leahy-Smith America Invents Act establishes several new trial proceedings to be conducted by the Patent Trial and Appeal Board (Board) including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. The Leahy-Smith America Invents Act also requires the United States Patent and Trademark Office (Office or USPTO) to promulgate rules specific to each proceeding. In separate rulemakings elsewhere in this issue and in the February 10, 2012, issue of the Federal Register, the Office proposes rules relating to Board trial practice for the new proceedings. The Office publishes in this document a practice guide for the proposed trial rules to advise the public on the general framework of the proposed regulations, including the structure and times for taking action in each of the new proceedings.
Humanitarian Awards Pilot Program
Document Number: 2012-3040
Type: Notice
Date: 2012-02-08
Agency: Department of Commerce, Patent and Trademark Office
Request for Comments and Notice of Public Hearings on Genetic Diagnostic Testing
Document Number: 2012-1481
Type: Notice
Date: 2012-01-25
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (``USPTO'') is interested in gathering information on the genetic diagnostic testing for purposes of preparing a report on the subject as required by the America Invents Act (AIA or Act). To assist in gathering this information, the USPTO invites the public to provide comments and to attend public hearings addressing genetic diagnostic testing. Public Hearings: The USPTO will hold two public hearings in support of the genetic testing study. The first public hearing will be held on Thursday, February 16, 2012, beginning at 9 a.m., Eastern Standard Time (EST), and ending at 4 p.m., EST, in Alexandria, Virginia. The second public hearing will be held on Friday, March 9, 2012, beginning at 9 a.m., Pacific Standard Time (PST), and ending at 4 p.m., PST, in San Diego, California. Those wishing to present oral testimony at either hearing must request an opportunity to do so in writing no later than February 8, 2012. Requests to testify should indicate the following: (1) The name of the person wishing to testify; (2) the person's contact information (telephone number and email address); (3) the organization(s) the person represents, if any; (4) an indication of the amount of time needed for the testimony; and (5) a preliminary written copy of the testimony. The USPTO asks for a preliminary written copy of the testimony in order to better prepare for pre-scheduled witness testimony. Requests to testify must be submitted by email to Saurabh Vishnubhakat at saurabh.vishnubhakat@uspto.gov. Based upon the requests received, an agenda for witness testimony will be sent to testifying requesters and posted on the USPTO Internet Web site (address: www.uspto.gov/americainventsact). Speakers providing testimony at the hearings should submit a written copy of their testimony for inclusion in the record of the proceedings no later than March 26, 2012. The public hearings will be available via Web cast. Information about the Web cast will be posted on the USPTO's Internet Web site (address: http://www.uspto.gov/americainventsact) before the public hearing. Transcripts of the hearings will be available on the USPTO Internet Web site (address: www.uspto.gov/americainventsact) shortly after the hearings. Written Comments: Written comments should be sent by email to genetest@uspto.gov. Comments may also be submitted by postal mail addressed to Saurabh Vishnubhakat, Attorney Advisor, Office of Chief Economist, United States Patent and Trademark Office, Mail Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313-1450. Although comments may be submitted by postal mail, the USPTO prefers to receive comments via email. The deadline for receipt of written comments is March 26, 2012. Written comments should be identified in the subject line of the email or postal mailing as ``Genetic Testing Study.'' Because written comments and testimony will be made available for public inspection, information that a respondent does not desire to be made public, such as a phone number, should not be included in the testimony or written comments.
Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees
Document Number: 2012-1480
Type: Proposed Rule
Date: 2012-01-25
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office) is proposing to amend the rules of practice in patent cases to implement the supplemental examination provisions of the Leahy-Smith America Invents Act. The supplemental examination provisions permit a patent owner to request supplemental examination of a patent by the Office to consider, reconsider, or correct information believed to be relevant to the patent. These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation. The Office is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes.
Establishment of a One-Year Retention Period for Trademark-Related Papers That Have Been Scanned Into the Trademark Initial Capture Registration System
Document Number: 2012-1437
Type: Notice
Date: 2012-01-25
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is establishing a one-year retention period that began on September 26, 2011, for papers scanned into the Trademark Initial Capture Registration System (TICRS) prior to September 26, 2011, or began or begins on a paper's submission date, for papers scanned into TICRS on or after September 26, 2011. After the expiration of the one-year retention period, the USPTO will 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. The one-year retention period for papers scanned into TICRS will 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. The USPTO received no comments to the notice published September 23, 2011 on this proposal.
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.