Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Current examples of this sharing include the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO). In support of electronic file sharing, the United States Patent and Trademark Office (Office) is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the Office to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office. Currently, for unpublished U.S. patent applications, applicants follow one regulatory provision to provide the Office with authorization for a foreign IP office to access an application-as-filed via a PDX program and follow another regulatory provision to provide the Office with authorization to share the file contents with a foreign IP office. The proposed changes to the rules will consolidate the specific provisions of the regulations by which applicants give the Office authority to provide a foreign IP office with access to an application in order to satisfy a requirement for information of the foreign IP office. Additionally, along with changes to the application data sheet (ADS) form, the proposed rule changes will simplify the process for how applicants provide the Office with the required authorization, thereby reducing the resources applicants must expend to comply with these foreign IP office requirements, and enhance the quality of patent examination.

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 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 by 2014, so that 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. Through this Notice, the USPTO is requesting nominations for up to three (3) members of the Patent Public Advisory Committee, and for up to three (3) members of the Trademark Public Advisory Committee for terms of three years that begin on December 1, 2014.

The United States Patent and Trademark Office (Office) is hosting a forum to receive public feedback from organizations and individuals on its guidance memorandum titled, ``Guidance For Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, and Natural Products (Laws of Nature/Natural Products Guidance),'' issued on March 4, 2014 and available at www.uspto.gov/patents/announce/myriad-mayo.jsp. The Laws of Nature/Natural Products Guidance implemented a new procedure to address changes in the law relating to subject matter eligibility under 35 U.S.C. 101 in view of recent Supreme Court precedent. The forum will be open for any member of the public to participate. The forum will provide an opportunity for participants to present their interpretation of the impact of Supreme Court precedent on the complex legal and technical issues involved in subject matter eligibility analyses during patent examination. Participants who believe that the Supreme Court decisions could be implemented in an alternative manner from the approach taken in the Laws of Nature/Natural Products Guidance should use the forum to present their alternative approach and the legal rationale for the alternative. The forum also can be used by participants to suggest additional examples for use by the Office to create a more complete picture of the impact of Supreme Court precedent on subject matter eligibility.

The United States Patent and Trademark Office (USPTO), as part of its continuing efforts to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on this 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 the Department of Commerce's Internet Policy Task Force (Task Force) Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy (Green Paper), released on July 31, 2013, the Task Force stated its intention to establish a multistakeholder forum aimed at improving the operation of the notice and takedown system for removing infringing content from the Internet under the Digital Millennium Copyright Act (DMCA). In accordance with its previous recommendations and announcements, the Task Force will launch the multistakeholder forum with an initial meeting on March 20, 2014.

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'' or ``Office'') published a notice of proposed rulemaking to change the rules of practice to implement Title I of the Patent Law Treaties Implementation Act of 2012 (``PLTIA''). Title I of the PLTIA amends the patent laws to implement the provisions of the 1999 Geneva Act of the Hague Agreement and is to take effect on the entry in force of the Hague Agreement with respect to the United States. On January 14, 2014, the Office conducted a public forum at the Alexandria, Virginia headquarters to discuss the proposed rules. The USPTO is extending the comment period in order to provide interested members of the public with additional time to submit written comments to the USPTO.

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 twelve- 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. The USPTO is extending the Extended Missing Parts Pilot Program until December 31, 2014, to better gauge whether the Extended Missing Parts Program offers sufficient benefits to the patent community for it to be made permanent.

The United States Patent and Trademark Office (USPTO), as part of its continuing efforts to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on this 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)).

In accordance with the Paperwork Reduction Act (PRA), the United States Patent and Trademark Office (USPTO) published a notice inviting written public comment on the renewal of information collection 0651- 0032, Initial Patent Applications. The USPTO plans to conduct a roundtable to obtain additional public input regarding the burden associated with the Initial Patent Applications collection and ways to potentially reduce it. By providing this additional opportunity for public input, the USPTO hopes to increase the level of stakeholder participation in this information collection renewal. The roundtable will be open for any member of the public to provide input.

The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. This final rule revises the rules of practice for consistency with the changes in the PLT and title II of the PLTIA. The United States Patent and Trademark Office (Office) is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking. The notable changes in the PLT and title II of the PLTIA pertain to: The filing date requirements for a patent application; the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve- month period (six-month period for design applications) for filing such a subsequent application. This final rule also revises the patent term adjustment provisions to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application, and contains miscellaneous changes pertaining to the supplemental examination, inventor's oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA).

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).

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 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.

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.

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.

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.

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.

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.

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.

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.

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.

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.