Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

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.

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.

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.

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.

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.

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.

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.

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: https://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.

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.

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.

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.

To provide information on trademark examination policy and procedure, the United States Patent and Trademark Office (``USPTO'') issued the eighth edition of the Trademark Manual of Examining Procedure (``TMEP''), and made available an archived copy of the seventh edition, on October 15, 2011.

The National Medal of Technology and Innovation (NMTI) Nomination Evaluation Committee will meet in closed session on Friday, November 18, 2011. The primary purpose of the meeting is to discuss the relative merits of persons, teams and companies nominated for the 2011 NMTI Medal.

As China has become a major trading partner for the United States, U.S. rights holders are increasingly seeking to protect and enforce their intellectual property (IP) in that country. China's patent and trademark offices are now among the largest in the world in terms of filings, and its IP enforcement system is being increasingly utilized by U.S. rights holders. Ensuring that the Chinese IP system works in a fair and timely manner for U.S. innovators is a top priority for the U.S. Government. To that end, the United States Patent and Trademark Office (USPTO), in collaboration with other U.S. Government agencies, is leading an effort to identify and assess the challenges U.S. inventors are facing with China's judicial and administrative patent enforcement systems. The USPTO would like to address the concerns of rights holders by working with them to identify problemssuch as difficulties in gathering evidence, meeting evidentiary requirements, protecting proprietary information, obtaining adequate damages, and enforcing preliminary injunctionsto then find ways to address these issues with the Chinese Government. As part of this effort, the USPTO, in coordination with the White House Intellectual Property Enforcement Coordinator (IPEC), has conducted a series of roundtables to obtain the views of diverse members of the patent community who have first-hand experience enforcing their patents in China. Roundtables were held on July 19, 2011, in Washington, DC; on July 26, 2011, in Beijing, China; on July 29, 2011, in Shanghai, China; and on August 1, 2011, in Guangzhou, China. Topics for discussion included: (1) Acquisition and enforcement of utility model and design patents; (2) evidence collection and preservation in Chinese courts; (3) obtaining damages and injunctions; (4) enforceability of court orders; and (5) administrative patent enforcement. To ensure that the USPTO receives a wide array of views, the USPTO would like to invite any member of the public to submit written comments on China's patent enforcement system, including, but not limited to, the five specific issues listed above. Examples of first- hand experience using China's patent enforcement system, and recommendations on ways to improve the system, are encouraged. Based on these comments, the USPTO intends to produce a report that details the patent enforcement landscape in China and identifies any challenges faced by U.S. innovators, together with recommendations for improving the system.

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 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)).

The United States Patent and Trademark Office (USPTO) is publishing this notice to advise the public of the availability, on the USPTO's Web site, of the patent fee amounts that will be in effect ten days after the date of enactment of the Leahy-Smith America Invents Act (i.e., September 26, 2011) by operation of the fifteen percent surcharge provided for in section 11(i) and the prioritized examination fee provided for in Section 11(h). The USPTO's Web site also specifies the additional fee for applications not filed by electronic means in effect sixty days after the date of enactment of the Leahy-Smith America Invents Act (i.e., November 15, 2011) by operation of section 10(h). The USPTO's Web site for fee information is https:// www.uspto.gov/about/offices/cfo/finance/fees.jsp.

On April 4, 2011, the United States Patent and Trademark Office (Office) published a final rule that revised the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application upon payment of appropriate fees and compliance with certain requirements (Track I final rule). The prioritized examination procedure is the first track (Track I) of a 3-Track examination process designed to provide applicants with greater control over when their utility and plant applications are examined and to promote greater efficiency in the patent examination process. The Office subsequently published a final rule on April 29, 2011, indicating that the effective date of the Track I final rule was delayed until further notice due to funding limitations. The Leahy-Smith America Invents Act includes provisions for prioritized examination that emulate the requirements of the Office's Track I final rule, with revised fee amounts for prioritized examination (including a small entity discount) and a provision that addresses the funding limitations that required a delay in the implementation of the Track I final rule. This final rule implements the prioritized examination provisions of section 11(h) of the Leahy-Smith America Invents Act.

The United States Patent and Trademark Office (Office) is revising the rules of practice governing inter partes reexamination to implement a transition provision of the Leahy-Smith America Invents Act that changes the standard for granting a request for inter partes reexamination. The Office is also revising the rules governing inter partes reexamination to reflect the termination of inter partes reexamination effective September 16, 2012, which is provided for in the Act. The Leahy-Smith America Invents Act replaces inter partes reexamination by a new inter partes review process effective one year after the date of enactment of the Leahy-Smith America Invents Act (i.e., September 16, 2012), and provides that any request for inter partes reexamination filed on or after September 16, 2011, will not be granted unless the information presented in the request establishes that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. This replaces the prior standard for granting a request for inter partes reexamination that required a substantial new question of patentability (SNQ) affecting any claim of the patent raised by the request. The Leahy-Smith America Invents Act does not revise the SNQ standard for granting an ex parte reexamination request.

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), 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)).

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), 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 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)).

The United States Patent and Trademark Office (``USPTO'') issued the third edition of the Trademark Board Manual of Procedure (``TBMP'') on May 6, 2011.