United States Patent and Trademark Office 2014 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (``Office'' or ``USPTO'') is amending its regulations to reduce certain trademark fees, as authorized by the Leahy-Smith America Invents Act (``AIA''). The reductions will reduce total trademark fee collections and promote efficiency for the USPTO and customers. The reductions also will further USPTO strategic objectives to increase the end-to-end electronic processing of trademark applications by offering additional electronic application processing.

The United States Patent and Trademark (Office) is revising the rules of practice to change the phrase Express Mail or EXPRESS MAIL[supreg] to Priority Mail Express[supreg] due to the United States Postal Service (USPS) renaming Express Mail[supreg] to Priority Mail Express[supreg] on July 28, 2013, and to make other changes to conform the nomenclature used in the rules of practice to the current nomenclature used by the USPS.

The United States Patent and Trademark Office (USPTO) is seeking input on certain matters relating to the international harmonization of substantive patent law. In view of the importance of harmonization of substantive patent law to the successful reutilization of the examination work of one intellectual property office by another, or work sharing, the USPTO is particularly interested in stakeholder comments on the following key patent examination-related issues: The definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step. To assist in gathering this information, the USPTO is holding a public roundtable which interested members of the public are invited to attend.

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.

The United States Patent and Trademark Office (USPTO) will submit to the Office of Management and Budget (OMB) for clearance the following proposal for collection of information under the provisions of the Paperwork Reduction Act (44 U.S.C. Chapter 35). Title: Patent Petitions Related to Application and Reexamination Processing Fees. Form Number(s): PTO/SB/17P, PTO/SB/23, PTO/SB/24a, PTO/SB/28 (EFS- Web only), and PTO/SB/140 (EFS-Web only). Agency Approval Number: 0651-0059. Type of Request: Revision of a currently approved collection. Burden: 35,596 hours annually. Number of Respondents: 33,119 responses per year. Avg. Hours per Response: The USPTO estimates that it takes the public approximately 5 minutes (0.08 hours) to 12 hours to complete items in this collection, depending on the petition. This includes the time to gather the necessary information, prepare the petitions and petition fee transmittals, and submit them to the USPTO. The USPTO estimates that it takes the same amount of time (and possibly less time) to gather the necessary information, prepare the submission, and submit it electronically as it does to submit the information in paper form. Needs and Uses: The public uses the information in this collection to petition for various actions under 37 CFR 1.17(f), (g), and (h), such as petitioning for a suspension of the rules, requesting access to an assignment record, or requesting the withdrawal of an application from issue either before or after paying the issue fee. In addition, the public uses these petitions to obtain copies of documents that have been submitted in a form other than that provided by the rules of practice, to request accelerated examination, to request abandonment of an application to avoid publication of said application, and to request an extension of time. The public uses the transmittal form to remit the required fees for the various petitions. The USPTO uses the information collected from the petitions and transmittal form to determine whether to grant the various requests and to ensure that the proper fees have been remitted and are processed accordingly. Affected Public: Businesses or other for-profits. Frequency: On occasion. Respondent's Obligation: Required to obtain or retain benefits. OMB Desk Officer: Nicholas A. Fraser, email: Nicholas_A._ Fraser@omb.eop.gov. Once submitted, the request will be publicly available in electronic format through the Information Collection Review page at www.reginfo.gov. Paper copies can be obtained by: Email:InformationCollection@uspto.gov. Include ``0651-0059 copy request'' in the subject line of the message. Mail: Margaret McElrath, Deputy Director, Office of Information Management Services, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. Written comments and recommendations for the proposed information collection should be sent on or before August 28, 2014 to Nicholas A. Fraser, OMB Desk Officer, via email to Nicholas_A._ Fraser@omb.eop.gov, or by fax to 202-395-5167, marked to the attention of Nicholas A. Fraser.

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) is proposing changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Novartis AG v. Lee. The Federal Circuit confirmed in Novartis that any time consumed by continued examination is subtracted in determining the extent to which the period of application pendency exceeds three years, regardless when the continued examination was initiated. The Federal Circuit, however, decided that the time consumed by continued examination does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. The Office is proposing changes to the rules of practice to provide that the time consumed by continued examination does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. The Office also is proposing changes to the rules of practice to provide that the submission of a request for continued examination after a notice of allowance has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application and thus result in a reduction of any period of patent term adjustment.

Section 1(h) 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) revised the patent law provisions pertaining to patent term adjustment. Section 1(h) of the AIA Technical Corrections Act revised the date from which the fourteen- month patent term adjustment period is measured, and clarified the date from which the three-year patent term adjustment period is measured, with respect to international applications filed under the Patent Cooperation Treaty. Under section 1(h) of the AIA Technical Corrections Act, the fourteen-month patent term adjustment period and the three- year patent term adjustment period is measured from the same date: the date on which an application was filed under 35 U.S.C. 111(a) in an application under 35 U.S.C. 111; or the date of commencement of the national stage under 35 U.S.C. 371 in an international application. Section 1(h) of the AIA Technical Corrections Act also revised the provisions for notifying applicants of patent term adjustment determinations and revised the time period for requesting reconsideration and judicial review of the Office's patent term adjustment determinations and decisions. The United States Patent and Trademark Office (Office) published an interim rule on April 1, 2013 (patent term adjustment interim rule), amending the rules of practice to implement the changes to the patent term adjustment provisions in section 1(h) of the AIA Technical Corrections Act. This final rule adopts as final the amendments to the rules of practice originally set forth in the patent term adjustment interim rule. The Office is further providing an optional procedure for requesting a recalculation of patent term adjustment, as an alternative to the petition and fee otherwise required to request reconsideration of a patent term adjustment determination, for patents issued between January 14, 2013 (the date of enactment of the AIA Technical Corrections Act) and May 20, 2014 (patents issued on or after this date will have patent term adjustment determinations consistent with the AIA Technical Corrections Act) that resulted directly from international applications. The Office is providing this optional procedure for requesting a recalculation of patent term adjustment because the Office has experienced a significant delay in modifying the computer program used to calculate patent term adjustment with respect to the changes resulting from the AIA Technical Corrections Act.

The United States Patent and Trademark Office (USPTO or Office) recently concluded a twelve-month pilot program called Patents for Humanity to incentivize the use of patented technologies for humanitarian purposes, culminating with an awards ceremony in April 2013. Following the success of this pilot, the USPTO is continuing Patents for Humanity as an annual awards competition. The USPTO will announce an application period each year of the competition. For 2014, applications will be accepted from April 15 to September 15, 2014. Participants will submit program applications describing what actions they have taken with their patented technology to either address humanitarian needs among an impoverished population or further research by others on humanitarian technologies. Applications will be accepted in five categories: (1) Medicine, (2) Nutrition, (3) Sanitation, (4) Household Energy, and (5) Living Standards. Independent judges will review the program applications, and Federal employees from other agencies will recommend awards based on these reviews. For the 2014 competition, two types of awards will be made: Patents for Humanity Awards and honorable mentions. The Patents for Humanity Award is the top award for applicants best representing the Patents for Humanity principles. Patents for Humanity Award recipients in 2014 will receive a certificate to accelerate select matters before the USPTO and public recognition for their efforts, including an award ceremony sponsored by the USPTO. Honorable mentions in 2014 will receive accelerated examination of one patent application and a featured writeup on the USPTO Web site. A portion of honorable mentions may be awarded for the best up and coming technologies. The USPTO expects to award roughly ten Patents for Humanity Awards and up to twenty honorable mentions in 2014. The exact number of awards may vary depending on the number and quality of program applications received. Types of awards for subsequent years will be announced with the application period in the Federal Register. Patents for Humanity certificates awarded through the 2014 competition can be redeemed to accelerate one of the following matters: An ex parte reexamination proceeding, including one appeal to the Patent Trial and Appeal Board (PTAB) from that proceeding; a patent application, including one appeal to the PTAB from that application; or an appeal to the PTAB of a claim twice rejected in a patent application or reissue application or finally rejected in an ex parte reexamination, without accelerating the underlying matter which generated the appeal. Inter partes reexaminations and interference proceedings are not eligible for acceleration, nor are post-grant reviews, inter partes reviews, covered business method reviews, derivation proceedings, or supplemental examinations. Certificates awarded are not transferable to other parties.

The Chief Financial Officer and Assistant Secretary of Commerce for Administration, with the concurrence of the General Services Administration, renewed the Charter for the National Medal of Technology and Innovation Nomination Evaluation Committee on February 28, 2014.

The United States Patent and Trademark Office (Office) is hosting a roundtable event to solicit public opinions regarding the use of crowdsourcing and third-party preissuance submissions to identify relevant prior art and enhance the quality of examination as well as the quality of issued patents. Members of the public are invited to participate. The roundtable will provide a forum for an informal discussion of the topics identified in this notice. Written comments in response to these topics also are requested.

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 information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

The Leahy-Smith America Invents Act includes provisions for prioritized examination of patent applications (also referred to as ``Track I''), which have been implemented by the United States Patent and Trademark Office (Office) in previous rulemakings. This interim rule simplifies the Track I prioritized examination practice to reduce the number of requests for prioritized examination that must be dismissed. In order to enable rapid processing and examination of those applications, the previous rulemakings provided that an application having a request for Track I prioritized examination requires, upon filing of the application, an inventor's oath or declaration and all required fees, and contains no more than four independent claims, thirty total claims, and no multiple dependent claims. Accordingly, any request for Track I prioritized examination not meeting all of the requirements on filing must be dismissed. The Office has found that many such dismissals are due to the application as filed not including a properly executed inventor's oath or declaration, not including the excess claims fees or application size fee due, or improperly including a multiple dependent claim or claims in excess of the permitted number. The Office has determined that the time periods for meeting those requirements when filing a request for Track I prioritized examination could be expanded while maintaining the Office's ability to timely examine the patent application.

The United States Patent and Trademark Office (Office) published a notice on January 24, 2014, proposing changes to the rules of practice to require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent, and seeking written comments on the proposed changes. This initiative is one of a number of executive actions issued by the Administration that are designed to ensure issuance of the highest-quality patents, enhance competition by providing the public with more complete information about the competitive environment in which innovators operate, improve market efficiency for patent rights by making patent ownership information more readily and easily available, reduce abusive patent litigation by helping the public defend itself against frivolous litigation, and level the playing field for innovators. The Office is conducting two public hearings to discuss these proposed changes. The public hearings are an additional way for the Office to introduce the proposed changes and directly receive feedback from the public. The Office also is extending the period for public comment on the proposed changes until April 24, 2014, to provide interested members of the public with additional time to submit written comments.

The United States Patent and Trademark Office (Office) is hosting a roundtable event to solicit public opinions regarding the written description requirement as applied to design applications in certain limited situations. Members of the public are invited to participate. The roundtable will provide a forum for an informal discussion of the topics identified in this notice. Written comments in response to these topics also are requested.

The United States Patent and Trademark Office (``Office'') proposes to amend the Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks to benefit the public by providing greater clarity as to certain requirements relating to representation before the Office, applications for registration, examination procedures, amendment of applications, publication and post publication procedures, appeals, petitions, post registration practice, correspondence in trademark cases, classification of goods and services, and procedures under the Madrid Protocol. For the most part, the proposed rule changes are intended to codify existing practice.