Notice of Roundtables and Extension of the Period for Comments on Examination Time Goals
The United States Patent and Trademark Office (Office or USPTO) previously announced information for roundtables in Alexandria, Virginia, and Dallas, Texas, to solicit public feedback as part of an effort to reevaluate its examination time goals. Examination time goals vary by technology and represent the average amount of time that a patent examiner is expected to spend examining a patent application in a particular technology. The Office now is providing information on the additional three roundtables that the Office will be conducting in Detroit, Michigan; Denver, Colorado; and San Jose, California. In addition, the Office is extending the written comment period to ensure that all stakeholders have sufficient opportunity to submit comments on the reevaluation of the Office's examination time goals.
Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board
This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board to recognize that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office (USPTO or Office), communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. The rule would apply to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.
Deposit of Biological Materials
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 renewal 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)).
Request for Comments and Notice of Roundtable Event on Leveraging Electronic Resources To Retrieve Information From Applicant's Other Applications and Streamline Patent Issuance
The United States Patent and Trademark Office (USPTO) is continuing its efforts to expedite and improve the overall patent process. Accordingly, the USPTO is exploring how to best utilize available electronic resources to provide examiners with information (e.g., prior art, search reports, etc.) from applicant's other applications as early as possible to increase patent examination quality and efficiency. These other applications, for example, could have the same or substantially the same disclosure (e.g., domestic parent and counterpart foreign applications) as the U.S. application being examined. In addition to improving patent examination quality and efficiency, providing the examiner with this information from applicant's other applications will reduce applicant's burden to provide this information to the USPTO. Further, the USPTO is seeking to reduce the issuance time of a patent by eliminating potentially unnecessary information from the front page of the patent. In particular, the USPTO is seeking public comment on what information, beyond a copy of the specification and drawing that is required by statute, should be part of the patent considering that complete information concerning U.S. patents and U.S. patent application publications are accessible to the public via the Patent Application Information Retrieval (PAIR) system. To assist the USPTO in determining the best way to address these two topics, the USPTO is hosting a roundtable event to obtain public input. The roundtable will be open for any member of the public and will provide a forum for a discussion of the questions identified in this notice. Written comments in response to these questions set forth in this Notice also are requested.
Post-Prosecution Pilot Program
The United States Patent and Trademark Office (Office) is initiating a Post-Prosecution Pilot Program (P3) to test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal. This Pilot Program responds to stakeholder input gathered during public forums held in support of the Enhanced Patent Quality Initiative. Under the P3, a panel of examiners, including the examiner of record, will hold a conference with the applicant to review the applicant's response to the final rejection of record. In order to participate in the P3, the applicant will be required to file a request for consideration under the P3 within two months from the mailing date of a final rejection and prior to filing a notice of appeal, together with a response to the final rejection and a statement that the applicant is willing and available to participate in the conference. The applicant will have the option of including in the response a proposed non-broadening amendment to a claim(s). The Office designed the P3 to increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel decision. The P3 is also designed to reduce the number of appeals and issues to be taken up on appeal to the Patent Trial and Appeal Board (PTAB), and reduce the number of Requests for Continued Examination (RCE), and simplify the after final landscape. This notice identifies requirements and procedures of the P3, which will govern entry into, and practice under, the P3. This notice also solicits public comments on the P3 and other suggestions to improve after final practice and reduce the number of both appeals to the PTAB and RCEs.
Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases
In order to assess and promote the accuracy and integrity of the trademark register, the United States Patent and Trademark Office (USPTO or Office) proposes to amend its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Trademark Act. Specifically, the USPTO proposes to require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part. A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The proposed rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in connection with particular goods/services identified in the registration.
Patent and Trademark Public Advisory Committees
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, 2016.
Grant of Interim Extension of the Term of U.S. Patent No. 5,912,231; LOCILEX® (pexiganan)
The United States Patent and Trademark Office has issued an order granting interim extension under 35 U.S.C. 156(d)(5) for a one- year interim extension of the term of U.S. Patent No. 5,912,231.
Patent Processing (Updating)
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 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)).
May 2016 Subject Matter Eligibility Update
The United States Patent and Trademark Office (USPTO) issued the July 2015 Update: Subject Matter Eligibility (July 2015 Update) to provide further guidance to examiners in determining subject matter eligibility under 35 U.S.C. 101. The USPTO announced the July 2015 Update in the Federal Register, and sought public comment on the July 2015 Update. The USPTO has since issued a memorandum to the Patent Examining Corps titled ``Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection'' in response to those public comments, which is available to the public on the USPTO's Internet Web site. The memorandum seeks to improve examiner correspondence with regard to subject matter eligibility rejections. Further, additional life science examples to assist examiners in making eligibility determinations have been published and are available on the USPTO's Internet Web site. The USPTO is now seeking public comment on subject matter eligibility on an on-going basis.
Intellectual Property Education Outreach Council Survey
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 proposed information collection as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Request for Comments on the Application of the Written Description Requirement to Specific Situations in Design Applications
The United States Patent and Trademark Office (``USPTO'' or ``Office'') is evaluating how the written description requirement applies to certain design applications. In particular, the USPTO has developed a proposed approach for design examiners to apply general principles governing compliance with the written description requirement to specific situations in design applications. The USPTO is seeking public comment on the proposed approach as well as examples that the public believes would be helpful to illustrate the proposed approach or any suggested approach for applying the written description requirement in design applications.
Patent Quality Metrics for Fiscal Year 2017 and Request for Comments on Improving Patent Quality Measurement
The United States Patent and Trademark Office (USPTO) is revising its patent quality metrics to better identify quality-related issues and more clearly communicate its quality measurements to the public. The new patent quality metrics are part of the USPTO's Enhanced Patent Quality Initiative (EPQI), which was launched in 2015 to engage patent stakeholders in enhancing patent quality. As part of the Enhanced Patent Quality Initiative, the prior patent quality metrics have been reassessed, and new patent quality metrics are now being designed for adoption for fiscal year 2017. The new patent quality metrics for use in fiscal year 2017 are planned to focus on the correctness and clarity of Office actions and will be applied through a newly unified review process using a standardized review form that will permit data from a significantly larger number of finished product quality reviews conducted at the agency to be aggregated and mined for information. The USPTO will also mine data on transactions during patent prosecution (e.g., the types of actions taken by the applicant and the USPTO) to assess examination processes and identify potential quality issues requiring further study. The review process will apply the new quality metrics and standardized form to increase the accuracy, consistency, transparency, clarity, and simplicity of USPTO quality review procedures. The USPTO is seeking comment from its stakeholders on further improvements to the changes proposed herein.
Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures
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 proposed and/or continuing information collections, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).