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

The National Medal of Technology and Innovation (NMTI) Nomination Evaluation Committee will meet in closed session on Wednesday, June 26, 2013. The primary purpose of the meeting is to discuss the relative merits of persons, teams, and companies nominated for the 2012 NMTI.

The United States Patent and Trademark Office (USPTO) has modified the After Final Consideration Pilot Program (AFCP) to create the After Final Consideration Pilot Program 2.0 (AFCP 2.0). Applicants who wish to participate in AFCP 2.0 must file a request to have a response after final rejection (which the examiner may have sufficient basis not to consider under current practice) considered by the examiner without reopening prosecution. The response after final rejection must include an amendment to at least one independent claim. The examiner will be allotted a set amount of time under AFCP 2.0 to consider the response. If the examiner's consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response. There are thus three main differences between AFCP and AFCP 2.0: an applicant must request to participate in AFCP 2.0; a response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim; and the examiner will request an interview with the applicant to discuss a response, if the response did not result in a determination that all pending claims are in condition for allowance. The goal of AFCP 2.0 is to reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. There is no additional fee required to request consideration of an amendment after final rejection under AFCP 2.0, but any necessary existing fee, e.g., the fee for an extension of time, must still be paid.

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)).

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-13 Petitioners for License to File for Foreign Patents.'' This action is being taken to update the Privacy Act notice. We invite the public to comment on the amendments noted in this publication.

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-8 Patent Application Secrecy Order 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.

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-6 Parties Involved in Patent Interference Proceedings.'' This action is being taken to update the Privacy Act notice. We invite the public to comment on the amendments noted in this publication.

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-20 Customer Call Center, Assistance and Satisfaction Survey Records.'' This action is being taken to update the Privacy Act notice. We invite the public to comment on the amendments noted in this publication.

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-2 Complaints, Investigations and Disciplinary Proceedings Relating to Registered Patent Attorneys and Agents.'' 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 (USPTO) published a notice announcing the formation of a partnership with the software community to enhance the quality of software-related patents (Software Partnership), and a request for comments on the preparation of patent applications, seeking input on potential practices for preparing patent applications. The USPTO also conducted two roundtables to obtain public input from organizations and individuals on topics relating to the quality of software-related patents and the preparation of software-related patent applications including: establishing clear boundaries for claims that use functional language; identifying additional topics for future discussion by the Software Partnership; and potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents. The USPTO has received several requests for additional time to submit comments in response to the notice. Accordingly, the USPTO is extending the comment period to provide interested members of the public with additional time to submit comments to the USPTO.

The United States Patent and Trademark Office (Office) published in the Federal Register of February 14, 2013, a final rule revising the rules of practice in patent cases for consistency with, and to address the examination issues raised by, the changes in the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA) (First Inventor to File Final Rule). Due to a technical issue, the First Inventor to File Final Rule as published in the Federal Register is missing text in the provisions pertaining to claims for priority to a foreign application in an application filed under the Patent Cooperation Treaty (PCT). This document corrects the omission in the First Inventor to File Final Rule as published in the Federal Register.

The United States Patent and Trademark Office (USPTO) is seeking stakeholder input on certain matters relating to international harmonization of substantive patent law, in particular, information and views on: (1) The grace period; (2) publication of applications; (3) the treatment of conflicting applications and (4) prior user rights. To assist in gathering this information, the USPTO is holding a public hearing at which interested members of the public are invited to testify on the issues outlined above. In addition, interested members of the public are encouraged to complete an electronic questionnaire relating to the above-identified issues. Separate written comments may be provided through electronic mail, though completion of the questionnaire is strongly preferred in lieu of separate comments. Additional details may be found in the supplementary information section of this notice. Public Hearing: A public hearing will be held on March 21, 2013, beginning at 8:30 a.m. Eastern Daylight Time (EDT) and ending at 12:00 p.m. EDT. The public hearing will be held at the USPTO, Madison Auditorium, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, Virginia 22314. Those wishing to present oral testimony at the hearing must request an opportunity to do so in writing by email to IP.Policy@uspto.gov no later than February 28, 2013. Requests to testify at the hearing must indicate the following information: (1) The name of the person desiring to testify; (2) the person's contact information (telephone number and electronic mail address); (3) the organization(s) the person represents, if any; and (4) a preliminary written copy of their testimony. The opportunity to testify will only be for those physically present. Based on the requests received, an agenda of scheduled testimony will be sent to testifying respondents, and posted on the USPTO Internet Web site (address: https://www.uspto.gov/ ip/global/aia_harmonization.jsp). The number of participants testifying is limited to ensure that all who are speaking will have a meaningful chance to do so. Members of the public who wish solely to observe need not submit a request to attend. Speakers selected to provide testimony at the hearing should provide a final written copy of their testimony for inclusion in the record of the proceedings no later than February 28, 2013. In addition, any member of the public may submit written comments on issues raised at the public hearing or on any issue pertaining to harmonization. However, users are strongly encouraged to fill out the questionnaire before the roundtable event in lieu of providing separate written comments. The questionnaire will also close on February 28, 2013. The USPTO plans to make the public roundtable available via Webcast. Webcast information will be available on the USPTO's Internet Web site (address: https://www.uspto.gov/ip/global/aia_ harmonization.jsp) before the public hearing. Written Comments: Written comments should be sent by email to IP.Policy@uspto.gov. Comments may also be submitted by postal mail addressed to: Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313-1450, ATTN: Bijou Mgbojikwe. Written comments should be identified in the subject line of the email or postal mailing as ``Harmonization Issues.'' Although comments may be submitted by postal mail, the USPTO prefers to receive comments via email. It is also strongly preferred that interested members of the public undertake the questionnaire in lieu of submitting written comments. The questionnaire will be available on the USPTO's Web site (address: https://www.uspto.gov/ip/ global/patents/tegernsee_survey/index.jsp). However, for those wishing to submit supplemental written comments, the deadline for receipt of those written comments for consideration by the USPTO is February 28, 2013. Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments. It should be noted that the tenor of the questions posed in the questionnaire should not be perceived as an indication that the USPTO has taken a position on or is predisposed to any particular views. Availability of Hearing Transcript and Written Comments: A transcript of the events at the hearing and the written comments will be available for public inspection at the USPTO's Office of Policy and External Affairs in the Executive Library located in the Madison West Building, Tenth Floor, 600 Dulany Street, Alexandria, Virginia 22314. Contact: Bijou Mgbojikwe at Bijou.Mgbojikwe@uspto.gov or 571-272-9300. In addition, the hearing transcript and the comments from the public will also be available via the USPTO Internet Web site (address: http:/ /www.uspto.gov). Contact: Bijou Mgbojikwe at Bijou.Mgbojikwe@uspto.gov or 571-272-9300.

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, 2013, 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) is seeking comments as to whether the United States should develop a small claims proceeding for patent enforcement. Among the information of interest to the USPTO is whether there is a need and desire for this type of proceeding, in what circumstances is this proceeding needed if such a need exists, and what features this proceeding should possess. In particular the USPTO seeks information about core characteristics of a patent small claims proceeding including characteristics such as subject matter jurisdiction, venue, case management, appellate review, available remedies, and conformity with the U.S. constitutional framework (e.g. 7th Amendment). Additional details may be found in the supplementary information section of this notice.

The United States Patent and Trademark Office (``USPTO'') is interested in gathering additional information on independent second opinion 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 attend a roundtable focused on genetic diagnostic testing. Public Roundtable: The USPTO will hold a public roundtable in support of the genetic testing study. The roundtable will be held on Thursday, January 10, 2013, beginning at 1:00 p.m. Eastern Standard Time (EST) and ending at 4:00 p.m. (EST) in Alexandria, Virginia. Those wishing to share commentary at the roundtable must request an opportunity to do so in writing no later than December 20, 2012. The request must include the following: (1) The name of the person wishing to share commentary; (2) the person's contact information (telephone number and email address); (3) the organization(s) the person represents, if any; and (4) an indication of the amount of time requested for the commentary. Requests to share commentary must be submitted by email to Saurabh Vishnubhakat at saurabh.vishnubhakat@uspto.gov. Based upon the requests received, an agenda will be sent to all requesters and posted on the USPTO Internet Web site (address: www.uspto.gov/americainventsact). Speakers sharing commentary at the roundtable must submit a document explaining their position for inclusion in the record of the proceedings no later than thirty days after the roundtable. Written commentary should not exceed 25 pages using at least 12-point and double-spaced font. Because written commentary will be made available for public inspection, information that a speaker does not desire to be made public, such as a telephone number, should not be included in the written comments. The public roundtable will be available via Web cast. Information about how to access the Web cast will be posted on the USPTO's Internet Web site (address: https://www.uspto.gov/americainventsact) before the public roundtable. A transcript of the roundtable will be available on the USPTO Internet Web site (address: www.uspto.gov/americainventsact) shortly after the roundtable.

The United States Patent and Trademark Office (Office or USPTO) proposes to align the USPTO's professional responsibility rules with those of most other U.S. jurisdictions by replacing the current Patent and Trademark Office Code of Professional Responsibility, adopted in 1985, based on the 1980 version of the Model Code of Professional Responsibility of the American Bar Association (``ABA''), with new USPTO Rules of Professional Conduct, which are based on the Model Rules of Professional Conduct of the ABA, which were published in 1983, substantially revised in 2003 and updated through 2011. Changes approved by the ABA House of Delegates in August 2012 have not been incorporated in these proposed rules. The Office also proposes to revise the existing procedural rules governing disciplinary investigations and proceedings.

The United States Patent and Trademark Office (USPTO) is implementing a pilot program in which a law school clinic participating in the USPTO Law School Clinic Certification Pilot Program may file an application for a pro bono client of the law school clinic and that applicant's application may be advanced out of turn (accorded special status) for examination. Each school participating in the patent pilot program would be allotted up to two applications to be examined out of turn per semester. The total number of applications to be examined out of turn by law school clinics participating in the USPTO Law School Clinic Certification Pilot Program is limited to sixty-four per year.

The United States Patent and Trademark Office (``USPTO'' or ``Office'') is extending until November 5, 2012, the period for public comment regarding a potential legislative change to amend the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act. The change would require Congress to amend the Trademark Act, and the USPTO is interested in receiving public input on whether and why such an amendment is or is not favored.

The United States Patent and Trademark Office (Office or USPTO) proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act (Act or AIA). The proposed 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 pendency, improve patent quality, and upgrade the Office's patent business information technology (IT) capability and infrastructure. The Office also proposes to reduce fees for micro entities under section 10(b) of the Act (75 percent discount). The proposed fees also will further key policy considerations. For example, the proposal includes multipart and staged fees for requests for continued examination and appeals, both of which aim to increase patent prosecution options for applicants.

In February 2012, the United States Patent and Trademark Office (USPTO) announced the Humanitarian Awards Pilot Program, which recognizes patent holders who use their technology for humanitarian purposes. In response to stakeholder feedback, the USPTO is extending the deadline for applications to the Humanitarian Awards Pilot Program by two months until October 31, 2012, to allow potential applicants more time to complete their applications.

To further ensure the accuracy of the trademark register, the United States Patent and Trademark Office (``USPTO'') is seeking public comment on a potential legislative change to amend the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act from between the fifth and sixth years after the registration date, or the six-month grace period that follows, to between the third and fourth years after the registration date, or the six-month grace period that follows. The change would require Congress to amend the Trademark Act, and the USPTO is interested in receiving public input on whether and why such an amendment is or is not favored.

The Leahy-Smith America Invents Act (AIA) expands the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a Federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. The AIA also provides for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding. The Office is revising the rules of practice to implement these post-patent provisions, as well as other miscellaneous provisions, of the AIA.