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United States and Swedish Patent Offices to Cooperate on International Search and Examination Services (17Sep2007)

Posted by Kristen Cichocki at September 24, 2007 09:52 PM

United States and Swedish Patent Offices to Cooperate on International Search and Examination Services (17Sep2007)

PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov or
ruth.nyblod@uspto.gov

United States and Swedish Patent Offices to Cooperate on International Search and Examination Services
Trial project part of USPTO efforts to reduce U.S. national patent application backlogs


 

The Commerce Department’s U.S. Patent and Trademark Office (USPTO) and the Swedish Patent and Registration Office (PRV) announced today that they have begun a pilot project to test the feasibility of the PRV performing search and examination services for the USPTO on international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).

The pilot is part of ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.

Each year, the USPTO receives over 50,000 PCT international applications in addition to over 400,000 national applications. The USPTO is testing whether, by having international applications processed elsewhere, it can dedicate more resources to examining the approximately 750,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.

Under the terms of the pilot project, the PRV will process 50 PCT Chapter I applications covering a range of technologies. The USPTO will review the PRV’s work to ensure that it meets USPTO standards for quality and accuracy.

“We look forward to working with our Swedish colleagues to achieve our mutual goals of expediting review of patent applications while maintaining high quality examination” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “Taking advantage of work completed by another office allows the USPTO to focus more of its resources on decreasing the time it now takes between the filing of an application and a final examiner decision.”

“The PRV is a competent PCT Authority since the start of the PCT system in 1978 and we have a long experience of patent search and examination” said Lars Björklund, acting Director General of the PRV. “We look forward to cooperating with the USPTO and thereby also taking responsibility to support and maintain the functionality of the PCT system.”

The PCT is an international agreement that simplifies the filing of patent applications in its 135 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and the PRV are among the national patent offices authorized to conduct PCT searches and examinations.

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USPTO and United Kingdom Intellectual Property Office to Pilot Patent Prosecution Highway (04Sep2007)

Posted by Kristen Cichocki at September 9, 2007 04:18 PM

USPTO and United Kingdom Intellectual Property Office to Pilot Patent Prosecution Highway  (04Sep2007)

PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov or
ruth.nyblod@uspto.gov

September 4, 2007

USPTO and United Kingdom Intellectual Property Office to Pilot Patent Prosecution Highway
Fast-track examination trial program will enhance quality and efficiency


 

The Commerce Department's U.S. Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UK IPO) today announced that they are now accepting applications for participation in a pilot Patent Prosecution Highway project established between the two offices. The Patent Prosecution Highway will leverage fast-track patent examination in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently. It also will permit each office to benefit from work previously done by the other office, in turn reducing examination workload and improving patent quality.

"Patent offices worldwide must increase the depth and effectiveness of their cooperation. Our collective goal is to reduce duplication of work, speed up processing, and improve quality," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. "This pilot project with the UK IPO builds on our work with the Japan Patent Office, and contributes to a more rational international patent system."

"The Patent Prosecution Highway (PPH) with the U.S. Patent and Trademark Office builds on a similar pilot scheme with the Japan Patent Office which is already showing great promise," said Chief Executive of the UK Intellectual Property Office Ian Fletcher. "The UK Intellectual Property Office has high standards in efficiency and quality as reflected in our ISO 9001:2000 accreditation, and the PPH agreement with the U.S. Patent and Trademark Office will make a contribution to raising these standards further. I am especially pleased that the improved efficiency and quality expected to arise from this PPH agreement is a direct result of the strong relations that exist between the UK Intellectual Property Office and the U.S. Patent and Trademark Office. The PPH helps both offices in their goal of stimulating and rewarding invention and innovation and is a further step towards a global patent prosecution highway network," Fletcher continued.

Under the Patent Prosecution Highway, an applicant receiving a ruling from either the UK IPO or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. Full requirements for participation in the trial program at the USPTO can be found at www.uspto.gov/web/patents/pph/pph_ukipo.html.

The purpose of the trial program is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at the USPTO and the UK IPO. The trial period is set to expire September 4, 2008, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. Both offices will provide notice of any adjustment in the trial period.

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Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the United Kingdom Intellectual Property Office [signed 30 August] [PDF] (04Sep2007)

Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the United Kingdom Intellectual Property Office [signed 30 August] [PDF] (04Sep2007)

 

View comments at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_ukipo.pdf

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Claims and Continuations Final Rules to Publish in Late Summer (25Jul2007)

Posted by Kristen Cichocki at July 28, 2007 04:14 PM

Claims and Continuations Final Rules to Publish in Late Summer  (25Jul2007)

On July 9, 2007, OMB concluded its review of the Continuations and Claims rule changes. The final rules will be made public when they are published in the Federal Register, which is expected to be later this summer. The rules will become effective at least 60 days after publication in the Federal Register, and no earlier than October 1, 2007.

The abstracts of the rules currently available on the Federal Regulatory Information Web site (http://www.reginfo.gov/public/do/eoViewRule?ruleID=273406 and http://www.reginfo.gov/public/do/eoViewRule?ruleID=273407) reflect the abstracts of the Continuations and Claims notices of proposed rule-making that were published in January, 2006.

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Draft KSR Training Guidelines Under OMB Review (20Jul2007)

Draft KSR Training Guidelines Under OMB Review  (20Jul2007)

The USPTO has sent to the Office of Management and Budget (OMB) for review draft final guidance for use by patent examiners in determining if an invention is obvious in view of the U.S. Supreme Court’s decision in KSR v Teleflex.

The USPTO will post the final guidance document on its website after OMB concludes its review. In the interim, the agency will begin training for examiners on implementation of KSR.

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Comments Regarding the International Effort to Harmonize the Substantive Requirements of Patent Laws (11Jul2007)

Posted by Kristen Cichocki at July 17, 2007 10:41 PM

Comments Regarding the International Effort to Harmonize the Substantive Requirements of Patent Laws (11Jul2007)

View comments at the following url:

http://www.uspto.gov/web/offices/dcom/olia/harmonization/index.html

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Addition of Japan Patent Office as Participating Foreign Intellectual Property Office in Electronic Exchange of Priority Documents [signed 10 July 2007] [PDF] (10Jul2007)

Addition of Japan Patent Office as Participating Foreign Intellectual Property Office in Electronic Exchange of Priority Documents [signed 10 July 2007] [PDF] (10Jul2007)

 

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/jpo_pdx.pdf

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Patent Cooperation Treaty Update [signed 28 June 2007] [PDF] (09Jul2007)

Patent Cooperation Treaty Update [signed 28 June 2007] [PDF] (09Jul2007)

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pctfeeupdate07.pdf

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Extension of the Patent Prosecution Highway Pilot Program between the USPTO and the JPO(28Jun2007)

Posted by Kristen Cichocki at July 4, 2007 12:55 PM

Extension of the Patent Prosecution Highway Pilot Program between the USPTO and the JPO(28Jun2007)

 

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pphextension.pdf

 

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USPTO to Test Impact of Public Input on Improving Patent Quality in the Computer Technologies (07Jun2007)

Posted by Kristen Cichocki at June 10, 2007 08:17 PM

 

MEDIA ADVISORY
Contact:
Brigid Quinn or
Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov
June 07, 2007
#07-21

USPTO to Test Impact of Public Input on Improving Patent Quality in the Computer Technologies
Peer Review Pilot is Part of Agency Efforts to Promote Quality as Shared Responsibility

The Department of Commerce's U.S. Patent and Trademark Office (USPTO) today released details of a pilot project that could help expedite and improve the examination process in computer technologies. The Peer Review Pilot will give technical experts in computer technology, for the first time, the opportunity to submit annotated technical references relevant to the claims of a published patent application before an examiner reviews it.

"Studies have shown that when our patent examiners have the best data in front of them, they make the correct decision," said Jon Dudas, director of the USPTO. "Examiners, however, have a limited amount of time to find and properly consider the most relevant information. This is particularly true in the software-related technologies where code is not easily accessible and is often not dated or well documented."

The pilot is a joint initiative with the Community Patent Review Project (CPRP), organized by the New York Law School 's Institute for Information and Policy. The pilot will begin on June 15, 2007 and will run for one year.

Technical experts in the computer arts registering with the CPRP website will review and submit information for up to 250 published patent applications. To ensure a broad cross section of computer technology is reviewed, no more than 15 applications will be allowed from any one person or organization.

Existing law allows USPTO to accept prior art from the public, but it doesn't allow the public to submit any commentary related to the art without the approval of the applicant. Thus, consent will be obtained from all applicants whose applications are volunteered and selected for this pilot.

To expedite review of applications used in the pilot, they will be assigned to an examiner as soon as a submission is received from the CPRP. This will shorten the time it normally takes in the computer arts from filing an application to a final decision. Only one submission from the CPRP of up to 10 annotated references will be accepted for each application in the pilot.

This pilot is just one facet of USPTO's broader efforts to find new ways to get the best information in front of examiners before they make a final decision on a patent application. To ensure a vibrant, modern patent system, USPTO also supports implementation of "applicant quality submissions" which would include search and support documents from applicants.

USPTO supports expanding the ability of third parties to submit to the USPTO information they believe is pertinent to a pending application, a concept included in patent modernization legislation now under consideration in the U.S. Congress. In combination, the peer review pilot, applicant quality submissions and expanded third party submissions encourage a highly participatory examination process that will lead to more efficient and effective review of patent applications.

For more information on the peer review pilot go to < http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/peerreviewpilot.pdf > [PDF]

###

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Pilot Concerning Public Submission of Peer Reviewed Prior Art [signed 04 June 2007] [PDF] (06Jun2007)

Pilot Concerning Public Submission of Peer Reviewed Prior Art [signed 04 June 2007] [PDF] (06Jun2007)

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/peerreviewpilot.pdf

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Simplification of the Electronic Exchange of Priority Documents [signed 04 June 2007] [PDF] (06Jun2007)

Simplification of the Electronic Exchange of Priority Documents [signed 04 June 2007] [PDF] (06Jun2007)

 

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pdxsimplified.pdf

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United States Patent and Trademark Office Notification of Spring 2007 Business Methods Partnership Meeting (08May2007)

Posted by Kristen Cichocki at May 8, 2007 10:28 AM

United States Patent and Trademark Office Notification of Spring 2007 Business Methods Partnership Meeting (08May2007)

As part of the March 2000 business method action plan, the United States Patent and Trademark Office (USPTO) announces the 2007 Business Methods Partnership Meeting to be hosted by the director and managers of the Business Methods workgroup. Members of the public are invited to attend the Partnership Meeting. The Partnership Meeting is an opportunity for an informal discussion on topics such as current interpretations of subject matter eligibility under 35 USC 101, issues surrounding tax strategy patents, classification and application assignment including the class 705 reclassification project, and other topics specific to business methods. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.

DATES AND LOCATION: The Partnership Meeting will be held on Tuesday, June 19, 2007, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM (SOUTH), Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.

Requests for Attendance at the Partnership Meeting: Requests for attendance will be honored on a first-come, first-served basis according to the time and date of receipt of each request. In order to ensure a broad cross-section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms must designate their official representatives. Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting. Non-accepted requesters will also be notified by the USPTO. No one will be permitted to attend without an accepted request.

Requests for attendance at the Partnership Meeting should be submitted to the attention of Jeff Smith via facsimile at (571) 273-6763, or by electronic mail through the Internet to jeff.smith4@uspto.gov. Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Requests must be received by June 5, 2007.

FOR FURTHER INFORMATION, PLEASE CONTACT: Jeff Smith by telephone at (571) 272-6763 (in addition to the facsimile number and e-mail address given above).

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USPTO’s EFS-Web Electronic Patent Filing System Celebrates Successful First Year (02May2007)

Posted by Kristen Cichocki at May 2, 2007 12:13 PM

USPTO's EFS-Web Electronic Patent Filing System Celebrates Successful First Year

Today More than Half of All New Patent Applications Filed Through EFS-Web

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that EFS-Web, its Web-based filing system for patent applications, has exceeded the goals set forth for its first year.   Most notably, for the first time in USPTO’s history, more new patent applications are being filed electronically each week than through the traditional paper application process.   In addition, more than 700,000 applications and related documents have been filed using EFS-Web to date.

These milestones were celebrated today in a ceremony at the USPTO headquarters in Alexandria, Virginia, where Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas also recognized the patent system users and USPTO staff who made EFS-Web’s first year a success.  Special guest speakers included representatives from EFS-Web users Motorola and the law firm of Fish & Richardson, as well as independent inventor Michael Gurin.  (See below for a full list of law firms, corporations and individuals who helped make EFS-Web’s first year a success.)

“EFS-Web has exceeded our expectations for its first year, and is a great step forward in making IP protection easier and more efficient, while improving patent quality,” said Under Secretary Dudas.  “As corporations, law firms and inventors alike discover the many benefits of filing patent applications electronically, we expect the adoption rate to grow dramatically.”

Jonathan Meyer, SVP for Motorola, said, “We have found using EFS-Web has helped us to greatly streamline the patent process, saving us both time and money.  We appreciate that the USPTO sought our input, and the input of other patent filers, as they were creating EFS-Web.  The result is a system that truly meets our needs.”

Rolf Hille, Director of Practice Systems for Fish & Richardson, said, “As we continue to shift toward a paperless operation, the availability of EFS-Web has greatly helped us in accelerating that transition.  In doing so, we are able to be more efficient and accurate in our day-to-day operations and in our efforts to secure patents for our clients.”

Inventor Michael Gurin, President of CogniTek Management Systems, added, “As an independent inventor in the rapidly changing worlds of alternative energy and nanotechnology, I have found that EFS-Web has become an important part of how I do business.  In fact, I’ve filed more than a dozen patent applications using EFS-Web in the last year alone.”

The shift from a paper-based system to an electronic environment offers several  advantages for patent filers.  Patent system users can file applications and related documents virtually anytime and anywhere.  Filers may use their existing software, and may submit documents by simply attaching PDF files.  EFS-Web offers additional practical flexibility to the intellectual property community by allowing staff to file documents prepared and reviewed by patent attorneys.  Filers may also pay filing fees over the Internet.

EFS-Web submissions are automatically processed through the USPTO.  Patent filers receive rapid access to their applications through the Patent Application Information Retrieval (PAIR) system, so they can view their submissions online and confirm that documents have been securely and accurately received.  EFS-Web also offers visual proof that patent applications and documents have been received in the form of an automatic electronic receipt.

Developed with extensive input from the intellectual property community, EFS-Web launched on March 16, 2006, as a simple, safe, and secure way to file patents online.   More than 80 corporations, law firms and independent inventors participated in the EFS-Web pilot program.  Prior to deployment, nearly 200 pilot participants attended EFS-Web onsite and Web-based trainings.

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Electronic Exchange of Priority Documents [signed 23 April 2007]

Posted by Kristen Cichocki at April 25, 2007 09:55 AM

Electronic Exchange of Priority Documents [signed 23 April 2007]

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/eepd.pdf

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Nanotechnology Customer Partnership Meeting May 3, 2007 (09APR2007)

Posted by Kristen Cichocki at April 10, 2007 09:18 AM

Nanotechnology Customer Partnership Meeting May 3, 2007

United States Patent and Trademark Office
Alexandria, Virginia 22313
South Auditorium, Madison Building

This Nanotechnology Customer Partnership initiative is designed and developed to be a forum to share ideas, experiences, and insights between individual users and the USPTO. The USPTO does not intend to use these customer partnership groups to arrive at a group consensus. Individual opinions are sought from varying participants, and the meetings are intended to be informal in nature. These customer partnership groups are formed with full recognition of the USPTO's responsibility under the Federal Advisory Committee Act (FACA), and are not established as FACA compliant committees.

We value our customers and the feedback provided from individual participants is important in our efforts to continuously improve the quality of our products and services. Your willing participation in this informal process is helpful in providing us with new insights and perspectives.

DATE AND LOCATION : This meeting is scheduled for Thursday, May 3, 2007, from 1:00 pm to 5:00 pm, in the South Auditorium, Madison Building, Concourse Level, located at 600 Dulany Street, in Alexandria, Virginia.

Requests for Attendance at the Partnership Meeting

Due to space limitations, please RSVP by e-mail to jill.warden@uspto.gov or by telephone to Jill Warden at (571) 272-1267 to confirm your attendance. If it becomes necessary to restrict the number of attendees, we will do so on a first come-first served basis.

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Interim Procedures For Implementing The April 1, 2007, Changes To The Regulations Under The Patent Cooperation Treaty And Status Of Proposed Fee Changes [signed 30 March 2007]

Posted by Kristen Cichocki at March 31, 2007 09:50 AM

Interim Procedures For Implementing The April 1, 2007, Changes To The Regulations Under The Patent Cooperation Treaty And Status Of Proposed Fee Changes [signed 30 March 2007]

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pct_interim_procedures.pdf

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Examination of Patent Applications Containing Nucleotide Sequences [signed 22 February 2007] (12Mar2007)

Posted by Kristen Cichocki at March 12, 2007 01:51 PM

Examination of Patent Applications Containing Nucleotide Sequences

[signed 22 February 2007] (12Mar2007)

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/sequence02212007.pdf

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United States and Australia to Extend Cooperation on Patent Search and Examination Services (07Feb2007)

Posted by Kristen Cichocki at February 7, 2007 07:00 PM

PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov

United States and Australia to Extend Cooperation on Patent Search and Examination Services

On January 24, 2007, the U.S. Patent and Trademark Office (USPTO) and IP Australia agreed to extend a project under which IP Australia provides search and examination services on international patent applications filed with the USPTO under provisions of the Patent Cooperation Treaty (PCT).

This agreement is a continuation of the project launched between the two offices in 2005, and is scheduled to begin on March 1, 2007 and run 12 months.

Cooperation on PCT search and examination work is part of the USPTO's ongoing efforts to improve examination efficiency and quality, while reducing the growing backlog of U.S. national patent applications waiting to be examined. USPTO found that the quality and accuracy of the work done by IP Australia during phase one warrants extending the project and increasing the number of applications it processes.

In this phase of the project, IP Australia will process up to 1,200 PCT applications over the course of one year, covering a range of technologies. The USPTO will continue to review IP Australia's work to ensure that it meets USPTO standards for quality and accuracy.

"High quality and timely examination of patent applications advances science and technology and creates the certainty innovators need in capital driven markets," noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. "A growing backlog is detrimental to U.S. innovation and the economy. This project builds on the long history of cooperation between the USPTO and IP Australia and gives us the ability to open another front in our battle to reduce our growing backlog."

IP Australia's Director General, Ian Heath explained why IP Australia was pleased to sign up to a new phase of the project, " Participation in this project is a significant opportunity for IP Australia to move closer to its vision of being an office of choice and for enhancing its international reputation. It represents a further step towards achieving the goal of reducing re-work between offices and making mutual exploitation of work a reality for the ultimate benefit of Australian innovators and the IP system as a whole. "

Each year, the USPTO receives about 50,000 international PCT applications in addition to nearly 450,000 national applications. Cooperation with IP Australia will allow the USPTO to dedicate more resources to examining the over 800,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.

The PCT is an international agreement that simplifies the filing of patent applications in its 135 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and IP Australia are among the national patent offices authorized to conduct PCT searches and examinations.

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Federal Circuit Proposes Requiring Digital Briefs

Posted by Stephen M. Nipper at February 2, 2007 04:40 PM

The United States Court of Appeals for the Federal Circuit proposes to amend its rules by adopting Federal Circuit Rules 28(a)(15) and (16), Rule 28(j), Rule 30(k), and Rules 31(b), (e), and (f); and by deleting Federal Circuit Rule 32(e). These rule changes would require the filing of a digital version of every brief and appendix filed by a party represented by counsel, unless counsel certifies that submission of a brief or appendix in digital format is not practical or would constitute hardship…

More information:  http://www.fedcir.gov/rule_28_jan_22_2007.pdf

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USPTO Co-Sponsors Invention Contest
USPTO Publishes Patent Search Templates

Change in Procedure for Handling Nonprovisional Applications Having Omitted Items (30Jan2007)

Posted by Kristen Cichocki at January 30, 2007 10:14 AM

Change in Procedure for Handling Nonprovisional Applications Having Omitted Items

[signed 29 January 2007]

[30 January 2007]

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/omitteditems.pdf

 

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USPTO Announces New Key Member to Management Team (23Jan2007)

Posted by Kristen Cichocki at January 24, 2007 12:38 PM

PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov

January 23, 2007
#07-05

USPTO Announces New Key Member to Management Team
John Love Named Deputy Commissioner for Patent Examination Policy

Under Secretary of Commerce for Intellectual Property Jon W. Dudas has named John J. Love deputy commissioner for patent examination policy for the United States Patent and Trademark Office (USPTO).  Love most recently served as the acting deputy commissioner for patent examination policy.

As deputy commissioner, Love is responsible for changes in patent practice, rules of practice and procedures, examining priorities, and classification of technological arts.  He leads the operations of the Patent Legal Administration, Patent Cooperation Treaty (PCT) Legal Administration, the Office of Petitions, and International Liaison.

"John Love is an important member of USPTO's senior management team," noted Under Secretary Dudas. "With his many years of service and dedication to the patent system, I know he will make major contributions by providing the legal and practical guidance necessary to ensure high-quality, efficient patent examination."

"John's extensive patent practice and policy experience, wealth of legal knowledge, and proven leadership abilities make him an invaluable asset to the patent team. His rapport with the patent examining corps, managers and the public will help us expertly meet the many challenges of the coming years ," said Commissioner for Patents John Doll.

Love joined the USPTO in 1969 and has served the agency in a variety of leadership positions, including director of the technology center with responsibility for examining business method patents and computer related inventions. He was appointed to the Senior Executive Service in 1988.

Love received his undergraduate degree in mechanical engineering from the University of Detroit.  He earned a juris doctor degree from Georgetown University, and is a member of the Virginia State Bar. 

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USPTO Statement on Ceasing Annual Top 10 Patents Holders List (22Jan2007)

USPTO Statement on Ceasing Annual Top 10 Patents Holders List

Beginning this year, the USPTO will no longer release an annual list of top 10 organizations receiving the most U.S. patents. The 2006 data will be available in April in the annual “Patenting by Organizations” report on the agency's web site (www.uspto.gov). This report profiles U.S. patents granted to U.S. and international organizations receiving 40 or more patents each year.

In ceasing publication of the top 10 list, the USPTO is emphasizing quality over quantity by discouraging any perception that we believe more is better.

For the past four years USPTO has focused on the quality of the patents it issues. We are now seeing the results of those efforts. Last year patent quality was the best in over 20 years, and the agency also had the lowest rate of patents approved in more than 30 years.

Over the past four years the USPTO has implemented numerous programs to enhance the quality of patent examination. These include:

•  rigorous in-process and end-process reviews of examiners' work and written certification and recertification examinations to ensure examiners remain up-to-speed on patent law, practice and procedure.

•  increasing the number of “second-pair-of-eyes” reviews of initial decisions to grant patents.

•  implementing eight-month university-style training programs to teach patent examination coursework to new examiners in a collegial and collaborative environment.

•  establishing a unit of patent examiners solely devoted to reexamining patents for which evidence raising a substantial new question of patentability is found after the patent is granted.

•  improving the quality of USPTO work life to attract the best pool of new patent examiners by offering opportunities to work from home.

•  implementing electronic processing of patent applications to make the patent examination process more efficient and effective.

Brigid Quinn
Spokesperson, USPTO
Deputy Director of Public Affairs

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USPTO Begins New Electronic Priority Document Exchange Program (19 January 2007)

Posted by Kristen Cichocki at January 20, 2007 02:51 PM

 USPTO Begins New Electronic Priority Document Exchange Program

(19 January 2007)

On January 16, 2007, the United States Patent and Trademark Office, along with the European Patent Office (EPO), implemented a new service to allow certified copies of patent application priority documents to be exchanged between the two offices electronically. Priority documents have to be filed when applicants wish to claim an earlier application filing date in one patent office based on a prior filing in another. The new service, which is free of charge to applicants, is the result of a 2005 agreement between the USPTO and the European Patent Office. Priority document exchange will get underway between the USPTO and the Japan Patent Office (JPO) later this year. Information on how to use the system can be found below.

Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining the benefit of the first application's filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. Paris Convention filings are a critical component in many applicants' global business and patenting strategies and represent a substantial portion of worldwide patent activity. In order to obtain the benefit of an earlier filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense. The new service allows the USPTO and EPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant.

This electronic exchange of copies of priority documents promotes sharing of information between the intellectual property offices and reduces the administrative costs associated with handling paper copies of priority documents and scanning them into the offices' electronic image record management systems.

Forms (PTO/SB/38 and PTO/SB/39) and instructions are available on the USPTO's Web site: http://www.uspto.gov/web/forms/index.html#patent . Applicants are strongly encouraged to check the Patent Application Information Retrieval (PAIR) system to determine whether the USPTO successfully retrieved the priority document. The applicant will be notified if the retrieval attempt is unsuccessful and that a paper copy of the certified copy of the priority document must be provided before the U.S. application issues as a patent.

For further information, see Federal Register Notice: http://www.uspto.gov/web/offices/com/sol/notices/72fr1664.pdf

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Changes to Implement Priority Document Exchange Between Intellectual Property Offices, Final rule (16 Jan2007)

Posted by Kristen Cichocki at January 17, 2007 11:53 AM

Changes to Implement Priority Document Exchange Between Intellectual Property Offices, Final rule (16 Jan 2007)

[16 January 2007]

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/com/sol/notices/72fr1664.pdf

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Electronic Notification of Outgoing Correspondence (e-Office Action) (19 Dec 2006)

Posted by Kristen Cichocki at December 20, 2006 03:37 PM

Electronic Notification of Outgoing Correspondence (e-Office Action)

[19 December 2006]

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/eofficeaction.pdf

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USPTO Now Accepting Electronic Petitions to Revive Patents Expired for Failure to Pay Maintenance Fees

Posted by Kristen Cichocki at December 18, 2006 02:49 PM

USPTO Now Accepting Electronic Petitions to Revive Patents

Expired for Failure to Pay Maintenance Fees

The USPTO has launched a Web-based e-petition initiative that now permits, under certain circumstances, the electronic filing of petitions to reinstate patents that have expired for unintentional failure to pay the required maintenance fees at 3.5, 7.5, or 11.5 years. This initiative is part of a continuing effort to develop and improve electronic systems for filing and processing patent applications.

The new electronic "Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent" will allow petitioners to pay the delayed maintenance fee and surcharge on their expired patent and have the petition automatically granted by the USPTO. These e-petitions must be filed using EFS-Web. The petition decision is viewable instantly to the e-filer along with the electronic receipt of EFS-Web filing. A copy is stored electronically as part of the Image File Wrapper (IFW). The public may inspect the decision in applications that are currently viewable in the Patent Application Information Retrieval (PAIR) system on the USPTO Web site. If the e-filer meets all the eligibility requirements for using this e-petition, there will be no delay in granting the petition to reinstate a patent.

More information on this new e-petition can be found in "Quick Start Guide for Petitions" [PDF] and in "Instructions" for EFS-web form SB66 [PDF]

For help on filing this new e-petition, please contact the Patent Electronic Business Center at 1-866-217-9197 or by e-mail to ebc@uspto.gov.

Future initiatives for e-petitions include petitions to make an application special based on an inventor's age, and petitions to revive an abandoned application by acceptance of the unintentionally delayed issue fee payment.

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Notice of Clarification of Office Policy To Exercise Discretion in Reexamining Fewer Than All the Patent Claims

Posted by Kristen Cichocki at October 12, 2006 12:58 PM

Notice of Clarification of Office Policy To Exercise Discretion in Reexamining Fewer Than All the Patent Claims [signed 05 October 2006]

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/reex_cls_requested.pdf

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USPTO Requesting More Timely and Useful Information From Patent Applicants

Posted by J Matthew Buchanan at July 11, 2006 01:53 PM




PRESS RELEASE
Contact:
Brigid Quinn
(571) 272-8400 or
brigid.quinn@uspto.gov

July 10 , 2006
#06-41

USPTO Requesting More Timely and Useful Information From Patent Applicants
Proposal Would Improve Patent Quality and May Bring Quicker Decisions


As part of its ongoing efforts to promote investment in innovation and spur economic growth, the Department of Commerce's U.S. Patent and Trademark Office (USPTO) today announced a new proposal that would streamline and improve the patent application review process. The new proposal would encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.


“Clear disclosure upfront by applicants helps examiners more quickly make the correct decision about whether a claimed invention deserves a patent,” noted Jon Dudas, under secretary of commerce for intellectual property. “Clear, forthright disclosure benefits all, because the public – including potential investors - wants to know that a patent application has been thoroughly reviewed, applying the best data available.”


Patent applicants and their attorneys or agents currently have an obligation to inform USPTO's patent examiners of all information known to be material to patentability of the invention claimed by the applicant. Applicants list information for the examiner to consider in a communication called an Information Disclosure Statement (IDS).


The USPTO has observed that applicants sometimes provide information in a way that hinders rather than helps timely, accurate examination. For example, some applicants send a very large number of documents to the examiner, without identifying why they have been submitted, thus tending to obscure the most relevant information. Additionally, some applicants send very long documents without pointing out what part of the document makes it relevant to the claimed invention. Sometimes applicants delay sending key information to the examiner. These practices make it extremely difficult for the patent examiner to find and properly consider the most relevant information in the limited time available for examination of an application.


The USPTO's proposed rule change is designed to encourage early submission of relevant information, and to discourage submission of information that is unimportant or does not add something new for the examiner to consider. With the proposed changes, patent examiners would not have to review documents that do not directly relate to the claimed invention, or that duplicate other information already submitted.


Proposal Specifics


To encourage submission of relevant information to the patent examiner promptly and in a way that brings the most important information to the attention of the examiner, the USPTO is proposing to eliminate all fees associated with submitting an IDS. Under the proposal, applicants in most cases would be permitted to send up to twenty documents without additional explanation, if these documents are provided to the USPTO before the examiner sends a first communication to the applicant.


Were an applicant to submit more than twenty documents, or wait until after the patent examiner's first communication has been sent, the applicant would face increasing requirements to provide more detailed information about the documents and how they relate to the claimed invention. Applicants could be required to point out what part of the document makes it important, to identify specific claims to which a document applies, to clarify how a document adds new information not already considered by the examiner, or explain why the claims are patentable in light of the information provided.


Under the proposal, applicants would still be able to send in as many documents as they choose. However, there would be more stringent requirements for those choosing to submit large numbers of documents or very long documents.


For further information see: http://www.uspto.gov/web/offices/com/sol/notices/71fr38808.pdf .

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Changes To Information Disclosure Statement Requirements and Other Related Matters (10July2006)

Posted by J Matthew Buchanan at July 10, 2006 12:45 PM

View and/or download a copy of this Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr38808.pdf

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U.S. View on Conclusion of WIPO Development Committee Meeting

U.S. View on Conclusion of WIPO Development Committee Meeting

At the most recent session of the Provisional Committee for Consideration of Proposals Relating to a Development Agenda for WIPO (PCDA), the United States firmly supported, along with a majority of WIPO member states, immediate recommendations to adopt almost half of the 111 proposals being considered by that committee. The United States also joined the majority of members in supporting the PCDA Chairman’s (Paraguayan Ambassador Rigoberto Gauto Vielman) suggestion for a text to reflect the emerging consensus in recommendations to the 2006 WIPO General Assembly. This included a list of concrete proposals to immediately move forward and a recommendation that WIPO continue its consideration of the remaining proposals.

Unfortunately, a small number of countries, including Brazil and Argentina, the originators of proposals to establish a “development agenda” in WIPO, blocked the emerging consensus, and called for a suspension of the meeting rather than continue discussions.

Lois Boland, the head of the US delegation, expressed great disappointment. “We had a real chance to do something positive for the vast majority of WIPO members, particularly lesser developed countries, but this was unfortunately unacceptable to the political agenda of a small group of members,” Ms. Boland stated.

In light of the impasse, the issue may be revisited at the 2006 WIPO General Assemblies without a recommendation from the PCDA. The United States will continue to support expanding and improving WIPO’s ongoing development-related work.

Intellectual property rights are the universal currency of today’s dynamic global innovation economy, a critical vehicle for technology transfer, and an indispensable foundation for the growth and development that are the aspiration of all WIPO members.

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Hall of Fame Inventor Forrest Bird to Speak at Independent Inventor Conference

Posted by J Matthew Buchanan at July 2, 2006 01:45 AM

Hall of Fame Inventor Forrest Bird to Speak at Independent Inventor Conference
Space Limited…Register Now

Dr. Forrest Bird, whose invention of the “Baby Bird” respirator has saved the lives of millions of infants over the years, has joined the roster of speakers for the Chicago Regional Inventors Conference on July 28-29. Dr. Bird was inducted into the National Inventors Hall of Fame in 1995.

The Conference is co-sponsored by the United States Patent and Trademark Office (USPTO), Northwestern University School of Law and the National Inventors Hall of Fame. It will be held at the Northwestern School of Law, 375 E. Chicago Avenue.

Other speakers at the event include Commissioner for Patents John Doll and Louis Foreman, CEO of Enventys, a product design and manufacturing firm. Foreman is also executive producer of the upcoming PBS series, “Everyday Edisons.” The series, which features the inventions of 14 independent inventors, will premiere in September.

Various USPTO experts will be on hand to conduct workshops and one on one meetings with attendees. The two days will be packed with vital information for both novice and seasoned inventors. Space is limited so register now. For more details on the conference and to register click here.

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Changes to Practice for Petitions in Patent Applications To Make Special and for Accelerated Examination (26June2006)

Posted by J Matthew Buchanan at June 26, 2006 04:56 PM

View and/or download a .pdf of this Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm

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USPTO To Give Patent Filers Accelerated Review Option

USPTO To Give Patent Filers Accelerated Review Option
Proposal would guarantee final decision in 12 months

The Department of Commerce’s United States Patent and Trademark Office (USPTO) is publishing procedures setting forth requirements for patent applicants who want, within 12 months, a final decision by the examiner on whether their application for a patent will be granted or denied.  To be eligible for “accelerated examination,” applicants who file under this procedure will be required to provide specific information so that review of the application can be completed rapidly and accurately.

 Jon Dudas, under secretary of commerce for intellectual property, explained the proposal by noting that “accelerated examination can provide innovators with the early certainty they may need to attract investors or protect their inventions against infringers.”

Any invention that is new, useful, non-obvious, and which is accompanied by a written description disclosing how to make and use it can be patented.   Applicants’ submissions enjoy a presumption of patentability.  Thus, to reject an application the USPTO is responsible for ensuring that any evidence indicating that the invention is not new or is obvious (known as “prior art”) is identified and explaining why the invention is not patentable in view of the evidence.

Applicants, have a duty to disclose to the USPTO relevant prior art of which they are aware.  However, applicants are not required to search for prior art. Under the USPTO’s accelerated examination procedure, applicants will be required to conduct a search of the prior art, to submit all prior art that is closest to their invention, and explain what the prior art teaches and how their invention is different.
 
In addition to providing and explaining any prior art references, applicants must explicitly state how their invention is useful and must show how the written description supports the claimed invention.  The proposal also limits the number of claims allowed in each application and shortens the time periods for responding to most USPTO communications.

The accelerated examination procedure is designed to give applicants quality patents in less time. In exchange for quick examination, patent examiners will receive more focused and detailed information about the invention and the closest prior art from the applicants.  This increased disclosure upfront by applicants will help examiners more quickly make the correct decision about whether a claimed invention deserves a patent.

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Comments on Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Interim rule (22Jun2006)

Posted by J Matthew Buchanan at June 23, 2006 04:25 PM

As of June 21, 2006, the person listed below has submitted a comment in response to the Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Interim rule, first published in the Federal Register at 71 Fed. Reg. 9260 (February 23, 2006) and then published in the Official Gazette at 1304 Off. Gaz. Pat. Office 95 (March 21, 2006). It is hoped that the public will review this list of comments to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to ac2/comments@uspto.gov, or contact Stephen Marcus by telephone at (571) 272-7743.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

A. Individuals

  1. Cohen, Joseph [PDF]

  >> Some contents linked to on this page require a plug-in for PDF File.

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Listing of US Patent Grant and US Pre-Grant Publication Documents Classified in US Patent Classification 705/36T

Listing of US Patent Grant and US Pre-Grant Publication Documents Classified in US Patent Classification 705/36T

The United States Patent and Trademark Office (USPTO) has created a list of US Patent Grant and US Pre-Grant Publication documents classified in US Patent Classification 705/36T. This is a list of documents that are currently, or soon will be, classified in Class 705 Data Processing: Financial, Business Practice, Management, Cost/Price Determination: 36T: Tax Strategies.

These collections are provided as an interim measure until the documents are added to our regular classification system.

Accessing the Listing:

To access the listing of new US Patent Grant and US Pre-Grant Publication documents, please click on the following link: http://www.uspto.gov/patft/class705_sub36t.html.

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Request for Comments on Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, Request for comments; extension of comment period (14June2006)

Posted by J Matthew Buchanan at June 15, 2006 03:41 PM

View and/or download a copy of this Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr34307.pdf

 

 

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USPTO to Hold Conference on Protecting Your Intellectual Property in China and the Global Marketplace -- Seattle, July 12-13

Posted by J Matthew Buchanan at June 13, 2006 03:46 PM

The United States Patent and Trademark Office is sponsoring a two-day, free program on "China's Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace.” The two day event will be held on July 12-13 at the Grand Hyatt Seattle.

Topics to be covered at the conference include China’s laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China.

Companies of any size, from those contemplating entering the China market to those with an established presence in the country should be particularly interested in attending the conference. In addition,those who simply want to know more about protecting themselves against IP theft from abroad will also find the sessions very helpful.

This program is part of the USPTO’s continuing commitment to increase public awareness of intellectual property rights and the enforcement of these rights in the global marketplace.

The conference is free, but seating is limited.  Register now.

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USPTO to Hold Conference on Intellectual Property in the Global Marketplace in Nashville July 18

 

The United States Patent and Trademark Office will present a one-day conference on intellectual property basics for small and medium size businesses, entrepreneurs, and independent inventors and will provide information on the new realities of intellectual property counterfeiting and piracy in the global marketplace.

The conference will be held Tuesday, July 18 at the Nashville Marriott at Vanderbilt.  The session will run from 8:30am to 5:00pm.

Deputy Under Secretary of Commerce for Intellectual Property Steve Pinkos will deliver opening remarks on Tuesday at 8:30am.

The conference is a component of USPTO’s small business campaign and is a part of the federal government’s Strategy Targeting Organized Piracy (STOP) and the USPTO’s continuing effort to increase public awareness about intellectual property and the enforcement of those rights in the global marketplace.

The conference is free, but seating is limited.  Register now.

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Independent Inventors Conference Set for Chicago July 28-29

Posted by J Matthew Buchanan at June 8, 2006 11:53 AM

Independent Inventors Conference Set for Chicago July 28-29

The United States Patent and Trademark Office (USPTO), Northwestern University School of Law and the National Inventors Hall of Fame will hold a regional Independent Inventors Conference in Chicago on July 28-29. The conference will be held at the School of Law, 375 E. Chicago Ave. Top officials of the USPTO, successful inventors and other experts will be on hand to provide practical advice and information on marketing and intellectual property protection. The conference is designed for both novice and seasoned inventors.

Be watching this space in the coming weeks for details about registration, speakers and topics.

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Changes to Eliminate the Disclosure Document Program (June 2005) (06Jun2006)

As of June 6, 2006, the organizations and persons listed below have submitted comments in response to the proposed rule Changes to Eliminate the Disclosure Document Program, published in the Federal Register at 71 Fed. Reg. 17399 (Apr. 6, 2006), and in the Official Gazette at 1306 Off. Gaz. Pat. Office 22 (May 2, 2006). It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message at ddp.comments@uspto.gov, or contact Robert W. Bahr by telephone at (571) 272-8800.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

A. Intellectual Property and Other Organizations

  1. American Intellectual Property Law Association (AIPLA) [PDF]
  2. United Inventors Association (UIA) [PDF]

B. Individuals

  1. Barron, Rick [PDF]
  2. Boland, J.F. [PDF]
  3. Burkhardt, George [PDF]
  4. Davis, Tonya [PDF]
  5. Eric [PDF]
  6. Field Jr, Thomas [PDF]
  7. Francis, Ray [PDF]
  8. Galoway, Lee [PDF]
  9. Golan, Yvette [PDF]
  10. Guza, David [PDF]
  11. Knapp, Margaret [PDF]
  12. Lewis, David [PDF]
  13. Merrill, Richard [PDF]
  14. Meschter, John [PDF]
  15. Mingus, Jason [PDF]
  16. Prochaska, Brett [PDF]
  17. Randall5977 [PDF]
  18. Shideler, Blynn [PDF]
  19. Slate, William [PDF]
  20. Thomas, Donald [PDF]
  21. Tower, Robert [PDF]
  22. Wahlberg, Stuart [PDF]
  23. White, James [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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USPTO To Conduct Briefing on New Web-Based Filing System for Patent Applications




MEDIA ADVISORY
Contact:
Brigid Quinn
(571) 272-8400 or
brigid.quinn@uspto.gov
Courtney Porter
(202) 535-7800 or
cporter@kearnswest.com

June 6, 2006
#06-36

USPTO To Conduct Briefing on New Web-Based Filing System for Patent Applications


Washington, D.C. – The United States Patent and Trademark office will be hosting an EFS-Web briefing on June 8, 2006. EFS-Web is the USPTO's new electronic patent filing system, which allows users to file patents online safely and securely by attaching files as PDF's.

















WHAT

EFS-Web Media Briefing

WHO

USPTO

WHEN

Thursday, June 8, 2006
2:00p.m. – 2:15p.m. (EST)

HOW

To attend this webinar, you must first register for it. Please click the following link to see more information about and register for this event. Once you have registered for the session, you will receive an email message confirming your registration. This message will provide the information that you need to join the session.


https://websurveyorevents.webex.com/websurveyorevents/onstage/g.php?d=481284068&t=a


###

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Revision of Patent Fees for Fiscal Year 2007 (05June2006)

Posted by J Matthew Buchanan at June 6, 2006 12:48 PM

Revision of Patent Fees for Fiscal Year 2007 (05June2006)

View and/or download a copy of this Notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr32285.pdf

 

For a brief commentary on the legislative posture underlying the PTO's "two option" fee proposal, please see this post on Promote the Progress.

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Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office (signed 22May2006)

Posted by J Matthew Buchanan at May 24, 2006 10:06 AM

View and/or download a .pdf of this notice at the following URL:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf

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Notice of Collection of Practitioners’ E-mail Addresses

Posted by J Matthew Buchanan at May 23, 2006 09:00 AM


Notice of Collection of Practitioners’ E-mail Addresses





The United States Patent and Trademark Office (Office) is undertaking to collect Internet e-mail addresses for each registered patent attorney and patent agent. Gathering these e-mail addresses will facilitate and increase the ability of the Office to communicate with registered practitioners. The Office anticipates implementing automated notifications to registered practitioners of notices and IT system alerts. The Office also anticipates informing and inviting registered practitioners to attend conferences and other events the Office may hold in their areas. Availability of current Internet e-mail addresses will facilitate sending communications to registered practitioners with information of a non-confidential nature.

The e-mail information will be maintained in an electronic database of the roster. To reduce occasions for spam and unwanted electronic communications, the e-mail addresses will not be published, viewable by the public on line, or otherwise made available to the public.


The Office is in the process of implementing 37 CFR § 11.11, under which each “registered practitioner must notify the OED Director of up to three e-mail addresses where he or she receives e-mail.” The Office of Enrollment and Discipline’s database is now capable of storing and associating each practitioner’s name and registration number with up to three e-mail addresses for each practitioner. By this notice, practitioners are being requested to provide up to three e-mail addresses where they can receive communications from the Office.


The collection of e-mail addresses is being implemented using a two-step process. The first step is for a practitioner to send an e-mail addressed to
PractitionerE-mailAddresses@USPTO.GOV with the following information in the following sequence in plain text: the practitioner’s last name, first name and middle name; the practitioner’s registration number; and up to three e-mail addresses for the practitioner. The first e-mail address can be up to 129 characters, the second and third addresses combined can have no more than a total of 125 characters. Semicolons should separate multiple e-mail addresses from each other. The e-mail sending the addresses must be sent from one of the three furnished addresses.


The second step is for the practitioner to send a confirmation letter addressed to Mail Stop OED, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia, 22323-1450. In the confirmation letter, the practitioner confirms over his or her original, personal signature the submission of the e-mail addresses to be used for the practitioner. The confirmation letter must include the same information as in the e-mail, preferably with the e-mail addresses in the same order. Facsimiles are not acceptable. 37 CFR § 1.4(e). Letters from law firms or corporate legal departments may provide confirmation for several registered practitioners, but must be signed by each practitioner. Following receipt of the confirmation letter, the e-mail address will be copied from the received e-mail and pasted into the database. OED will inform the practitioner by e-mail of the receipt of the confirmation letter and the inclusion of the practitioner’s e-mail addresses on the roster.


Practitioners will be responsible for updating OED with each and every change of e-mail addresses. Until further notice, the e-mail addresses must be updated using the forgoing steps.


Plain text is necessary inasmuch as the e-mail addresses will be pasted from the e-mail into the database. Practitioners will be responsible for the correctness of the e-mail addresses submitted to and included in the database. Accordingly, the correctness of the each e-mail address should be checked before it is submitted. Please do not submit e-mail addresses in PDF format or anything other than plain text. Office personnel will not type e-mail address information into the database that is submitted in PDF or other formats. Submission of e-mail addresses in PDF format or other means requiring the address to be typed into a database will not be accepted.


If more than three e-mail addresses are submitted, only the first three e-mail addresses will be used. The e-mail addresses will not be disseminated to the public.


Regarding business, not e-mail, addresses, practitioners should check, and where necessary, update their business address and telephone number on the roster. Practitioners may view the information regarding them that is available on the roster at: http://des.uspto.gov/OEDCI/. Any changes to the information on the roster, must be made by submitting a change of address form that is available at: http://www.uspto.gov/web/offices/dcom/olia/oed/addchangefrm.pdf. Changes of business addresses cannot be accepted by e-mail, but must use the change of address form available at http://www.uspto.gov/web/offices/dcom/olia/oed/addchangefrm.pdf.


Harry I. Moatz
Director of Enrollment and Discipline


May 11, 2006

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Request for Comments on Patents Search Templates (16May2006)

Posted by J Matthew Buchanan at May 17, 2006 09:41 PM

View and/or download a .pdf of this Notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr28309.pdf

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Semi-Finalists Chosen for Modern Marvels Invent Now Challenge

Posted by J Matthew Buchanan at May 12, 2006 09:45 PM

Semi-Finalists Chosen for Modern Marvels Invent Now Challenge
USPTO Co-Sponsoring Event

The History Channel and the National Inventors Hall of Fame Foundation have announced the 25 semi-finalists for the Modern Marvels Invent Now Challenge. All of the semi-finalists will travel to New York the week of May 22 where an exhibition featuring their inventions will be held at Grand Central Station. The top five inventions, including the “Modern Marvel of the Year,” will be featured on the History Channel May 24-27.


The USPTO is a co-sponsor of the challenge. Under Secretary of Commerce Jon Dudas will speak at the awards ceremony and participate in an inventor’s seminar being held in conjunction with the week’s activities.


For more information about the semi-finalists’ inventions and the Modern Marvels Invent Now Challenge, visit inventnow.org.

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National Inventors Hall of Fame Inducts 2006 Class

Posted by J Matthew Buchanan at May 10, 2006 12:52 PM

National Inventors Hall of Fame Inducts 2006 Class
USPTO’s Jon Dudas Joins Celebration

The National Inventors Hall of Fame held its 34th annual induction ceremony last Saturday in Akron, Ohio. Speaking at the ceremony, Under Secretary of Commerce Jon Dudas hailed the new inductees for, “all you have given to the world. In some cases you have saved our lives or the lives of our relatives. Or you have cured our illnesses, improved our ability to enjoy life or helped us to achieve a higher standard of living.” The Under Secretary joined in presenting medals to eight inventors.


This year’s inductees were: Willard Boyle and George Smith for information storage devices that led to the development of the hand-held video camera and is the vital component in digital cameras, scanners and fax machines. Vinton Cerf and Robert Kahn, the “fathers of the Internet”, who designed a system that allows supercomputers and desktop PC’s to share the Internet. Robert Gore, the inventor of a process for producing porous products that are extremely durable and strong. The materials produced by the process are best-known by the GORE-TEX brand name. Ali Javan invented the gas optical maser, which is the most widely used laser and is an important tool in research labs, industry and telecommunications. Robert Langer was inducted for the invention of the technology that allows controlled drug delivery. He is one of the most prolific living inventors and holds over 300 U.S. and foreign patents. Julio Palmaz is the inventor of the first commercially successful intravascular stent. The Palmaz Stent has revolutionized cardiac care and over one million people every year undergo coronary stenting to repair clogged arteries.


The National Inventors Hall of Fame was co-founded by the United States Patent and Trademark Office in 1973. Since that time 313 inventors have been inducted into the Hall of Fame.

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USPTO to hold Briefing on Patent Peer Review Pilot Project

Posted by J Matthew Buchanan at May 9, 2006 09:51 AM

USPTO to hold Briefing on Patent Peer Review Pilot Project
Alexandria, VA - May 12, 2006

The United States Patent and Trademark Office (USPTO) will hold a briefing on May 12, 2006, from 9:00 a.m. to noon in the agency’s Madison building, 600 Dulany Street, Alexandria, VA. The USPTO has created a partnership with academia and the private sector to launch an online, peer review pilot project that seeks to ensure that patent examiners will have improved access to all available prior art during the patent examination process.

As a follow-up to the February 16th meeting, this briefing will focus on further developing previously discussed initiatives as well as answering the question of what constitutes valid prior art and a greater in-depth analysis of the peer review pilot project that is under consideration.

The meeting is open to the public. However, space is limited so please register early. Only the first 220 registrations can be accepted.

>> Additional Information …

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Alexandria Town Hall Meeting Focuses on Improvements to Patent Review Process

Posted by J Matthew Buchanan at April 26, 2006 08:05 AM




PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov
Ruth.nyblod@uspto.gov

April 25, 2006
#06-26

Alexandria Town Hall Meeting Focuses on Improvements to Patent Review Process


Washington, D.C. — The United States Patent and Trademark Office (USPTO) today held a town hall meeting to engage the public and learn their views on USPTO's proposals intended to streamline the application review process. A four-person panel representing a spectrum of organizations with interests in the patent system offered their views on the proposals which are designed to ensure high quality patent examination and work toward decreasing the backlog of pending applications.


Suzanne Michel, Federal Trade Commission; Jay Thomas, Georgetown Law School; Charles Van Horn, American Intellectual Property Law Association; and Herbert C. Wamsley, Intellectual Property Owners Association shared their views on the proposals with a group of over 100 patent attorneys, patent agents, independent inventors and members of the small business community.


“The USPTO clearly has a responsibility to do everything it can to improve America's patent system. That is why we are undertaking this collaborative approach – putting forth quality and efficiency proposals for the patent community to give us feedback,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. “Applicants and the public deserve certainty. This focus on quality of applications and closure of the examination process will provide more certainty. Everyone agrees that better quality input will result in a better quality end product.”


In FY 2004, nearly one-third of the 355,000 new patent applications were resubmitted by applicants hoping to change the agency's decision. Also, over 40 percent of new applications in FY 2004 had more than 20 claims. Thus, the USPTO has published for comment proposed initiatives to restrict rework on old applications and limit the number of claims the USPTO will initially examine for each invention.

The proposed rules can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf. PDF viewer is required for these documents.

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Senator George Voinovich (R-OH) to Keynote USPTO IP Conference

Senator George Voinovich (R-OH) to Keynote USPTO IP Conference
Columbus, OH - May 15-16

The United States Patent and Trademark Office (USPTO) will present a two-day conference on intellectual property basics for small and medium size businesses, entrepreneurs and independent inventors and will provide information on the new realities of intellectual property counterfeiting and piracy in the global marketplace.


The conference will be held May 15-16 at the Hyatt Capital Square in Columbus, Ohio. The sessions run both days from 8:30 a.m. to 5:00 p.m.


Deputy Under Secretary for Intellectual Property Steve Pinkos will deliver opening remarks for the conference on Monday morning. Senator George Voinovich will deliver a keynote address at a luncheon later that day.


The conference is a component of USPTO’s small business campaign and is a part of the federal government’s Strategy Targeting Organized Piracy (STOP) and the USPTO’s continuing effort to increase public awareness about intellectual property and the enforcement of those rights in the global marketplace.


The conference is free, but seating is limited. Register now.

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USPTO to Sponsor Panel Discussion on Proposals to Improve Patent Examination

Posted by J Matthew Buchanan at April 24, 2006 09:13 AM




MEDIA ADVISORY
Contact:
Brigid Quinn or Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov
Ruth.nyblod@uspto.gov

April 21 , 2006
#06-25

USPTO to Sponsor Panel Discussion on Proposals to Improve Patent Examination


Washington, D.C. – The United States Patent and Trademark Office (USPTO) is holding a town hall meeting to educate the public on USPTO's plans to streamline the application review process. A four-person panel representing a variety of organizations with interests in the patent system will offer their views on the proposals which are designed to ensure high quality patent examination and work toward decreasing the backlog of pending applications.

















WHAT Town Hall Meeting
An overview of the challenges the USPTO faces and the reasons why proposed new rules limiting claims and rework are necessary, panel discussion and a question and answer session.
WHO John Doll, Commissioner for Patents
Jay Lucas, Deputy Commissioner for Patent Examination Policy

WHEN

Tuesday, April 25, 2006
2 p.m. – 4 p.m .

WHERE

United States Patent and Trademark Office
Madison auditorium
600 Dulany Street, Alexandria, Va .


For more information, please go to http://www.uspto.gov/web/patents/townhall.htm .


###

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More on the $26 Million consumer redress decision against the Davison & Associates invention promotion operation

Posted by J Matthew Buchanan at April 20, 2006 02:23 PM

Court Halts Bogus Invention Promotion Claims
Orders $26 Million in Redress For Consumers; USPTO’s Director Jon Dudas Praises Court Decision

A U.S. district court judge has ordered an invention promotion operation to pay $26 million in consumer redress and has ordered a permanent halt to the bogus claims the company used to recruit customers. The court also ordered that in future dealings with consumers, the company make specific, detailed disclosures about their track record in helping inventors market their ideas. “This affirmative disclosure statement is needed due to defendants’ blatant, varied, and repeated misrepresentations . . . ” Judge Gary L. Lancaster of the U.S. District Court for the Western District of Pennsylvania wrote in his decision.

“This outfit is typical of invention promotion scams,” said Lydia Parnes, Director of the FTC’s Bureau of Consumer Protection. “They touted their ability to turn inventors’ ideas into profitable products, but fewer than one percent of the customers who invested in their services got royalties from their patents that amounted to more than they paid the promoters.”

In a complaint filed by the FTC as part of “Project Mousetrap,” the agency charged that the company used Internet ads and classified ads to lure inventors across the country to sign up for their services. The agency charged that they made false claims about their selectivity in choosing products to promote, false claims about their track record in turning inventions into profitable products, and false claims about the relationship they had with manufacturers. They deceptively claimed that their income came from sharing royalties with inventors rather than from the $800 to $12,000 fees they charged inventors.

Jon Dudas, Under Secretary of Commerce for Intellectual Property commented, “Judge Lancaster’s decision sends a strong signal to all those invention promotion and licensing firms that prey upon America’s independent inventor community that fraudulent and unscrupulous practices will not be tolerated.”

The agency alleged that the defendants made false and misleading statements that:

• Consumers who bought their invention-promotion services stand a reasonably good chance of realizing financial gain.

• Their invention-promotion services helped many of their customers' invention ideas become profitable products.

• Their invention-promotion services helped specific inventions become profitable products.

• That they have a vast network of corporations with whom they have ongoing relationships and regularly negotiate successful licensing agreements.

• That their invention marketing services are necessary for consumers to license their invention ideas.

• That they prepare objective and expert analyses of the patentability and marketability of consumers' invention ideas.

Judge Lancaster agreed that the company had engaged in deceptive practices, noting that even after he had issued an order barring deceptive claims, “defendants continued to engage in deceptive practices, albeit in slightly different forms. Based on this past pattern of conduct, there is a very real danger that defendants will alter their business again, yet continue to engage in wrongdoing.”

To prevent those practices, he ordered the company and its principals to pay $26 million for consumer redress and to provide any future clients with a 10-point disclosure statement to allow them objectively to measure the value of the defendants’ assistance. He ordered that when they highlight or advertise specific consumer products or ideas in advertising, they disclose whether the inventor earned royalties that exceeded the total amount of fees paid by the consumer to the defendants. If the defendants claim that they have “matched” or “targeted” an invention to a corporation, they must disclose how many submissions they have made to that corporation in the past five years and the number of licenses entered into with the corporation over the past five years. He required them to disclose that the “Pre-Inventegration” and “modeling” services they sold to inventors were not necessary to achieve licensing agreements and that they disclose that they are not providing consumers with objective or expert opinion of marketability or potential commercial success.

The court also established record keeping provisions to allow the FTC to monitor compliance with Judge Lancaster’s order.

Defendants in this case were Davison & Associates Inc., now known as Davison Design and Development, Inc., Manufacturer's Support Services, Inc., George M. Davison, President and CEO, Thomas Dowler, Gordon M. Davison and Barbara Miele-Davison. The defendants are based in Pittsburgh, Pennsylvania, but have operated nationwide.

Copies of the FTC complaint, and the courts Findings of Fact and Conclusion of Law and the Order for Permanent Injunction are available from the FTC's Web site at http://www.ftc.gov and also from the FTC's Consumer Response Center, Room 130, 600 Pennsylvania Avenue, N.W., Washington, D.C. 20580. The FTC works for the consumer to prevent fraudulent, deceptive, and unfair business practices in the marketplace and to provide information to help consumers spot, stop, and avoid them. To file a complaint in English or Spanish (bilingual counselors are available to take complaints), or to get free information on any of 150 consumer topics, call toll-free, 1-877-FTC-HELP (1-877-382-4357), or use the complaint form at http://www.ftc.gov/ftc/complaint.htm. The FTC enters Internet, telemarketing, identity theft, and other fraud-related complaints into Consumer Sentinel, a secure, online database available to thousands of civil and criminal law enforcement agencies in the U.S. and abroad.


MEDIA CONTACT: Claudia Bourne Farrell, Office of Public Affairs | Federal Trade Commission 202-326-2181

STAFF CONTACT: Michael Milgrom, East Central Region | Federal Trade Commission 216-263-3455

FTC CONSUMER CONTACT: 216-263-3434

(19APR2006)

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Court Halts Bogus Invention Promotion Claims, Orders $26 Million in Redress For Consumers; USPTO’s Director Jon Dudas Praises Court Decision

Court Halts Bogus Invention Promotion Claims
Orders $26 Million in Redress For Consumers; USPTO’s Director Jon Dudas Praises Court Decision

A U.S. district court judge has ordered an invention promotion operation to pay $26 million in consumer redress and has ordered a permanent halt to the bogus claims the company used to recruit customers. The court also ordered that in future dealings with consumers, the company make specific, detailed disclosures about their track record in helping inventors market their ideas. “This affirmative disclosure statement is needed due to defendants’ blatant, varied, and repeated misrepresentations . . . ” Judge Gary L. Lancaster of the U.S. District Court for the Western District of Pennsylvania wrote in his decision.


“This outfit is typical of invention promotion scams,” said Lydia Parnes, Director of the FTC’s Bureau of Consumer Protection. “They touted their ability to turn inventors’ ideas into profitable products, but fewer than one percent of the customers who invested in their services got royalties from their patents that amounted to more than they paid the promoters.”


In a complaint filed by the FTC as part of “Project Mousetrap,” the agency charged that the company used Internet ads and classified ads to lure inventors across the country to sign up for their services. The agency charged that they made false claims about their selectivity in choosing products to promote, false claims about their track record in turning inventions into profitable products, and false claims about the relationship they had with manufacturers. They deceptively claimed that their income came from sharing royalties with inventors rather than from the $800 to $12,000 fees they charged inventors.


Jon Dudas, Under Secretary of Commerce for Intellectual Property commented, “Judge Lancaster’s decision sends a strong signal to all those invention promotion and licensing firms that prey upon America’s independent inventor community that fraudulent and unscrupulous practices will not be tolerated.”

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Town Hall Meeting on Patent Claims and Continuation Practice

Town Hall Meeting on Patent Claims and Continuation Practice
Alexandria, VA - April 25

A town hall meeting on the proposed rule changes for claims and continuations will be held April 25 in Alexandria, Virginia. The U.S. Patent and Trademark Office (USPTO) will host the event at the Madison auditorium at the USPTO, (600 Dulaney Street, Alexandria, Va). The meeting will be held from 2pm – 4pm.

Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Jay Lucas, Deputy Commissioner for Patent Examination Policy and James Toupin, the agency’s General Counsel, will provide a brief overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary. A panel of individuals with varying interests in the U.S. patent system has been invited to offer their views on the proposed rule changes. To stimulate the discussion, panel members also will answer questions posed by a USPTO moderator. A question and answer session will follow immediately after the panel presentation and then John Doll, Commissioner for Patents, will give closing remarks.

Registration is free and CLE credit may be available.

The town hall meetings are for patent attorneys, patent agents, independent inventors and members of the small business community, or anyone else interested in patent examination.

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USPTO Seeks Nominees for Public Advisory Committees

Posted by J Matthew Buchanan at April 10, 2006 04:36 PM

USPTO Seeks Nominees for Public Advisory Committees
May 8 Deadline for Submissions

The United States Patent and Trademark Office is seeking qualified individuals to serve on its public advisory committees. Nominations are being requested for three members to each of the committees. Members are appointed by the Secretary of Commerce and serve for three years. Persons wishing to submit nominations should send the nominee's resume to the Chief of Staff, Office of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Post Office Box 1450, Alexandria, Virginia 22313-1450.


Electronic submissions for the patent advisory committee should be sent to PPACnominations@uspto.gov and to TPACnominatons@uspto.gov for the trademark advisory committee. Nominations must be postmarked or electronically transmitted on or before May 8, 2006.


For more information about the advisory committees and the duties and responsibilities of members see Public Advisory Committees.

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Conference on Protecting Your Intellectual Property Rights in China and the Global Marketplace Set for Chicago, Illinois

Conference on Protecting Your Intellectual Property Rights in China and the Global Marketplace Set for Chicago, Illinois
May 4-5

The United States Patent and Trademark Office (USPTO) will sponsor a two-day seminar on "Protecting Your Intellectual Property Rights in China and the Global Marketplace” on Thursday and Friday, May 4-5, 2006, at the Hyatt Regency McCormick Place in Chicago, Illinois.

This free program, which is part of the federal government’s Strategy Targeting Organized Piracy (STOP), will provide comprehensive information on protecting and enforcing intellectual property in China for companies of any size, particularly small- and medium-sized enterprises (SMEs). If your company is thinking about entering the China market, if you already have an established presence in China or if you simply want to learn about how to protect your company against IP theft from abroad, you will want to attend this event.

Topics will include a review of China’s current laws and regulations affecting intellectual property (IP) protection and enforcement; protecting business assets to avoid IP problems from China; recognizing when an IP asset has been infringed; what to do if infringement occurs; and the U.S. government’s efforts to improve the IP protection and enforcement environment in China for U.S. industry.

Speakers at the seminar will include China IP experts, U.S. and/or Chinese government officials, representatives from U.S. and Chinese law firms servicing clients in China, and representatives from various U.S. companies.

The conference is free, but registration is required.

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Conference on Intellectual Property in the Global Marketplace Set for Columbus, Ohio

Conference on Intellectual Property in the Global Marketplace Set for Columbus, Ohio
May 15-16

The United States Patent and Trademark Office (USPTO) will present a two-day conference on intellectual property basics for small and medium size businesses, entrepreneurs and independent inventors and will provide information on the new realities of intellectual property counterfeiting and piracy in the global marketplace.

The conference will be held May 15-16 at the Hyatt Capital Square in Columbus, Ohio. The sessions run both days from 8:30 a.m. to 5:00 p.m.

The conference is a component of USPTO’s small business campaign and is a part of the federal government’s Strategy Targeting Organized Piracy (STOP) and the USPTO’s continuing effort to increase public awareness about intellectual property and the enforcement of those rights in the global marketplace.

The conference is free, but seating is limited. Register now.

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Semiconductor Customer Partnership Meeting

A Semiconductor Customer Partnership meeting will be held on Tuesday April 25, 2006 at the Alexandria headquarters of the United States Patent and Trademark Office (USPTO). Established in June 1999, the Semiconductor Customer Partnership provides a forum for the continued exchange of ideas toward improving the quality and timeliness of the examination process in semiconductor technology. The partnership also provides members of the semiconductor community with an opportunity to learn about recent business process improvements and policy changes that have occurred at the USPTO. Partnership meetings are held biannually in the Washington DC and San Francisco Bay areas.

The partnership meeting is open to anyone interested in the intellectual property issues facing the semiconductor industry. Presenters for this meeting include managers from the Semiconductor work group in Technology Center 2800, which is responsible for examining patent applications filed in Semiconductor Devices, Processing of Semiconductor Devices, Digital Logic Circuits, Solid State Electronic Circuits, Memory Circuits and Devices, Analog Circuits and Devices, and Design and Analysis of Semiconductor circuits and Masks. The semiconductor workgroup is one of the largest in the patent operation with 18 art units and over 300 examiners.

linkThe agenda will include presentations on:

Training Program for New Examiners
State of the Semiconductor Workgroup
State of the Semiconductor Industry
Proposed new rules package
Working with Examiners in the Hoteling Environment
Prosecution issues in the Semiconductor Workgroup
Classification Harmonization with USPTO, EPO and JPO


In addition, there will be sessions devoted to customer presentations and a roundtable discussion in the afternoon.

linkDate and Location:

The Partnership meeting is scheduled for Tuesday, April 25, 2006, from 9:00 AM–4:00 PM in the Jefferson Conference Center at the USPTO headquarters. The Conference center is located at the lobby level of Jefferson Building, 500 Dulany Street, Alexandria, Virginia.

link If you are interested in attending the meeting, please contact Tom Thomas at 571-272-1664 or by e-mail to tom.thomas@uspto.gov.


Note: The Semiconductor Customer Partnership is designed and developed to be a forum to share ideas, experiences, and insights between individual users and the USPTO. The USPTO does not intend to use these customer partnership groups to arrive at any consensus. Invitations to participate will indicate that individual opinions are sought, rather than a group consensus and that the meetings are intended to be informal in nature and have varying participants. These customer partnership groups are formed with full recognition of the USPTO’s responsibility under the Federal Advisory Committee Act (FACA), and that these customer partnership groups are not established as FACA compliant committees.

 
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Changes to Eliminate the Disclosure Document Program, Notice of proposed rule making

You can view and/or download a copy of this notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr17399.pdf

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USPTO Releases List of Top 10 Universities Receiving Most Patents in 2005



PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov

April 06, 2006
#06-24

USPTO Releases List of Top 10 Universities Receiving Most Patents in 2005
University of California leads U.S. academic institutions for 12th consecutive year


The Department of Commerce's United States Patent and Trademark Office (USPTO) today announced the top 10 U.S. universities receiving the most patents during calendar year 2005. Listed below are the universities receiving the most patents for inventions in 2005, along with their 2004 ranking. The University of California tops the list for the 12th consecutive year.


"America's economic strength and global leadership depend on continued technological advances,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. "Groundbreaking discoveries and patented inventions generated by innovative minds at academic institutions have paid enormous dividends, improving the lives and livelihoods of generations of Americans.”


 


PRELIMINARY LIST OF TOP PATENTING U.S. UNIVERSITIES
Calendar Year 2005


This report presents a preliminary list of the U.S. universities receiving the most patents for invention (i.e., utility patents) during the 2005 calendar year.  All campuses are included.

























































































Rank
in 2005*
Number of
Patents in 2005*
U.S. University* Rank
in 2004*
Number of
Patents in 2004*

  1

390

University of California

  (1)

(424)

  2

136

Massachusetts Institute of Technology

  (3)

(132)

  3

101

California Institute of Technology

  (2)

(135)

    4**

  90

Stanford University **

  (6)

  (75)

    **

  90

University of Texas **

  (4)

(101)

  5

  77

University of Wisconsin

  (8)

  (64)

    6**

  71

John Hopkins University **

  (5)

  (94)

     **

  71

University of Michigan **

  (7)

  (67)

  7

  64

University of Florida

(13)

  (41)

  8

  57

Columbia University

(10)

  (52)

    9**

  43

Georgia Institute of Technology **

(19)

  (37)

     **

  43

University of Pennsylvania **

(24)

  (32)

10

  41

Cornell University

(16)

  (40)

* The listed patent counts are preliminary counts that are subject to correction.


** Indicates a tie in the ranking among two or more U.S. universities.



###

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United States Patent and Trademark Office Notification of Spring 2006 Business Methods Partnership Meeting

Posted by J Matthew Buchanan at March 28, 2006 07:55 AM

United States Patent and Trademark Office Notification of Spring 2006 Business Methods Partnership Meeting

As part of the March 2000 business method action plan, the United States Patent and Trademark Office (USPTO) announces the Spring 2006 business methods customer partnership meeting to be hosted by the director and managers of the Business Methods workgroup. Members of the public are invited to attend the partnership meeting. The partnership meeting is an opportunity for an informal discussion on topics such as hoteling, functional/non-functional descriptive material, new 101 guidelines, and other topics specific to business methods. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.

DATES AND LOCATION:

The partnership meeting will be held on Wednesday May 3, 2006,
1:00 P.M.-5:00 P.M.
at the USPTO MADISON AUDITORIUM, Concourse Level,
Madison Building,
600 Dulany Street, Alexandria, VA 22313

Requests for Attendance at the Partnership Meeting

Requests for attendance will be honored on a first-come, first-served basis according to the time and date of receipt of each request. In order to ensure a broad cross- section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms must designate their official representatives. Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting. Non-accepted requesters will also be notified by the USPTO. No one will be permitted to attend without an accepted request.

Requests for attendance at the partnership meeting should be submitted to the attention of Joe Thomas via facsimile at (571) 273-6776, or by electronic mail through the Internet to Joseph Thomas. Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Requests must be received by April 19, 2006.

FOR FURTHER INFORMATION, PLEASE CONTACT: Joe Thomas by telephone at (571) 272-6776 (in addition to the facsimile numbers and e-mail addresses given above).

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Welcome to RSS Mojo

Posted by Stephen M. Nipper at March 27, 2006 10:33 PM

RSS Mojo currently has two components: (1) US Patent and Trademark Office News and (2) IP Lawsuit Filing Updates.

1. US Patent and Trademark Office News

Unlike the Copyright Office, the Patent and Trademark Office doesn't yet have RSS feeds of their News & Notice's page. We've done it for you. You can subscribe via RSS or via e-mail.


a. RSS feeds:
Official Gazette and Federal Register Notices
General Announcements
Patent News and Notices
Trademark News and Notices
OR, all of the above: ALL PTO News and Notices


b. E-mail subscription:



General Announcements
Patent News and Notices
Official Gazette and Federal Register Notices
Trademark News and Notices
ALL (of the above) PTO News and Notices

[Note: These RSS feeds may include information pulled from the USPTO Website and may contain information which is dedicated to the public domain. For more information, please see the USPTO's Editorial and Publication Guidelines. Of course, these RSS feeds are not endorsed, sponsored or condoned by the USPTO.]

2. Lawsuit Filings

We're reworking our Lawsuit Filings service, and as such it is currently not accepting new subscribers.

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IP Lawsuit Filing Updates

Posted by Stephen M. Nipper at March 26, 2006 01:21 PM

One of the side projects the three of us have been developing over the last 6 months is a service called "Lawsuit Mojo." Back in September we rolled out a "weekly" update of patent lawsuits that had been filed in the previous weeks. Subscription information can be found here: http://www.rethinkip.com/archives/rss_email_patent_lawsuit_filing_notices.html

This "patent lawsuit" service was taking us 30-45 minutes per update to do...ergo why it (as work/family demands changed) wasn't as regularly updated (weekly) as we had wished. That also explains why we hadn't yet rolled out trademark and copyright lawsuit updates (time).

The demand has been high enough that we decided to hire a software guru to code the process, dropping our time from 45 minutes to 5-10 minutes a week. This new system is about ready for prime time...a few initial postings (that may contain some duplicate cases as we move to the new database) and we'll be good to go.

So...it is looking like we will be able to provide weekly (every Monday) updates of patent, trademark and copyright (as well as any other federal lawsuit causes of action requested) lawsuits filed (federally).

We are going to beta test it for a couple months and then will likely move it to a weekly subscription service (to fund further development of this product and others we have in the hopper). We will likely ALSO create a monthly (or other frequency) free service.

YOUR needs will drive the development of these tools...so, the better the input you give us, the better we will be able to create the tools YOU need.

I'll probably get the intitial patent/trademark/copyright updates (data March 1-21) up later today, and will try to get our first weekly update up tomorrow (data since March 21). More details on this project to follow...

Stephen M. Nipper
snipper@gmail.com

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Nanotechnology Customer Partnership Meeting

Posted by J Matthew Buchanan at March 20, 2006 03:14 PM

Nanotechnology Customer Partnership Meeting

This Nanotechnology Customer Partnership initiative is designed and developed to be a forum to share ideas, experiences, and insights between individual users and the USPTO. The USPTO does not intend to use these customer partnership groups to arrive at a group consensus. Individual opinions are sought from varying participants, and the meetings are intended to be informal in nature. These customer partnership groups are formed with full recognition of the USPTO’s responsibility under the Federal Advisory Committee Act (FACA), and are not established as FACA compliant committees.

We value our customers and the feedback provided from individual participants is important in our efforts to continuously improve the quality of our products and services. Your willing participation in this informal process is helpful in providing us with new insights and perspectives.

DATE AND LOCATION: This meeting is scheduled for Tuesday, March 28, 2006, from 1:00 pm to 5:00 pm, in the Madison Auditorium, North Side, located at 600 Dulany Street, in Alexandria, Virginia.

Requests for Attendance at the Partnership Meeting

Due to space limitations, please RSVP by e-mail to jill.warden@uspto.gov or by telephone to Jill Warden at (571) 272-1267 to confirm your attendance. If it becomes necessary to restrict the number of attendees, we will do so on a first come-first served basis.

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Commerce Secretary Carlos Gutierrez Launches New Web-Based Filing System for Patent Applications

Posted by J Matthew Buchanan at March 17, 2006 08:59 AM

PRESS RELEASE
March 16, 2006
#06-19 Contact: Brigid Quinn or Ruth Nyblod
571-272-8400

brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov


Commerce Secretary Carlos Gutierrez Launches
New Web-Based Filing System for Patent Applications


Washington, D.C. -- Commerce Secretary Carlos M. Gutierrez and Under Secretary for Intellectual Property Jon Dudas today launched the United States Patent and Trademark Office's (USPTO) new electronic filing system that will allow applicants to file over the Internet virtually anytime and anywhere, reducing the application process by


30 minutes and improving accuracy on filed documents.


Three early adopters—the 3M Company, the law firm of Fish & Richardson and the University of Maryland—filed the first applications using EFS-Web, the new web-based patent application tool, today at the Commerce Department officially opening the system to all patent applicants.


"This new electronic filing system is another critical step in our on-going efforts to provide innovators with the most secure and simple patent-applicant process in the world," said Gutierrez. "Our country is rich in skill and creativity. Every day this human talent develops novel and useful inventions to improve the lives and livelihoods of the American people."


"The USPTO worked with the intellectual property community to develop this new system," added Under Secretary Dudas.  "Focus groups composed of corporations, law firms and individual filers provided input about their needs. Based on this customer input, USPTO developed a tool designed to meet those needs – an efficient patent submission tool in which users have full confidence."


The shift from a paper-based system to an electronic environment offers a number of advantages to patent filers. Patent customers can file applications and related documents using their existing software. It is now possible to submit documents by simply attaching PDF files. EFS-Web offers additional practical flexibility to the intellectual property community by allowing staff to file documents prepared and reviewed by patent attorneys. Filers will also be able to pay filling fees over the Internet.


EFS-Web submissions are automatically processed through the USPTO. Patent filers receive rapid access to their applications through the Patent Application Information Retrieval (PAIR) system, so they can view their submissions and confirm that documents have been securely and accurately received. EFS-Web also offers visual proof that patent applications and documents have been received in the form of an automatic electronic receipt.


Over the last several months, the USPTO conducted beta tests of the technology. EFS-Web beta participants, representing corporations, law firms and independent inventors, received product overviews, specifications on system functionality and requirements and hands-on training. Over 80 organizations participated in the EFS-Web pilot program. Prior to deployment, close to 200 pilot participants attended the EFS-Web onsite and Web-based trainings.


For more information on EFS-Web, please visit http://www.uspto.gov .

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Commerce Secretary Carlos Gutierrez to Launch New Electronic Patent Application Filing System

Posted by J Matthew Buchanan at March 15, 2006 09:37 AM

 MEDIA ADVISORY
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov March 14, 2006
#06-18

Commerce Secretary Carlos Gutierrez to Launch New Electronic Patent Application Filing System


U.S. Commerce Secretary Carlos M. Gutierrez and Under Secretary for Intellectual Property Jon Dudas will officially launch the U.S. Patent and Trademark Office's (USPTO) new electronic filing system for patent applications. EFS-Web allows patent filers anywhere in the world at any time to submit patent applications and to pay fees via the Internet.















WHAT

Launch of USPTO's new electronic filing system for patent applications.
Remarks by Secretary Gutierrez and Under Secretary Dudas.
First electronic filing by 3M company, Fish & Richardson PC and University of Maryland

WHO

Secretary of Commerce Carlos M. Gutierrez
Under Secretary of Commerce for Intellectual Property Jon Dudas
Commissioner for Patents John Doll
Gary Griswold, chief intellectual property counsel for 3M company
Tom Beddow, vice president for Government Affairs for 3M company
Felicia Metz, intellectual property associate, Office of Technology
Commercialization, University of Maryland
Karl Renner, principal, Fish & Richardson P.C.

WHERE

U.S. Department of Commerce
1401 Constitution Avenue, N.W.
Room 4830
Washington, D.C.

WHEN

Thursday, March 16, 2006
9:30 a.m. Press check in begins
10:00 a.m. Press conference begins



###

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Changes to Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005 (10Mar2006)

Posted by J Matthew Buchanan at March 10, 2006 02:18 PM

You can view and/or download a .pdf of this notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr12281.pdf

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Comments on Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (February 2006) (08Mar2006)

Posted by J Matthew Buchanan at March 8, 2006 03:11 PM

As of February 28, 2006, the organizations and persons listed below have submitted comments in response to the Proposed Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rulemaking [PDF], first published in the Federal Register at 71 Fed. Reg. 48 (January 3, 2006) and then published in the Official Gazette at 1302 Off. Gaz. Pat. Office 1318 (January 24, 2006).

It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to Robert.Clarke@uspto.gov, or contact Robert A. Clarke by telephone at (571) 272-7735.

The comments below are grouped into the following categories: intellectual property organizations, government agencies, corporations, and individuals. Each comment is attributed to the individual submitting the comment unless the comment indicates it is made on behalf of an organization.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.


A. Corporations
  1. Hitt Gaines, P.C. [PDF]
  2. Luminetx Corporation [PDF]
  3. PowerDsine Ltd. [PDF]
  4. Unilever Patent Group [PDF]
B. Law Firms
  1. Alston & Bird LLP [PDF]
  2. Harrington & Smith, LLP [PDF]
  3. JLJ, Inc. [PDF]
  4. Kremblas, Foster, Phillips & Pollick [PDF]
  5. Lacasse & Associates, LLC [PDF]
  6. Martine Penilla & Gencarella, LLP [PDF]
  7. Mayer, Brown, Rowe & Maw LLP [PDF]
  8. Nath & Associates [PDF]
  9. Sonnenschein Nath & Rosenthal LLP [PDF]
  10. Thorpe North & Western, LLP [PDF]
  11. Trexler, Bushnell, Giangiorgi, Blackstone & Marr [PDF]
C. Individuals
  1. Bromer, Nick [PDF]
  2. Dove, Barry [PDF]
  3. Eilberg, William [PDF]
  4. Freedman, Immanuel [PDF]
  5. Grogan, Ray [PDF]
  6. Hand, Francis [PDF]
  7. Herrick, William [PDF]
  8. Huston, Chad [PDF]
  9. Looper, Valerie [PDF]
  10. Mouttet, Blaise [PDF]
  11. Orange, David [PDF]
  12. Rajesh, Elaine [PDF]
  13. Schindler, Edwin [PDF]
  14. Steinberg, Dan [PDF]
  15. Vanderhye, Bob[PDF]
  16. Washburn, Brian [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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Comments on Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (February 2006) (07Mar2006)

Posted by J Matthew Buchanan at March 7, 2006 07:09 PM

As of February 28, 2006, the organizations and persons listed below have submitted comments in response to the Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making [PDF], first published in the Federal Register at 71 Fed. Reg. 61 (January 3, 2006) and then published in the Official Gazette at 1302 Off. Gaz. Pat. Office 1329 (January 24, 2006).

It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to Robert.Clarke@uspto.gov, or contact Robert A. Clarke by telephone at (571) 272-7735.

The comments below are grouped into the following categories: intellectual property organizations, government agencies, corporations, and individuals. Each comment is attributed to the individual submitting the comment unless the comment indicates it is made on behalf of an organization.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.


A. Intellectual Property Organizations]

B. Government Agencies

C. Corporations

D. Individuals

  1. Cornish, Judge [PDF]
  2. Dove, Barry [PDF]
  3. Foster, Frank [PDF]
  4. Harrington, Mark [PDF]
  5. Kalis, Janal [PDF]
  6. Lewis, David [PDF]
  7. Maire, David [PDF]
  8. Orange, David [PDF]
  9. Palmer, Alun [PDF]
  10. Rimell, Sam [PDF]
  11. Sainio, Jeffrey [PDF]
  12. Stanton, Gerald [PDF]
  13. Steen, Edward [PDF]
  14. Steinberg, Dan [PDF]
  15. Vanderhye, Bob [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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USPTO Town Hall Meeting Focuses on Improvements to Patent Review Process

Posted by J Matthew Buchanan at March 1, 2006 08:27 AM







PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov


February 28, 2006
#06-15



USPTO Town Hall Meeting Focuses on Improvements to Patent Review Process


Berkeley, Calif. —Efficient and effective patent examination is critical to American competitiveness and innovation, Under Secretary of Commerce for Intellectual Property Jon Dudas today told an audience of California patent attorneys, patent agents, independent inventors and members of the small business community. The Under Secretary stressed that the USPTO is seeking the public's input on ways in which it can enhance the efficiency and effectiveness of the patent examination process.


“ The USPTO clearly has a responsibility to do everything it can to improve America's patent system. That is why we are undertaking this collaborative approach – putting forth quality and efficiency proposals for the patent community to give us feedback ,” said Dudas. “Applicants and the public deserve certainty. This focus on quality of applications and closure of the examination process will provide more certainty. Everyone agrees that better quality input will result in a better quality end product.”


The USPTO has published for comment proposed initiatives to prioritize the claims reviewed during the examination process and to better focus the agency's examination of patent applications, by requiring applicants to identify the most important claims to the invention.


The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Significant delay in granting a patent can slow new products coming to market. Under Secretary Dudas noted that simply hiring more patent examiners will not slow the growth in the time it takes to review a patent or improve the quality of examination. Expediting the process will occur only with the participation of applicants.


In FY 2004, almost one-third of the 355,000 new patent applications had already been reviewed and rejected by the USPTO, but applicants resubmitted them mostly with only minor changes. Also, over 40 percent of new applications in FY 2004 had more than 20 claims.


In the past two years, the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59 percent in FY 2004 to 70 percent in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2 percent from 82 percent the previous year. The compliance rate for final allowances improved from 94.8 percent to 96 percent from FY 2004 to FY 2005.


The proposed new rules can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf . PDF viewer is required for these documents.


Additional Town Hall Meetings are being planned for Texas and Washington, D.C.

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Berkeley Town Hall Meeting to Focus on Improvements to Patent Review Process

Posted by J Matthew Buchanan at February 27, 2006 08:32 AM







MEDIA ADVISORY
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov


February 24, 2006
#06-13



Berkeley Town Hall Meeting to Focus on Improvements to Patent Review Process


Washington, D.C. – Under Secretary of Commerce for Intellectual Property Jon Dudas will lead a town hall meeting to provide background information regarding proposed new rule changes to improve patent examination. The changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and reducing the time it takes for the patent review process. In addition, the USPTO will demonstrate its new Web-based patent electronic filing system ( EFS Web ).















What

Town Hall Meeting


An overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary.


A question and answer session will follow immediately after presentations.

Who

Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO


Patent attorneys, patent agents, independent inventors and members of the small business community

When

Tuesday, February 28, 2006
1:00 p.m.

Where

University of California, Berkeley International House
2299 Piedmont Avenue
Berkeley, California


For more information, please go to http://www.uspto.gov/web/patents/townhall.htm .

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Reciprocal Access to and Usage of Documents in Application Files of Trilateral Offices [signed 29August2005]

Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Interim rule (23Feb2006)

Posted by J Matthew Buchanan at February 24, 2006 06:34 PM

View and/or download a copy of the Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr9260.pdf

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Proposed Rule Changes to Focus the Patent Process in the 21st Century

Background

The U.S. Patent and Trademark Office continues to propose new initiatives to make the Office more efficient, to ensure that the patent application process promotes innovation, and to improve the quality of issued patents. These pages have been developed to provide full transparency to the public about these ongoing efforts. We inaugurate these pages with information about rules proposed on January 3, 2006 related to claims practice and continuation practice. These proposed rule changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and reducing the time it takes for the patent review process. In addition they will improve the quality of issued patents and ensure that the USPTO continues to promote innovation. The information below includes an overview of the challenges the USPTO faces, the reasons why proposed new rules are necessary, the proposed rule changes, and supporting material. We have also included a schedule of dates and places where USPTO representatives will make presentations concerning the proposed rules. We will continue to update these pages as new information or proposals are unveiled.

USPTO Chicago Town Hall Meeting Focuses on Proposed Rule Changes to Improve Patent Examination

The Commerce Department’s United States Patent and Trademark Office (USPTO) on February 1, 2006 provided an audience of nearly 500 Chicago-area patent attorneys, patent agents, independent inventors and members of the small business community with background information regarding proposed new rule changes. Commissioner for Patents John Doll and James Toupin, the agency's general counsel, discussed the challenges the USPTO faces and the reasons why the proposed new rules limiting claims and rework are necessary. They then took questions from the audience.

Specifically, these initiatives will prioritize the claims reviewed during the examination process and better focus the agency’s examination of patent applications by requiring applicants to identify the most important claims to the invention.

The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Since the USPTO's resources have not increased at the same rate as filings, it has become much more difficult to provide reliable, consistent and prompt patentability decisions. Delay in granting a patent can slow new products coming to market, and issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth. Simply hiring more patent examiners will not slow the growth in the time it takes to get a patent or improve the quality of examination. This will occur only through the participation of applicants in facilitating more effective and efficient patent examination.

“Improving the patent process will take everyone working together-applicants and the USPTO,” Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office Jon Dudas noted earlier. “Better quality applications mean better examination. We need more focus throughout and closure to the examination process.”

In FY 2004, almost one-third of the 355,000 new patent applications had already been reviewed and rejected by the USPTO, but applicants resubmitted them mostly with only minor changes. Also, over 40% of new applications in FY 2004 had more than 20 claims. These practices waste the limited time examiners have to review an application and prevent examiners from focusing on the most important issues in an application.

In the past two years, the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59% in FY 2004 to 70% in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2% from 82% the previous year. The compliance rate for final allowances improved from 94.8% to 96% from FY 2004 to FY 2005.

Complete slide set presented at this Town Hall Meeting (html version) (zip version)
For background and justification, see slides 8-30 and 48-60.
For proposals on continuations, see slides 31-38 and 72-85.
For proposals on claims, see slides 39-47 and 61-71.


 

1. Claims Practice

Federal Register - 71 Fed. Reg. 61 (03 January 2006)

Official Gazette

Topics:

Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (03Jan2006) [PDF]

  Examples
  Comments from Public

(top of page)

2. Continuation Practice

Federal Register - 71 Fed. Reg. 48 (03 January 2006)

Official Gazette

Topics:
Proposed Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rulemaking (03Jan2006) [PDF]
  Examples
  Comments from Public

(top of page)

Presentation Materials

 

In addition to the Chicago Town Hall slides described and available above, the following presentation materials are available:

Slides (25 January 2006 presentation regarding background and justification) (html version) (zip version)

Slides (25 January 2006 presentation by Robert Spar regarding Claims Practice) (html version) (zip version)

Slides (25 January 2006 presentation by Robert Spar regarding Continuation Practice) (html version) (zip version)

Slides (February 2006 presentation by John Whealan regarding all proposals) (html version) (zip version)

(top of page)

Presentation Schedule

 

Additional Town Hall meetings sponsored by the USPTO. Check www.uspto.gov for additional information or contact the Office of Public Affairs at 571-272-8400.

02/28/2006 - Boalt Hall School of Law - Berkeley, CA
TBA Mar - Houston, TX
04/21/2006 - USPTO - Alexandria, VA

The following is a list of events that are not sponsored by the USPTO, but USPTO representatives will make (or have made) presentations. For more information on these events, please contact the sponsor unless otherwise identified below.

02/11/2006 - ABA Counsel - Chicago, IL
02/13/2006 - Orange County Bar Assoc. - Newport Beach, CA
02/14/2006 - Century City Bar Assoc. - Century City, CA
02/17/2006 - Duke Law School - Durham, NC
02/23/2006 - Franklin Pierce Law School - Concord, NH (contact: 603-228-1541 ext 1150)
02/28/2006 - Federal Circuit Bar Assoc. - Washington, DC
03/09/2006 - Biotechnology Industry Org. - San Francisco, CA (contact: www.bio.org/ip/ipmeeting)
03/20/2006 - State Bar of Michigan Intellectual Property Law Section - East Lansing, MI (contact: 877-229-4350)
04/05/2006 - Georgetown Law Center - Washington, DC
04/07/2006 - American Intellectual Property Law Assoc. - New York, NY (contact: www.aipla.org)
04/12/2006 - Biotechnology Industry Org. - Chicago, IL (contact: www.bio.org)

(top of page)

NOTE: The information contained on this page was correct at the time of original publication. Some information may no longer be applicable. Amendments may have been made to the rules of practice since the original date of a publication, there may have been a change in any fees indicated, and certain references to publications may no longer be valid. Wherever there is a reference to a statute or rule, please check carefully whether the statute or rule in force at the date of publication of the information has since been amended.

For questions concerning the proposals, please contact the Office of Patent Legal Administration at 571-272-7701 or Patent.Practice@uspto.gov.

Some contents linked to on this page require a plug-in for ZIP , PDF and PowerPoint Files.

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New Private Pair

Posted by Stephen M. Nipper at February 23, 2006 02:55 PM

Matt Buchanan and I (Stephen M. Nipper) listened to the USPTO presentation on Private Pair earlier. Here are our notes.

The four main new features touted:

1. web based digital certificate security—you don’t need USPTO Direct anymore. Log in using your browser (Internet Explorer…they pointed out that FireFox may or may not work (worked just fine for both of us)). All you (and your secretary) need is your digital certificate (your old .EFS file) and your EFS password. USPTO Direct will still work but will be eventually phased out.

2. first action prediction—new tab in Private Pair gives you a prediction as to when you can expect a first office action. They’ll even generate a letter for you which you can print for your file (and your client).

3. new look and feel - a uniform, tabbed browser interface is easy to navigate and fairly intuitive

4. supplemental content—biosequence listings, text tables, computer program listings, etc.

Later today, the presentation (audio and slides) will be available here: http://webex.client.ninesystems.com/uspto

It is working right now! We’ve both tested it. Here is the login: http://portal.uspto.gov/external/portal/home . It says “private beta” (we bet that is removed later today) but you can still log in. Then select “Enter Private Pair.” The next page is where you enter your digital certificate and password.

Kudos to the PTO team that is responsible for this effort -- the new system is a major step forward. Also, the presenation was well-organized and nicely handled. Great job!

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Under Secretary of Commerce To Open Berkeley Town Meeting on Patent Claims and Continuation Practice

Under Secretary of Commerce To Open Berkeley Town Meeting on Patent Claims and Continuation Practice -- Register Now
Berkeley, California - February 28

This town hall meeting on the proposed rule changes for claims and continuations will be held February 28 in Berkeley, California. The USPTO and Berkeley Center for Law and Technology (BCLT) will co-sponsor the event at International House (across from BCLT, Boalt Hall in Berkeley) The meeting will be held from 1pm – 3pm. In addition the USPTO will have a demonstration from 3pm – 4pm at the same location of its new Web-based patent electronic filing system (EFS Web).


Jon Dudas, Under Secretary of Commerce and Director of the United States Patent and Trademark Office, Jay Lucas, Acting Deputy Commissioner for Patent Examination Policy and James Toupin, the agency’s General Counsel, will provide an overview of the challenges the USPTO faces, the reasons why the proposed new rules are necessary, and information on the proposed rule changes. A question and answer session will follow immediately after their presentation.


Registration is free and CLE credit may be available.


These town hall meetings are for patent attorneys, patent agents, independent inventors and members of the small business community, or anyone else interested in patent examination.


>> For more information, including registration, please go to http://www.uspto.gov/web/patents/townhall.htm.


The first town hall meeting was in Chicago on February 1, 2006. Details regarding future town hall meetings in Texas and Washington, DC, will be posted at a later date.

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USPTO To Hold Live On-Line for Independent Inventors

Posted by J Matthew Buchanan at February 17, 2006 08:24 AM

USPTO To Hold Live On-Line for Independent Inventors

Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line on Wednesday, February 22, from 2 to 3 pm (ET). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the online will be posted on the home page of the USPTO website at 10:30 am (ET) on Wednesday. Inventors can begin logging on for the on-line at 1:30 pm.


The independent inventor on-line is part of the USPTO's continuing efforts to promote and protect America 's independent inventors. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.


We have transcripts and frequently-asked questions and answers from previous onlines available on the Inventors Resources pages. Check them out and save time — your question may already have an answer waiting for you!

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United States Patent & Trademark Office Issues 7 Millionth Patent

Posted by J Matthew Buchanan at February 14, 2006 01:06 PM

United States Patent & Trademark Office Issues 7 Millionth Patent
Patent Assigned to DuPont for Novel Fibers

WASHINGTON, D.C.– The Department of Commerce’s United States Patent and Trademark Office (USPTO) today issued patent No. 7 million to DuPont senior researcher John P. O’Brien for “polysaccharide fibers” and a process for their production. The fibers have cotton-like properties, are biodegradable and are useful in textile applications.

It took 75 years to get from patent No.1 to patent 1 million. It has taken less than one tenth of that time to go from 6 million to 7 million patents.

  • Patent No. 1 million was issued on August 8, 1911, for a tubeless vehicle tire.

  • Twenty-four years later, on April 30, 1935, patent No. 2 million issued for a vehicle wheel to increase the safety and longevity of pneumatic tires.

  • Patent No. 3 million issued 26 years later on September 12, 1961, to an inventor at the General Electric Co., for an automated system that translated letters, numbers and symbols to data processing code.

  • Patent No. 4 million issued 15 years later on December 28, 1976 for a process for recycling asphalt aggregate compositions.

  • Fifteen years later, on March 19, 1991, Patent No. 5 million issued to a University of Florida inventor, for a more efficient way to produce fuel ethanol.

  • Only eight years later, patent No. 6 million issued on December 7, 1999, to 3Com Corporation’s Palm Computing for its HotSync® technology.

  • And now just a little more than six years later, patent No. 7 million issues.

Patent No. 1 was issued in 1836. Earlier patents were not numbered, although the first U.S. patent was issued in 1790. Approximately 10,000 patents were issued between 1790 and 1836. The USPTO issued 151,079 utility patents in fiscal year 2005.

# # #

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USPTO’s Town Hall Meeting on Proposed Rules on Claim and Continuation Practice Coming to Berkeley CA, February 28, 2006

USPTO’s Town Hall Meeting on Proposed Rules on Claim and Continuation Practice Coming to Berkeley CA, February 28, 2006

Register Now


The second in a series of town hall meetings on the proposed rule changes for claims and continuations will be held February 28 in Berkeley, California. The USPTO and Berkeley Center for Law and Technology (BCLT) will co-sponsor the event at International House (across from BCLT, Boalt Hall in Berkeley). The meeting will be held from 2pm – 4pm. In addition the USPTO will have a demonstration from 1pm – 2pm at the same location of its new Web-based patent electronic filing system (EFS Web).


Jay Lucas, Acting Deputy Commissioner for Patent Examination Policy and James Toupin, the agency’s General Counsel, will provide an overview of the challenges the USPTO faces, the reasons why the proposed new rules are necessary, and information on the proposed rule changes. A question and answer session will follow immediately after their presentation.


Registration is free and CLE credit may be available.


These town hall meetings on the proposed changes to the rules are for patent attorneys, patent agents, independent inventors and members of the small business community, or anyone else interested in patent examination.


>> For more information, including registration, please go to http://www.uspto.gov/web/patents/townhall.htm.


The first town hall meeting was in Chicago on February 1, 2006. Details regarding future town hall meetings in Texas and Washington, DC, will be posted at a later date.

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USPTO to hold Open Source Software Community Meeting February 16, 2006

Posted by J Matthew Buchanan at February 8, 2006 09:30 AM

USPTO to hold Open Source Software Community Meeting February 16, 2006

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has created a partnership with the open source community to ensure that patent examiners have improved access to all available prior art relating to software code during the patent examination process.

In December the USPTO representatives met with members of the open source software community, which provided an opportunity for members to discuss with the USPTO prior art access issues related to software patent quality. The meeting focused on getting the best prior art references to the examiner during the initial examination process.

As a follow-up to their December 6th meeting, USPTO representatives will hold another meeting on February 16th, 2006. This meeting will be open to the public and will focus on further developing previously discussed initiatives as well as any new prior art initiatives offered at that time.

All members of the open source software community are encouraged to attend. However, space is limited so please register early. Only the first 220 registrations can be accepted. For additional information go to http://www.uspto.gov/web/patents/opensource2006.htm.

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USPTO Town Hall Meeting Focuses on Proposed Rule Changes to Improve Patent Examination

Posted by J Matthew Buchanan at February 2, 2006 04:23 PM







PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov


February 1, 2006
#06-07



USPTO Town Hall Meeting Focuses on Proposed Rule Changes to Improve Patent Examination


Chicago, IL -- The Commerce Department’s United States Patent and Trademark Office (USPTO) today provided an audience of Chicago-area patent attorneys, patent agents, independent inventors and members of the small business community with background information regarding proposed new rule changes. Commissioner for Patents John Doll and James Toupin, the agency's general counsel, discussed the challenges the USPTO faces and the reasons why the proposed new rules limiting claims and rework are necessary.


Specifically, these initiatives will prioritize the claims reviewed during the examination process and better focus the agency’s examination of patent applications by requiring applicants to identify the most important claims to the invention.


The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Since the USPTO's resources have not increased at the same rate as filings, it has become much more difficult to provide reliable, consistent and prompt patentability decisions. Delay in granting a patent can slow new products coming to market, and issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth. Simply hiring more patent examiners will not slow the growth in the time it takes to get a patent or improve the quality of examination. This will occur only through the participation of applicants in facilitating more effective and efficient patent examination.


“Improving the patent process will take everyone working together—applicants and the USPTO,” Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office Jon Dudas noted earlier. “Better quality applications mean better examination. We need more focus throughout and closure to the examination process.”


In FY 2004, almost one-third of the 355,000 new patent applications had already been reviewed and rejected by the USPTO, but applicants resubmitted them mostly with only minor changes. Also, over 40% of new applications in FY 2004 had more than 20 claims. These practices waste the limited time examiners have to review an application and prevent examiners from focusing on the most important issues in an application.


In the past two years, the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59% in FY 2004 to 70% in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2% from 82% the previous year. The compliance rate for final allowances improved from 94.8% to 96% from FY 2004 to FY 2005.


The proposed new rules can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf. PDF viewer is required for these documents.


Additional Town Hall Meetings are being planned for California, Texas, and Washington, D.C.


# # #

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Commerce Under Secretary to Highlight Nevada’s Innovation and Competitiveness

Posted by J Matthew Buchanan at February 1, 2006 04:07 PM







MEDIA ADVISORY
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov


February 1, 2006
#06-06



Commerce Under Secretary to Highlight Nevada’s Innovation and Competitiveness
Nevada Doubles Patents and Leads Nation with Most Business Start-ups


Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas will be in Las Vegas to highlight the innovation and economic competitiveness of the area following President George W. Bush’s State of the Union address announcing the American Competitiveness Initiative.


In the past 10 years, Nevada has more than doubled the number of patents awarded to residents. In 1994, Nevadans were granted 212 patents; and in fiscal year 2005, they were awarded 461 patents. Nevada also is ranked first in the nation in having the most business start-ups, according to the most recent State New Economy Index.















WHAT:

USPTO event celebrating competitiveness/innovation -- as follow-up to President’s State of the Union address.


Learn about the state of innovation and competitiveness in Nevada and the U.S as well as the U.S. patent and trademark systems.


A question and answer session will follow immediately after presentation.

WHO:

Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
John Doll, Commissioner for Patents


Innovators at University of Nevada-Las Vegas, independent inventors, local technology-oriented companies, and those associated with Camp Invention, a summer creativity enrichment program for students in grades 2 - 6.

WHERE: Clark County Library
1401 E. Flamingo Road
Las Vegas, NV
WHEN: Thursday, February 2, 2006
1:00 p.m.

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Chicago Town Hall Meeting to Focus on Proposed Rule Changes to Improve Patent Examination

Posted by J Matthew Buchanan at January 31, 2006 11:29 AM







MEDIA ADVISORY
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov


January 31, 2006
#06-05



Chicago Town Hall Meeting to Focus on Proposed Rule Changes to Improve Patent Examination


Washington, D.C. -- In a Town Hall Meeting, the United States Patent and Trademark Office (USPTO) will provide background information regarding proposed new rule changes to improve patent examination. The changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and reducing the time it takes for the patent review process.















WHAT: Town Hall Meeting

An overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary.

A question and answer session will follow immediately after presentations.

WHO: John Doll, Commissioner for Patents
James Toupin, USPTO General Counsel

Patent attorneys, patent agents, independent inventors and members of the small business community

WHEN: Wednesday, February 1, 2006
2:00 p.m. – 4:00 p.m.
WHERE: Downtown campus of Northwestern University in the Arthur Rubloff Building, Thorne Auditorium, 375 East Chicago Avenue, Chicago, IL.

For more information, please go to http://www.uspto.gov/web/patents/townhall.htm.


# # #

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Electronic Processing of Information Disclosure Statement [signed 24 January 2006] (24Jan2006)

Posted by J Matthew Buchanan at January 26, 2006 08:17 PM

 Electronic Processing of Information Disclosure Statement [signed 24 January 2006] (24Jan2006)

View and/or download a .pdf of this notice at the following URL:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/e_IDSprocess012406.pdf

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USPTO Announces PatentIn 3.3 Training

Posted by J Matthew Buchanan at January 24, 2006 08:46 AM

USPTO Announces PatentIn 3.3 Training

The United States Patent and Trademark Office (USPTO) is pleased to announce a free training session for PatentIn 3.3 on Friday, March 24, 2006. The session will run from 9:30 AM to 3:30 PM, with a one-hour lunch break from 11:30 AM to 12:30 PM.

Course Content:

The class will include:

  • Overview of molecular biology
  • Overview of the sequence rules
  • Hands-on authoring of several sequence listings varying in complexity

Questions are welcome throughout the training. In addition, the instructor is available after class to assist customers with their sequence listings.

Course Instructor:

The instructor is Robert Wax, a Primary Examiner in Art Unit 1653, the former Project Manager of PatentIn and one of the USPTO's sequence rule experts.

Course Location:

The class will be held at USPTO's new headquarters in the Madison West Building. The Madison Building is located at 600 Dulany Street, Alexandria, Virginia. Participants will meet in the lobby and be escorted through Security to the training room. Please visit our website for directions to our office: http://www.uspto.gov/main/directions_alex.htm.

Registration Information:

To register for this class or for additional information, please send an email to patin3help@uspto.gov or call (571) 272-0623.

This session has a maximum capacity of 16 participants. Attendees will be accepted on a first-come, first-served basis. If the USPTO receives more requests than space permits, additional sessions will be scheduled at a future date.

Parking information:

Parking is available in the West Garage, located at 550 Elizabeth Lane or the East Garage, located at 551 John Carlyle Street, Alexandria, Virginia. The daily rates are:

Garage Rates*:

* Rates apply to all vehicle types including motorcycles.
1 hour $3.00
2 hours $6.00
3 hours $9.00
Maximum $10.00

Directions from Metro:

  • Take the yellow or blue line to the King Street station in Alexandria;
  • Walk three (3) blocks SOUTH, across the parking lot, Diagonal Road, and Duke Street.
  • The George Washington Masonic Memorial will be to your RIGHT and behind you and the USPTO Headquarters will be in front of you.

    The Madison Building is the center building at the end of Dulany Street. Madison West Building is on your right when you enter the front of the building with the peaked glass ceiling.

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USPTO Kicks Off Town Hall Meeting in Chicago February 1

Posted by J Matthew Buchanan at January 19, 2006 08:21 AM

USPTO Kicks Off Town Hall Meeting in Chicago February 1
Register Now

In an upcoming series of Town Hall Meetings, the United States Patent and Trademark Office (USPTO) will provide background information regarding proposed new rule changes. The first Town Hall Meeting will be held February 1, 2006, in Chicago, IL. The USPTO and Northwestern University will co-sponsor the event at the downtown campus of Northwestern University in the Arthur Rubloff Building, Thorne Auditorium. The meeting will be held from 2:00 p.m. – 4:00 p.m.


The proposed rule changes relate to the examination of claims, continuing applications, requests for continued examination and applications containing patentably indistinct claims. The changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and the time it takes for the patent review process. In addition they will improve the quality of issued patents and ensure that the USPTO continues to promote innovation.


Commissioner for Patents John Doll and James Toupin, the agency’s general counsel, will provide an overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary. A question and answer session will follow immediately after their presentations.


Registration is free and CLE credit may be available.


The Town Hall Meetings are for patent attorneys, patent agents, independent inventors and members of the small business community.


For registration information, please go to http://www.uspto.gov/web/patents/townhall.htm or call 571-272-8850.


Details regarding future Town Hall Meetings in California, Texas and Washington, D.C., will be posted on the USPTO Web site at a later date.

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Extension of the Pilot Pre-Appeal Brief Conference Program [signed 10 January 2006] (11Jan2006) [PDF]

Posted by J Matthew Buchanan at January 12, 2006 09:13 AM

View and/or download a copy of this .pdf at the link below:

 

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/preappealbrief_ext.pdf

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USPTO PARTNERS WITH OPEN SOURCE COMMUNITY TO EXPAND PATENT EXAMINER ACCESS TO SOFTWARE CODE

USPTO PARTNERS WITH OPEN SOURCE COMMUNITY TO EXPAND
PATENT EXAMINER ACCESS TO SOFTWARE CODE
Alliance will focus on software-related patents

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has created a partnership with the open source community to ensure that patent examiners have access to all available prior art relating to software code during the patent examination process.


Last month, USPTO representatives met with members of the open source software community, which provided an opportunity for members to discuss with the USPTO issues related to software patent quality. The meeting focused on getting the best prior art references to the examiner during the initial examination process.


The group agreed to improve prior art resources available to the USPTO; to develop a system to alert the public when USPTO publishes certain software-related applications so that interested parties can submit related prior art in accordance with relevant rules and law; and, to explore developing additional criteria for measuring the quality of software patents.


“For years now, we have been hearing concerns from the software community about the patent system,” Under Secretary of Commerce for Intellectual Property Jon Dudas commented. “It is important that those in the open source community are joining USPTO to provide resources that are key to examining software-related applications.”


A follow-up meeting on the new initiatives will be held at the USPTO headquarters in Alexandria, Va., on February 16. The session will be open to the public and devoted to working on details of the three initiatives and the development of additional proposals.


Details on the registration process and the agenda will be provided on our website later this month.

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USPTO RELEASES ANNUAL LIST OF TOP 10 ORGANIZATIONS RECEIVING MOST U.S. PATENTS

USPTO RELEASES ANNUAL LIST OF TOP 10 ORGANIZATIONS
RECEIVING MOST U.S. PATENTS
American Innovation Continues to Top the Field

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today the 2005 top 10 global private sector patent recipients. Listed below are the 10 corporations receiving the most U.S. patents for inventions in 2005, along with their 2004 ranking.

“America’s technological and economic strength is the result of its tremendous ingenuity,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. “The USPTO has taken and will continue to take aggressive steps that will enhance quality and improve productivity to ensure that U.S. intellectual property protection remains the best in the world, protecting American innovation and sustaining economic growth.”

Top 10 Private Sector Patent Recipients for the 2005 Calendar Year
Preliminary Rank in 2005 Preliminary Number of Patents in 2005 Organization (Final Rank in 2004) (Final Number of Patents in 2004)
1
2,941
International Business Machines Corporation
(1)

(3,248)

2
1,828
Canon Kabushiki Kaisha
(3)
(1,805)
3
  1,797*
Hewlett-Packard Development Company, L.P. *
(4)
(1,775)
4
1,688
Matsushita Electric Industrial Co., Ltd.
(2)
(1,934)
5
1,641
Samsung Electronics Co., Ltd.
(6)
(1,604)
6
1,561
Micron Technology, Inc.
(5)
(1,760)
7
1,549
Intel Corporation
(7)
(1,601)
8
1,271
Hitachi, Ltd
(8)
(1,513)
9
1,258
Toshiba Corporation
(9)
(1,311)
10
1,154
Fujitsu Limited
(11)
(1,296)

*Calendar year counts for 2005 for Hewlett-Packard Development Company, L.P. include seven patents issued to Hewlett-Packard Company.

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USPTO Proposes Measures To Improve Patent Examination

Posted by J Matthew Buchanan at January 4, 2006 09:28 AM

USPTO Proposes Measures To Improve Patent Examination
Limiting claims and rework will improve quality and reduce the time it takes to issue a patent

The Department of Commerce’s United States Patent and Trademark Office (USPTO), in its continuing efforts to make the patent examination process more effective and efficient, is proposing changes that would reduce the amount of rework by the USPTO and reduce the time it takes to issue a patent and the patent review process. Specifically, these initiatives will prioritize the claims reviewed during the examination process and better focus the agency’s examination of patent applications by requiring applicants to identify the most important claims to the invention.

The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Since the USPTO's resources have not increased at the same rate as filings, it has become much more difficult to provide reliable, consistent and prompt patentability decisions. Delay in granting a patent can slow new products coming to market, and issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth. Simply hiring more patent examiners will not slow the growth in the time it takes to get a patent or improve the quality of examination. This will occur only through the participation of applicants in facilitating more effective and efficient patent examination.

“Improving the patent process will take everyone working together—applicants and the USPTO,” noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. “Better quality applications mean better examination. We need more focus throughout and closure to the examination process.”

In FY 2004, almost one-third of the 355,000 new patent applications were directed to inventions that had already been reviewed by the USPTO, but applicants resubmitted them mostly with only limited changes to the claims or, sometimes with the same claims that the USPTO had previously rejected. While some resubmissions are necessary, addressing them detracts from the agency’s ability to examine new patent applications. Also, over 40% of new applications in FY 2004 had more than 20 claims. Although the initial examination of large numbers of claims may sometimes be necessary in certain complex applications, when these must be filed, applicants should be prepared to assist the agency in ensuring these applications don’t absorb a disproportionate amount of the limited time the USPTO has to review applications.

In the past two years the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59% in FY 2004 to 70% in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2% from 82% the previous year. The compliance rate for final allowances improved from 94.8% to 96% from FY 2004 to FY 2005.

The new rules can be found at:

>> http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf [PDF] and
>> http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf [PDF].
>> PDF viewer
is required for these documents.

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MPEP Eight Edition, Revision 4 released

Posted by J Matthew Buchanan at December 23, 2005 02:48 PM

The following is from the Blue Pages for the recently released MPEP Eighth Edition, Revision 4.  The Blue Pages highlight the changes incorporated into the MPEP by the new revision.

For more information on the current version of the MPEP, visit the following URL:  http://www.uspto.gov/web/offices/pac/mpep/index.htm

 

U.S. DEPARTMENT OF COMMERCE

U.S. Patent and Trademark Office

P.O. Box 1450

Alexandria, Virginia 22313-1450

MANUAL OF PATENT EXAMINING PROCEDURE

Eighth Edition

Instructions Regarding Revision No. 4

This revision incorporates the changes necessitated by the following final rules:

“Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004,” which became effective on September 14, 2005.

This revision consists of replacement pages for the Title Page in the front of the Manual, entire Chapter 2300, Appendices II – List of Decisions Cited, R – Patent Rules, and AI – Administrative Instructions Under the PCT, and entire Index. 

Pages which have been printed in this revision are labeled as “Rev. 4” on the bottom.  Sections of the Manual that have been changed by this revision are indicated by “[R-4]” after the section title.  Additions to the text of the Manual are indicated by arrows (><) inserted in the text.  Deletions are indicated by a single asterisk (*) where a single word was deleted and by two asterisks (**) where more than one word was deleted. The use of three or five asterisks in the body of the laws and rules indicates a portion of the law or rule that was not reproduced.

Chapter 2300 was prepared with the assistance of the Board of Patent Appeals and Interferences.  Their efforts are greatly appreciated.

Magdalen Y. C. Greenlief, Editor of the Manual of Patent Examining Procedure







Remove Pages Insert Pages
Title Page Title Page
2300-1 through 2300-38 2300-1 through 2300-24
A-7 through A-48 A-7 through A-48
R-1 through R-334 R-1 through R-334
AI-1 through AI-94 AI-1 through AI-92
I-1 through I-112 I-1 through I-112






Particular attention is called to the changes in the following sections:

CHAPTER 2300:

23012309    Chapter 2300 has been rewritten to incorporate the new Board of Patent Appeals and Interferences rules that became effective on September 13, 2004. The rules directed to interferences are in Part 41, Subparts D and E of title 37, Code of Federal Regulations.

 

Thanks to Larry Kasoff of the Seed Intellectual Property Law Group for the tip that the fourth edition had been released.

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United States and Korean Patent Offices Enter Into Agreement on International Search and Examination Services

 United States and Korean Patent Offices Enter Into Agreement on International Search and Examination Services
Part of USPTO effort to reduce backlog of U.S. national patent applications

The U.S. Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) entered into an agreement this week in which KIPO will act as an available international searching and examining authority for international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). The agreement will allow applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examination of international applications. The agreement goes into effect January 1, 2006. Additionally, this action will benefit the ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.


The USPTO receives over 350,000 patent applications per year. If PCT applicants take advantage of the availability of KIPO to perform international searches and examinations, the USPTO can dedicate more resources to reducing the backlog of pending national applications, with the goal of increasing productivity and quality.


Under the terms of the agreement, an applicant designating KIPO as the International Searching Authority (ISA) will pay a search fee of $218 instead of $300 or $1000, as applicable if the USPTO is the ISA. An applicant designating KIPO as the International Preliminary Examining Authority (IPEA) will pay an international examination fee to KIPO equivalent of $218 instead of $600 or $750, as applicable if the USPTO is the IPEA. Applicants filing international applications with the USPTO may, generally, also elect to have them searched and/or examined at the European Patent Office.


The PCT is an international agreement that simplifies the filing of patent applications in its 128 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and KIPO are among the national patent offices authorized to conduct PCT searches and examinations.

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USPTO Expands Telework Program for Patent Employees (21Dec2005)

Posted by J Matthew Buchanan at December 22, 2005 09:57 AM

USPTO Expands Telework Program for Patent Employees
500 patent employees will work from home next year


The Department of Commerce’s United States Patent and Trademark Office (USPTO) has announced a new patents hoteling program, which will offer patent employees the opportunity to work from home regularly. Participants will have all the communications tools and application processing capabilities they need to do their jobs remotely. The program incorporates hoteling, by which participants can reserve time in on-campus “shared offices” to conduct certain business such as interviewing applicants and attorneys, receive training, attend meetings, and use on-site resources as needed.

“The patents hoteling program represents an important commitment to our organization and to our environment,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. “Through this program, we can help boost the quality of life for USPTO employees, help reduce traffic and improve the environment, while continuing to attract and retain the highest quality employees.”

Priority will be given to applicants who are already in the patent telework program or the patent management telework program. In February, the USPTO will begin training and deploying approximately 40 employees every two weeks. The goal is to have 500 patents employees in the program by September 2006.

# # #

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USPTO Co-Sponsors Invention Contest

Posted by J Matthew Buchanan at December 14, 2005 08:32 AM

USPTO Co-Sponsors Invention Contest
$25,000 Top Prize Winner Featured on History Channel - Deadline for Entries: December 31

The United States Patent and Trademark Office is joining the National Inventors Hall of Fame and the History Channel in sponsoring the Modern Marvels Invent Now Challenge. This is a new contest that invites the everyday inventor to share their vision and ingenious design with the world. Twenty-five semi-finalists will have the opportunity to be recognized, have their invention exhibited and receive valuable information to help them realize the full potential of their invention.. The most remarkable invention submitted will be named the 2006 “Modern Marvel of the Year.” The inventor will win $25,000 and be featured on the History Channel during a special Invention Week of Modern Marvels programs. The deadline for entry is December 31.

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USPTO Publishes Patent Search Templates

Posted by J Matthew Buchanan at November 29, 2005 08:58 AM

 

USPTO Publishes Patent Search Templates
New Tool To Enhance Patent Quality by Helping Examiners Do Better-Focused Research



The Department of Commerce’s United States Patent and Trademark Office (USPTO) is building a library of search templates for use by applicants, patent practitioners and patent examiners to assist them in finding evidence, known as prior art, to help determine if an invention is patentable. Similar to a library card catalog, the search templates will direct searchers to information on relevant fields of search, databases and scientific journals considered germane to particular technologies and inventions. The search templates will aid in more thorough prior art searches, which should result in better quality patents.


"These new tools are just part of the USPTO's larger effort to make the U.S. patent examination process even more efficient and effective," noted Under Secretary for Intellectual Property Jon Dudas. "Quality is a shared responsibility. With input and information from our patent examiners and the public, the USPTO can provide a better compilation of relevant resources for all users of America's patent system. Effective search templates will help both the USPTO and the public determine where to find the most relevant prior art more easily and accurately."


An important aspect of examining a patent is the examiner’s review of patent documents, both U.S. and foreign, and other literature related to the invention. During this search, the examiner consults the appropriate patent databases, scientific and technical journals and other printed material, which might disclose the invention claimed in the application. The examiner then can determine the patentability of a claimed invention in light of the prior art discovered by this search.


Thirty-eight templates are available now on the USPTO’s Web site at http://www.uspto.gov/web/patents/searchtemplates/class.htm, and approximately 50 templates will be added to the site each week. When the initial project is completed, about 1,300 search templates covering more than 600 classes and subclasses of technology will be available.

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Comments on Green Paper Concerning Restriction Practice (September 2005) (14Nov2005)

Posted by J Matthew Buchanan at November 14, 2005 05:18 PM

 

As of September 16, 2005, the organizations and persons listed below have submitted comments in response to the Notice of Availability of and Request for Comments on Green Paper Concerning Restriction Practice, first published in the Federal Register at 70 Fed. Reg. 32761 [PDF] (June 6, 2005) and then published in the Official Gazette at 1295 Off. Gaz. Pat. Office 146 (June 28, 2005), and published to announce an extension of the comment period in the Federal Register at 70 Fed. Reg. 45370 [PDF] (August 5, 2005).


It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to Robert.Clarke@uspto.gov, or contact Robert A. Clarke by telephone at (571) 272-7700.


Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.



A. Intellectual Property Organizations

  1. Bar Association of the District of Columbia, Patent, Trademark & Copyright Section [PDF]
  2. Biotechnology Industry Association (BIO) [PDF]
  3. Fédération Internationale des Conseils en Propriété Industrielle [PDF]
  4. Japan Intellectual Property Association (JIPA) [PDF]
  5. National Association of Patent Practitioners (NAPP) [PDF]

B. Government Agencies

  1. National Institutes of Health, Department of Health & Human Services (NIH) [PDF]

C. Corporations

  1. Genentech, Inc. [PDF]
  2. IBM Corporation [PDF]

D. Individuals

  1. Henry, Jon [PDF]
  2. Johnson, Robert T. [PDF]
  3. Juneau, Todd L. [PDF]
  4. Lindeen, Gordon [PDF]
  5. Lindon, James [PDF]
  6. Morgan, Paul F. [PDF]
  7. Parker, Raymond S., III and Knight, Julie Anne [PDF]
  8. Webster, Robert J. [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 02Nov2005] (08Nov2005)

Posted by J Matthew Buchanan at November 9, 2005 11:08 PM

View and/or download a .pdf of this Notice at the link below:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/usps_wilma.pdf

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USPTO Patents Search Templates

Posted by J Matthew Buchanan at November 8, 2005 11:33 AM

 

USPTO Patents Search Templates


This website provides access to templates describing search resources for the classified areas of science and technology found in the USPTO Manual of Classification. When completed, this version of the search template project will present almost 1,300 search templates covering the more than 600 USPC classes and subclasses.



Search Templates Defined

Search templates define the field of search, search tools, and search methodologies which should be considered each time a patent application is examined in that classification area. The templates describe search tools for U.S. and foreign patents and non-patent literature. Additionally, general Internet search tools used by patent examiners are listed.

The search templates are based upon input from patent examiners and other searchers at the USPTO and capture their institutional knowledge of the most relevant prior art search sources for determining the patentability of subject matter in the area of technology. The listed areas represent where (what resources) and how (methodology) most of the prior art considered in the examination process is found during the search process.



Benefits

The templates provide more structure to the search activity and set a standard to measure the completeness of any search. Within USPTO, the templates will be especially valuable to new examiners. The USPTO also plans to use the search templates for a pilot program to outsource U.S. patent searches for PCT applications (Support for Patent Cooperation Treaty (PCT) Search Activity). In addition to the "where to search" information, the search templates provide important guidance on what tools and methodologies; e.g. structure searches (tool) and classified searching, respectively, should be employed in the search process.

Applicants can use the templates in formulating their own pre-examination searches prior to the filing of a U.S. patent application or the submission of a "Petition to Make Special" (based on MPEP § 708.02, subsection VIII. - special examining procedure for certain new applications - accelerated examination).


A long-term objective of this effort is to generate discussion, and ultimately consensus, with respect to what should constitute a proper field of search and use of search tools in conducting a search of various subject matters for purposes of the examination process at the USPTO.



Examiners and Search: Background

A patent examiner is responsible for reviewing prior patent documents, both U.S. and foreign, and other printed literature related to an application's subject matter during the examination process. This review, called the search, is performed by consulting the appropriate classes, and their respective subclasses, in the U.S. classification scheme, and classified and text searches of other patent document databases, or any other printed media (also known as "non-patent literature" or NPL), which might disclose the invention disclosed/claimed in a pending application for a patent. This search may include the use of various search tools or methodologies in the process. Once the search is performed, the examiner determines the patentability of a claimed invention in light of the prior art uncovered by this search.

When determining the appropriate field of search for an invention, the examiner must consider three sources of information: domestic patent documents, foreign patent documents, and NPL. The current requirements for conducting that search are set forth in the Manual of Patent Examining Procedure (MPEP) section 904.02. An examiner may not eliminate any of these resources from consideration unless the examiner can justify to a reasonable certainty that no more pertinent references will be found in a further search. Although the general guidance set forth in the MPEP is accurate, the search templates will provide additional information that expands upon the MPEP's general guidance. For each particular field of subject matter, the search templates will include what resources should be searched, and by which of the available search tools or methodologies. Detailed guidance on the choice and use of specific search tools are left to be established by each Technology Center (see MPEP § 904.02(b)).


Patent examiners are not required to search every listed resource in the examination of every application. Rather, relying upon their professional judgment and assessment of the disclosed and claimed subject matter in the application under consideration, the examiner will determine the most appropriate resources for that application. What the search templates provide is a compilation of the resources found to most frequently discover the most relevant prior art disclosures for the particular subject matter. Searching is highly dependent upon the experience and job knowledge of the individual performing and/or reviewing the search.



Public Comments on the Search Templates


Public comments on the search templates are invited. Comments should address the points enumerated in the Criteria for Evaluating Recommended Search Resources listed below. Comments can be submitted via the Search Template Project e-mail link on each template page or by mail addressed to:


Mail Stop Patents Search Template Comments
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450


Electronic submission is preferred. The Office will respond to comments in writing.



USPTO Criteria for Evaluating Recommended Search Resources

Recommended search resources must be publicly available. The databases and tools will be evaluated based on the criteria listed below. In your submission, please provide as much information as possible on the listed criteria:

  • Class/Subclass combination - Identify the class and subclass range for which you are recommending a resource.

  • Database/Resource identification - Provide the full name and other names (e.g. acronyms or shortened names) by which a database/resource may be identified; the name, address and phone number for the producer; the name, address and phone number for the entity that provides access to the database/resource.

  • Database/Resource scope - Indicate whether this tool is of general or specific use.

  • Content - Years of coverage of the database/resource; subject matter of the database; whether the resource is an abstract or full text database; and whether the bibliographic information includes documented publication dates.

  • Reasons for Recommendation - Specify the reasons for recommending the database for inclusion in the search template, focusing on the specific value of the content and search features of the database.

  • Accessibility - The database/resource must be publicly available. Indicate if there are any restrictions on hours of availability. USPTO must be able to obtain full-text copies of the cited art. The full-text must also be accessible to applicants.

  • Technical support - Availability of technical support and hours of availability.

  • Continuity - Describe the database policy on maintaining backfile data.

  • Mode of Access - e.g. online, web-based, stand-alone system.
Removal of Resources - The public can also suggest that resources be removed from the templates. In this case, the recommender should indicate reasons for removal that focus on coverage, search features, or accessibility.


Updating the Search Templates

The Office will provide periodic updates on the number of published search templates available and the status of the evaluation of public comments. The templates will be updated twice a year.

The search templates will continue to evolve as technologies and search tools evolve. The public will have an ongoing opportunity to comment on how to improve the templates. This process may require several iterations before there is general agreement on the contents of the search templates.

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United States and Australian Patent Offices Launch Pilot Project on International Search and Examination Services

Posted by J Matthew Buchanan at November 6, 2005 11:07 AM

 IP Australia  - flag and Sidney Australia photoUnited States and Australian Patent Offices Launch Pilot Project on International Search and Examination Services
Pilot part of USPTO effort to reduce backlog of U.S. national patent applications

The U.S. Patent and Trademark Office (USPTO) and IP Australia, Australia ’s national patent office, has initiated a pilot project to test the feasibility of IP Australia performing search and examination services for the USPTO on international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).


The pilot, launched last week, is part of ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.


Each year, the USPTO receives nearly 50,000 PCT international applications in addition to over 350,000 national applications. The USPTO is testing whether, by having international applications processed elsewhere, it can dedicate more resources to examining the 600,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.


Under the terms of the pilot project, IP Australia will process 100 PCT applications covering a wide range of technologies. The USPTO will review IP Australia’s work to ensure that it meets USPTO standards for quality and accuracy.


“Efficient and high quality government operations are cornerstones of the President’s Management Agenda and guiding principles for this effort,” said Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “A large backlog is bad for U.S. innovation and bad for the U.S. economy. The ability to reallocate resources from PCT-related activities to search and examination of U.S. national applications will allow us to open another front in our battle to reduce our growing backlog.”


Explaining the benefits of the project for his office, IP Australia Director General Dr. Ian Heath noted that “by assisting the USPTO to process applications filed under the PCT, IP Australia will continue to move towards its vision of being an office of choice.” “This opportunity also provides a means for enhancing our international reputation as a quality International Search and Preliminary Examination Authority under the PCT, providing world-class intellectual property services which promote innovation, investment and international competitiveness for the benefit of all Australians,” Dr. Heath said.


The PCT is an international agreement that simplifies the filing of patent applications in its 128 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and IP Australia are among the national patent offices authorized to conduct PCT searches and examinations.


The pilot project tracks recommendations in the USPTO “21st Century Strategic Plan” and builds on the long history of cooperation between the the USPTO and IP Australia.

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Notification of First Rules Customer Partnership Meeting, November 9, 2005

Posted by J Matthew Buchanan at October 19, 2005 03:08 PM

View and/or download a .pdf of this notice by clicking on the following link:

 

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/firstrules-v10132005.pdf

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United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 27Sept2005]

Posted by J Matthew Buchanan at September 29, 2005 08:11 AM

View and/or download a .pdf of this announcement at the link below:

United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 27Sept2005]

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USPTO Contracts International Patent Application Searches to Commercial Firms Pilot program to determine viability of contracting out U.S. searches

Posted by J Matthew Buchanan at September 22, 2005 07:29 AM

USPTO Contracts International Patent Application Searches to Commercial Firms
Pilot program to determine viability of contracting out U.S. searches

Washington, D.C. - The United States Patent and Trademark Office (USPTO) announced today that it has awarded contracts to Landon IP, Inc., and IP Data Miner Inc., to participate in a Patent Cooperation Treaty (PCT) search pilot program. This pilot will determine whether searches by commercial entities can maintain the accuracy and quality standards for searches conducted by the USPTO during the patent examination process while remaining cost effective.

This year, USPTO expects to receive over 45,000 requests to search and/or examine international applications. USPTO's patent examiners currently do this in addition to the 350,000 U.S. applications the agency receives each year. By outsourcing some of the processing of international applications, the USPTO can focus on reducing the backlog of pending national applications, thus increasing productivity and enhancing quality. Efficient and high quality government operations are cornerstones of the President’s Management Agenda and guiding principles for this effort.

The PCT, an international agreement to which the United States is a party, simplifies filing patent applications in its 128 member states. The USPTO is one of many authorized offices that searches and examines international patent applications filed under the PCT. An international application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT-related search and examination reports to help them determine if an application meets basic patent criteria, such as novelty and non-obviousness, before committing to the high cost of translating and filing an application in one or more PCT countries.

The USPTO is also exploring contracting out some of its PCT-related work, on a pilot basis, to other established government intellectual property offices that currently perform PCT-related searches/examinations. This pilot is expected to begin next month.

Information concerning the existing pilot program is available at http://www.uspto.gov/web/offices/ac/comp/proc/pctsearch/pctsearchhom.html.

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Updated Lists of Exceptions to the Centralized Delivery and Facsimile Transmission Policy for Patent Related Correspondence (signed 19Sept2005)

Posted by J Matthew Buchanan at September 20, 2005 03:48 PM

View and/or download a .pdf of this announcement from the PTO here:

Updated Lists of Exceptions to the Centralized Delivery and Facsimile Transmission Policy for Patent Related Correspondence (signed 19Sept2005)

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UPDATED NOTICE: Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 15Sept2005]

Posted by J Matthew Buchanan at September 16, 2005 11:55 AM

NOTE:  THIS NOTICE SUPERCEDES THE NOTICE SIGNED ON 9–14–05 (available via Rethink(IP) here).

View and/or download the new notice by clicking the link below:

Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 15Sept2005] (15Sep2005) [PDF] (This notice supercedes the one that was signed 09/14/05)

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USPTO To Hold Live On-Line for Independent Inventors

Posted by J Matthew Buchanan at September 15, 2005 04:42 PM

 USPTO To Hold Live On-Line for Independent Inventors

Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line on Tuesday, September 20 , from 2 to 3 pm (EST). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the online will be posted on the home page of the USPTO website at 10 am (EST) on Thursday. Inventors can begin logging on for the on-line at 1:30 pm.


The independent inventor on-line is part of the USPTO's continuing efforts to promote and protect America 's independent inventors. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.


We have transcripts and frequently-asked questions and answers from previous onlines available on the Inventors Resources pages. Check them out and save time — your question may already have an answer waiting for you!

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Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 14Sept2005]

Posted by J Matthew Buchanan at September 14, 2005 05:12 PM

Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 14Sept2005]

 

View and/or download a .pdf at the following link:  http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/oa-katrina.pdf

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Petitions to Accept a Delayed Patent Maintenance Fee Payment where Non-Payment was due to the effects of Hurricane Katrina (signed 09 September 2005)

Posted by J Matthew Buchanan at September 12, 2005 02:12 PM

.pdf file:  http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/mfeekatrina.pdf

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United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a)

Posted by J Matthew Buchanan at September 6, 2005 11:11 AM

The United States Patent and Trademark Office (USPTO) is designating the interruption in service of the United States Postal Service (USPS) in the areas affected by Hurricane Katrina in Louisiana, Mississippi, Alabama, and Florida on August 28, 2005, as a postal service interruption and an emergency within the meaning of 35 U.S.C. section 21(a) and 37 CFR 1.10(i) and 2.195(e).

View a .pdf of the announcement here:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/uspskatrina.pdf

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US Patent Office Scammers

Posted by Douglas Sorocco at September 5, 2005 10:34 AM

An entity or person issuing a document, for example, a "certificate," allegedly by the Chief Financial Officer of the United States Patent and Trademark Office for payment of USPTO fees and lawyer fees is NOT affiliated with the United States Patent and Trademark Office. The United States Patent and Trademark Office does NOT issue such "certificates." If you have any questions, please call the Office of Independent Inventor Programs at (703) 306-5568. (06Nov2001)

An entity doing business as the 'United States Trademark Protection Agency' is NOT affiliated with the United States Patent and Trademark Office. (14Jul2001)

Report or read more about Scams & Fraud (Consumer Sentinel) • FTC: "Facts for Consumers" Invention Promotion Firms Brochure
Report Complaint re: Invention Promoter [PDF] also Fillable PDF version

 
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Comments on Changes to Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005 (August 2005)

Posted by Douglas Sorocco at August 31, 2005 09:38 PM

As of August 25, 2005, the organizations and persons listed below have submitted comments in response to the proposed rule Changes to Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005, published in the Federal Register at 70 Fed. Reg. 35571 [PDF] (June 21, 2005), and in the Official Gazette at 1296 Off. Gaz. Pat. Office 69 (July 12, 2005). It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message at AB79.Comments@uspto.gov, or contact Robert W. Bahr by telephone at (571) 272-8800.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

A. Intellectual Property Organizations

1. American Intellectual Property Law Association (AIPLA) [PDF]

B. Law Firms

1. Oliff & Berridge, PLC [PDF]

C. Individuals

1. Apley, Dick [PDF]
2. Usher, Robert W.J. [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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Reciprocal Access to and Usage of Documents in Application Files of Trilateral Offices [signed 29August2005]

.pdf of preog notice available here:  http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/tda.pdf

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John J. Doll Named Commissioner for Patents

Posted by J Matthew Buchanan at August 21, 2005 11:05 PM

 

U.S. Secretary of Commerce Carlos M. Gutierrez has named John J. Doll to be Commissioner for Patents at the United States Patent and Trademark Office (USPTO). Doll has been Acting Commissioner for Patents since April 2005.

In response to the appointment, Under Secretary of Commerce for Intellectual Property Jon Dudas noted, “I am pleased that the Secretary has chosen John Doll to be the Commissioner for Patents. John has excellent management skills combined with a dedication to outstanding service to the public and a focus on internal reform.”


As Commissioner for Patents, Doll is responsible for the productivity and quality of the work done by more than 4,000 patent examiners, paralegals and other support professionals, for patent examination policy, budget decisions, and for patent-related Information Technology (IT) decisions.


From January – April 2005, Doll served as the Deputy Commissioner for Patent Resources and Planning directing information processing and technology, and budget formulation and execution for patent operations. He previously served as Special Assistant to the Under Secretary. Doll was a group director from 1995-2005 in the technology center responsible for examination of biotechnology, organic chemistry, and pharmaceutical patent applications. He was an integral part of the team responsible for last year’s implementation of the Image File Wrapper (IFW), the USPTO’s electronic patent application processing system.


Doll has received numerous awards throughout his USPTO career, including the Vice Presidential Hammer Award for his work in establishing the Biotech Customer Partnership; a Department of Commerce Gold Medal for his work on the team that implemented IFW; and a Silver Medal for his work on automating patent examiner tools.


During his tenure as a group director, Doll managed the development and implementation of training materials used by patent examiners to apply the enablement provisions of the patent statute in reviewing applications. He also helped develop and implement the guidelines and training materials used by examiners evaluating patent applications for compliance with the utility and written description provisions of patent law.


Doll holds a Bachelor of Science degree from Bowling Green State University in chemistry and physics and a Master of Science degree in physical chemistry from Penn State University. He joined the USPTO in 1974.


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USPTO IMPROVES PROCESS FOR REVIEWING PATENTS

 

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) has implemented new processes for handling reexamination proceedings to improve timeliness and quality. Patent reexamination is a valuable, low-cost alternative to litigation for determining the patentability of the claims in an issued patent. Requests for the USPTO to reexamine a patent can be made as long as written evidence is presented that raises a substantial new question of patentability.


“Timeliness and correctness of decisions in reexamination proceedings are important to providing certainty for all users of the patent system,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “We have a duty to the American public to get reexaminations right and to conduct them with dispatch so they remain an effective tool.”


The USPTO’s goal is that reexaminations that have been pending with an examiner more than two years now will be resolved by October 1, 2005. In addition, all future reexamination proceedings will be completed within a specific timeframe, which is expected to be less than two years. In March 2005 there were over 420 reexaminations that had been pending more than two years and that number would have grown to over 600 by the end of September 2005. Today, fewer than 360 cases remain, with nearly half in the final stages. To ensure the quality of these proceedings, all reexamination decisions now require a thorough review by a panel of supervisors and senior patent examiners. Reexaminations where an initial decision has been made will remain with the examiner originally assigned to the reexamination. All other reexaminations will be reassigned to a newly formed central reexamination unit.


Prior to the new initiative, reexamination cases were assigned to examiners according to technology. Under the new initiative, 20 highly skilled primary examiners who have a full understanding of reexamination practice and relevant case law will concentrate solely on reexamination. The 20-examiner unit began operation earlier this week and all new requests for reexamination will be assigned to them. Using skilled examiners assigned to a single unit will enhance the quality and reduce the time of reexaminations by allowing the USPTO to monitor more effectively the reexamination operations.


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IMPROVED PATENT APPEAL PROCESS WILL SAVE PATENT APPLICANTS $30 MILLION ANNUALLY

 

The Department of Commerce’s U.S. Patent and Trademark Office (USPTO) announced today that patent applicants can now request an appeal conference and learn its results before incurring the costs of drafting and filing an appeal brief. This change is expected to save patent applicants at least $30 million annually.

"This simple reform saves applicants a significant amount of money and reflects the mandate of the President's Management Agenda for citizen-centered and results-oriented government," noted Jon Dudas, under secretary of Commerce for Intellectual Property and Director of the USPTO.

Previously, when an applicant wished to appeal a patent examiner’s rejection of his/her patent application to the Board of Patent Appeals and Interferences (BPAI), the applicant was required to file a notice of appeal and an appeal brief before the appeal to the BPAI. Depending on the complexity of the invention, appeal briefs cost between $5,000 and $20,000 to prepare.

Before the appeal goes to the BPAI docket, however, the agency holds an appeal conference with the examiner handling the application and two other experienced examiners. The purpose of the conference is to determine if the application is ready for appeal. Under the new procedures, an appeal brief isn’t filed until the outcome of the conference is known. If the case is not ready for appeal, applicants will no longer incur the costs associated with needlessly preparing and filing the brief.


For more information on appeal brief procedures, go to: http://www.uspto.gov/web/patents/patog/week28/OG/TOC.htm#ref12.


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New Pre-Appeal Brief Conference Pilot Program

 

United States Patent and Trademark Office OG Notices: 12 July 2005

                New Pre-Appeal Brief Conference Pilot Program

Effective Date: Effective upon publication of this notice

This new program offers applicants an avenue to request that a panel of
examiners formally review the legal and factual basis of the rejections in
their application prior to the filing of an appeal brief. Effective
immediately, the USPTO is offering applicants an optional procedure to
review the examiner's rejection prior to the actual filing of an appeal
brief. The program is intended to spare applicants the added time and
expense of preparing an appeal brief if a panel review determines an
application is not in condition for appeal. Although this procedure will
not be appropriate in every appealed application, in the proper situations
it can save both the resources of the applicant and the Office. Applicants
continue to have available to them the normal practice and procedures
already in effect under Part 41 of the Title 37 of the Code of Federal
Regulations relating to appeals and practice before the Board of Patent
Appeals and Interferences.

Contents
1. General Provisions
2. Conditions Necessary to Request a Panel Review
3. Content of Request
4. Content of Remarks or Arguments
5. USPTO Consideration of the Request
6. Format of Panel Decision
7. Time Periods Before/After a Panel Decision
8. Administrative Matters

1. General Provisions:

. What is this program?

Under the current practice every applicant whose claims have been twice
rejected may appeal the examiner's decision to the Board of Patent Appeals
and Interferences. To do so, the applicant first files a notice of appeal
accompanied by the appropriate fee i within the appropriate time period ii.
Within two months from the date of the filing of the notice of appeal,
applicant must file an appeal brief accompanied by the appropriate fee iii.
Applicants may buy extensions of time for filing the appeal brief.

This pilot program offers applicants an opportunity to request a review
of identified matters on appeal employing an appeal conference currently
employed in the Office, but prior to the filing of an appeal brief. The
goals of the program are (1) to identify the presence or absence of clearly
improper rejections based upon error(s) in facts, or (2) to identify the
omission or presence of essential elements required to establish a prima
facie rejection.

. Who can use this program?

Any applicant who has filed a notice of appeal and who wants a panel of
experienced examiners to perform a detailed review of appealable issues
within a set period of time.

. How to decide if you should request this panel review?

If the applicant feels the rejections of record are clearly not proper
and are without basis, then filing this request may result in a panel
decision that eliminates the need to file an appeal brief. This should be
based upon a clear legal or factual deficiency in the rejections rather than
an interpretation of the claims or prior art teachings. The latter is more
appropriate for the traditional appeal process currently employed by
applicants.

. What happens during a panel review?

A panel of examiners (including the examiner of record) will consider
the merits of each ground of rejection for which appeal has been requested
and will issue a written decision as to the status of the application.

. When should you file an appeal brief or other correspondence?

This program is designed to allow applicants who think there is a clear
deficiency in the prima facie case in support of a rejection to file the
request at the same time that they file a notice of appeal. This affords
the Office the best opportunity to ensure that applicant will promptly
receive a decision on the request. If the request is filed with the notice
of appeal, the period of time for filing the appeal brief will be the later
of the two-month period set in 37 CFR 41.37(a) or one month from the mail
date of the decision on the request.

. What actions will terminate the panel's review?

If applicant files any of the following responses after filing a
request, but prior to a decision by the appointed panel of examiners
assigned to conduct the review, the review process will end and a decision
will not be made on the merits of the request:

- an appeal brief
- a request for continued examination (RCE)
- an after-final amendment
- an affidavit or other evidence
- an express abandonment

A request for the declaration of an interference will also result in
an end to the review process. Applicant will be promptly notified by an
Office communication of termination or of dismissal of the request. If any
of the above-noted actions occur, the period for filing the appeal brief
(if applicable) will be the later of the two-month period set in 37 CFR
41.37(a) or one month from the mail date of the decision on the request.

2. Conditions Necessary to Request a Panel Review:

- Applicant must file a notice of appeal in compliance with 37 CFR
41.31.
- Applicant must file the request with the filing of a notice of appeal
and before the filing of an appeal brief. 1

3. Content of Request:

a. File the request and accompanying arguments in a separate paper
entitled, "Pre-Appeal Brief Request for Review". A sample request form has
been created and is available on the USPTO Internet Website, on the forms
page, as PTO/SB/33.

b. In five (5) or less total pages, provide a succinct, concise and
focused set of arguments for which the review is being requested.

c. File the request with the notice of appeal.

d. Address the notice of appeal and the request to

- Mail Stop AF
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450

- Fax the notice of appeal and the request to the Central FAX Number
(now 571 273-8300)

- Hand carry the notice of appeal and the request to the

USPTO Customer Service Window, ATTN: Mail Stop AF
Randolph Building
401 Dulany Street
Alexandria, VA 22314

e. No after-final or proposed amendments may accompany the request. iv

A request that fails to comply with the above noted submission
requirements may be dismissed.

4. Content of Remarks or Arguments:

The request should specify-

. clear errors in the examiner's rejections; or
. the examiner's omissions of one or more essential elements needed
for a prima facie rejection.

For example, the request should concisely point out that a limitation is
not met by a reference or the examiner failed to show proper motivation for
making a modification in an obviousness rejection (35 U.S.C. 103).
Applicants are encouraged to refer to arguments already of record rather
than repeating them in the request. This may be done by simply referring
to a prior submission by paper number and the relevant portions thereof
(e.g., see paper number 3 at pages 4 to 6). However, references such as
"see the arguments of record" or "see paper number X" are not helpful and
will just obfuscate the real issues for review.

The request may not be more than five (5) pages total and the remarks
should be drafted with the expectation that for a clear error in fact or
other deficiency, a long detailed explanation is not needed. Requests are
limited to appealable, not petitionable matters.

Any actual issues lacking factual basis, including interpretations of
the prior art teachings or claim scope as contrasted with clear error in
facts, are appropriate for the traditional appeal process and submission
of the appeal brief. For grounds where a clear issue on proper interpreta-
tion exists, applicant is advised to proceed to appeal with the timely
filing of the appeal brief. This program is not intended to be, and is
not, an alternative for filing an appeal.

5. USPTO Consideration of the Request:

Upon receipt of a properly filed request, a Technology Center Art Unit
supervisor will designate a panel of examiners experienced in the field of
technology to review the applicant's remarks and the examiner's rejections.
The panel will include at least a supervisor and the examiner of record.
The applicant will not be permitted to attend the review and no interviews
will be granted prior to issuance of the panel's decision.

The panel members will review the rejection(s) identified by applicant in
the request. They will also review the application and the appropriate
evidence in support of the rejections to the extent necessary. The panel
will then decide if an issue for appeal is, in fact, present in the record.
The Office should mail a decision within 45 days of receipt of a properly
filed request.

6. Format of Panel Decision:

After the review is complete, the Office will mail a decision on the
status of the application. The decision will state one of the following:

. Finding 1: The application remains under appeal because there is at
least one actual issue for appeal.
. Finding 2: Prosecution on the merits is reopened and an appropriate
Office communication will follow in due course. In appropriate
circumstances, a proposed amendment may accompany the panel's decision
proposing changes that, if accepted, may result in an indication of
allowability for the contested claim(s).
. Finding 3: The application is allowed on the existing claims and
prosecution remains closed.
. Finding 4: The request fails to comply with the submission
requirements and is dismissed.

The decision will summarize the status of the pending claims (still
rejected, withdrawn rejections, objected to or allowable claims).

A decision by a pre-appeal brief conference panel to withdraw the
rejections of any or all of the claims on appeal is not a decision by a
panel of the Board of Patent Appeals and Interferences, and, as such, would
not result in any patent term extension of adjustment under 35 U.S.C.
Sec. 154(b) (37 CFR 1.701(a)(3) and 1.702(e)).

The decision will not contain any additional grounds of rejection or
any restatement of previously made rejections. Such matters will be
addressed, as appropriate, in the Examiner's Answer.

7. Time Periods Before/After a Panel Decision:

. The request must be filed with the filing of a notice of appeal and
before the filing of the appeal brief. No extensions of time are
available for filing the request for review.
. The time period for filing an appeal brief will be reset to be one
month from mailing of the decision on the request, or the balance of
the two-month time period running from the receipt of the notice of
appeal, whichever is greater. Further, the time period for filing of
the appeal brief is extendible under 37 CFR 1.136 based upon the mail
date of the decision on the request or the receipt date of the notice
of appeal, as applicable. To the extent that any existing USPTO rule
is inconsistent with this pilot program, the rule is waived until
regulations directed to pre-appeal brief conferences are promulgated,
or the pilot program is ended. For example, if a request for a
pre-appeal brief conference is filed with a notice of appeal, the time
period set in 37 CFR 41.37(a)(1) is waived so that an appeal will not
stand dismissed if an appeal brief is not filed within two months of
the filing date of a notice of appeal, but is filed within one month
of the decision on the request.

Applicant's period for filing the appeal brief or other appropriate
response ends on the mailing date of a panel decision that indicates all
claims are allowed or that prosecution is reopened.

8. Administrative Matters:

. Applicants should ensure that requests are mailed or faxed with the
notice of appeal to ensure timely filing. The request should contain
a certificate of mailing or transmission under 37 CFR 1.8 and be listed
on any postcard receipt (MPEP 503).
. No supplemental requests or arguments will be accepted.
. The notice of appeal fee is not refundable, even in the event of a
decision favorable to applicant.
. A request filed after the date of receipt of the notice of appeal will
be dismissed as untimely.
. This procedure does not affect petitions to invoke supervisory
authority under 37 CFR 1.181 because such petitions address procedural
matters, not appealable, matters.
. Panel decisions will not be petitionable because a decision to maintain
a rejection is subject to appeal.
. A pre-appeal brief conference panel decision that the application
remains under appeal is not final agency action for purposes of court
review. An applicant dissatisfied with the result of the appeal
conference must pursue the appeal before the Board of Patent Appeals
and Interferences.
. This process does not apply to reexamination proceedings.
. Following a panel review under this pilot program, the examiner retains
the option to reopen prosecution or to allow an application after the
filing of an appeal brief. This unlikely situation might arise, for
example, where new arguments or evidence are presented in the appeal
brief.
. This pilot program will run for at least six months from its effective
date. The Office may extend, terminate, revise or otherwise take
appropriate action after evaluating its effectiveness at the end of
that period. If the program is to be made permanent, the Office will
promulgate the appropriate changes to title 37 of the Code of Federal
Regulations.

Please direct inquiries with respect to a pending request for a
pre-appeal brief conference to the examiner to whom the patent application
is assigned, or the examiner's immediate supervisor. Please direct comments
and inquiries on this pilot program to Anton Fetting via email addressed
to anton.fetting@uspto.gov. You may also contact Mr. Fetting at
(571) 272-7701.

June 20, 2005 JOSEPH J. ROLLA
Deputy Commissioner for
Patent Examination Policy

1 Under this pilot program, the request must be filed with the notice of
appeal. The Office is considering, as part of a more permanent
implementation of the pre-appeal brief conference program, permitting
applicants to file the request within two months (non-extendable) of the
receipt of the notice of appeal for a fee ($130.00), in which case the
period for filing an appeal brief would simply be the two-month period set
in 37 CFR 41.37(a)(i.e., the mailing of a decision on the request would not
provide any new time period for filing the appeal brief). This procedure
would be included to encourage applicants to file the request with the
notice of appeal and thereby provide the best opportunity for the Office to
provide the decision in a timely manner.

i Set forth in 37 CFR 41.20(b)(1)
ii See 37 CFR 1.134
iii Set forth in 37 CFR 41.20(b)(2)
iv 37 CFR 41.33(a)

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