37 CFR Part 1, Subpart H - Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or After November 29, 1999
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Subject Group 128Prior Art Citations (§ 1.902)
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Subject Group 129Requirements for Inter Partes Reexamination Proceedings (§§ 1.903 - 1.927)
- § 1.903 Service of papers on parties in inter partes reexamination.
- § 1.904 Notice of inter partes reexamination in Official Gazette.
- § 1.905 Submission of papers by the public in inter partes reexamination.
- § 1.906 Scope of reexamination in inter partes reexamination proceeding.
- § 1.907 Inter partes reexamination prohibited.
- § 1.913 Persons eligible to file, and time for filing, a request for inter partes reexamination.
- § 1.915 Content of request for inter partes reexamination.
- § 1.919 Filing date of request for inter partes reexamination.
- § 1.923 Examiner's determination on the request for inter partes reexamination.
- § 1.925 Partial refund if request for inter partes reexamination is not ordered.
- § 1.927 Petition to review refusal to order inter partes reexamination.
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Subject Group 130Inter Partes Reexamination of Patents (§ 1.931)
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Subject Group 131Information Disclosure in Inter Partes Reexamination (§ 1.933)
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Subject Group 132Office Actions and Responses (Before the Examiner) in Inter Partes Reexamination (§§ 1.935 - 1.953)
- § 1.935 Initial Office action usually accompanies order for inter partes reexamination.
- § 1.937 Conduct of inter partes reexamination.
- § 1.939 Unauthorized papers in inter partes reexamination.
- § 1.941 Amendments by patent owner in inter partes reexamination.
- § 1.943 Requirements of responses, written comments, and briefs in inter partes reexamination.
- § 1.945 Response to Office action by patent owner in inter partes reexamination.
- § 1.947 Comments by third party requester to patent owner's response in inter partes reexamination.
- § 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
- § 1.949 Examiner's Office action closing prosecution in inter partes reexamination.
- § 1.951 Options after Office action closing prosecution in inter partes reexamination.
- § 1.953 Examiner's Right of Appeal Notice in inter partes reexamination.
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Subject Group 133Interviews Prohibited in Inter Partes Reexamination (§ 1.955)
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Subject Group 134Extensions of Time, Terminating of Reexamination Prosecution, and Petitions To Revive in Inter Partes Reexamination (§§ 1.956 - 1.958)
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Subject Group 135Appeal to the Patent Trial and Appeal Board in Inter Partes Reexamination (§§ 1.959 - 1.981)
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Subject Group 136Appeal to the United States Court of Appeals for the Federal Circuit in Inter Partes Reexamination (§ 1.983)
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Subject Group 137Concurrent Proceedings Involving Same Patent in Inter Partes Reexamination (§§ 1.985 - 1.995)
- § 1.985 Notification of prior or concurrent proceedings in inter partes reexamination.
- § 1.987 Suspension of inter partes reexamination proceeding due to litigation.
- § 1.989 Merger of concurrent reexamination proceedings.
- § 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
- § 1.993 Suspension of concurrent interference and inter partes reexamination proceeding.
- § 1.995 Third party requester's participation rights preserved in merged proceeding.
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Subject Group 138Reexamination Certificate in Inter Partes Reexamination (§ 1.997)
Title 37 published on 20-Dec-2017 04:15
The following are ALL rules, proposed rules, and notices (chronologically) published in the Federal Register relating to 37 CFR Part 1 after this date.
GPO FDSys XML | Text type regulations.gov FR Doc. 2017-24390 RIN 0651-AD02 Docket No. PTO-P-2015-0056 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. This rule is effective on January 16, 2018. The changes to § 1.18(b)(1) shall apply to those international design applications under the Hague Agreement having a date of international registration on or after January 16, 2018. 37 CFR Parts 1, 41, and 42 The United States Patent and Trademark Office (Office or USPTO) sets or adjusts patent fees as authorized by the Leahy-Smith America Invents Act (Act or AIA). The USPTO operates like a business in that external and internal factors affect the demand for patent products and services. The fee adjustments are needed to provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations (based on current projections), while maintaining momentum towards achieving strategic goals.
GPO FDSys XML | Text type regulations.gov FR Doc. 2017-10870 RIN 0651-AD14 Docket No. PTO-P-2017-0002 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective date: This rule is effective July 1, 2017. Applicability date: The changes in this final rule apply to international applications having an international filing date on or after July 1, 2017. 37 CFR Part 1 The United States Patent and Trademark Office (USPTO or Office) is amending the rules of practice to implement certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT) that will take effect on July 1, 2017, concerning the transmittal by a Receiving Office to an International Searching Authority of documents relating to an earlier search or classification.
GPO FDSys XML | Text type regulations.gov FR Doc. 2016-25966 RIN 0651-AC58 Docket No. PTO-P-2011-0030 DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of proposed rulemaking. Comment Deadline Date: The Office is soliciting comments from the public on this proposed rule change. Written comments must be received on or before December 27, 2016 to ensure consideration. No public hearing will be held. 37 CFR Part 1 The United States Patent and Trademark Office (Office or PTO) is proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings (duty of disclosure) in light of a 2011 decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). The Office previously issued a notice of proposed rulemaking on July 21, 2011, and due to the passage of time since the comment period closed in 2011, the Office considers it appropriate to seek additional comments from our stakeholders before issuing a final rulemaking. In the current notice of proposed rulemaking, the Office is seeking public comments on the rules of practice, as revised in response to the comments received from our stakeholders.
GPO FDSys XML | Text type regulations.gov FR Doc. 2016-23093 RIN 0651-AD02 Docket No. PTO-P-2015-0056 DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of proposed rulemaking. The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before December 2, 2016 to ensure consideration. 37 CFR Parts 1, 41, and 42 The United States Patent and Trademark Office (Office or USPTO) proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act (Act or AIA). The USPTO is a business-like operation where external factors affect the productivity of the workforce and the demand for patent products and services. The proposed fee adjustments are needed to provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations (based on current projections), while maintaining momentum towards achieving strategic goals. This rulemaking represents the second iteration of patent fee rulemaking by the USPTO to set fees under the authority of the AIA; the first AIA patent fee setting rule was published in January 2013. This current rulemaking is a result of the USPTO assessing its costs and fees, as is consistent with federal fee setting standards. Following a biennial review of fees, costs, and revenues that began in 2015, the Office concluded that further targeted fee adjustments were necessary to continue funding patent operations, enhance patent quality, and continue to work toward patent pendency goals, strengthen the Office's information technology (IT) capability and infrastructure, and achieve operating reserve targets. Further, in several instances, the fee change proposals offered during the biennial fee review process were enhanced by the availability of cost and workload data ( e.g., the number of requests for a service) that was not available in 2013. As a result, the 205 proposed fee adjustments outlined in this proposed rule align directly with the Office's strategic goals and four key fee setting policy factors, discussed in detail in Part V.
GPO FDSys XML | Text type regulations.gov FR Doc. 2016-10724 RIN Docket No. PTO-P-2016-0003 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Request for comments. The comment period is open-ended, and comments will be accepted on an ongoing basis. 37 CFR Part 1 The United States Patent and Trademark Office (USPTO) issued the July 2015 Update: Subject Matter Eligibility (July 2015 Update) to provide further guidance to examiners in determining subject matter eligibility under 35 U.S.C. 101. The USPTO announced the July 2015 Update in the Federal Register, and sought public comment on the July 2015 Update. The USPTO has since issued a memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection” in response to those public comments, which is available to the public on the USPTO's Internet Web site. The memorandum seeks to improve examiner correspondence with regard to subject matter eligibility rejections. Further, additional life science examples to assist examiners in making eligibility determinations have been published and are available on the USPTO's Internet Web site. The USPTO is now seeking public comment on subject matter eligibility on an on-going basis.
GPO FDSys XML | Text type regulations.gov FR Doc. 2015-31897 RIN Docket No. PTO-P-2015-0074 DEPARTMENT OF COMMERCE, Patent and Trademark Office Initiation of Pilot Program and Request for Program Topics. Submissions deadline date: To be ensured of consideration, written topic submissions must be received on or before February 12, 2016. 37 CFR Part 1 The United States Patent and Trademark Office (USPTO) is initiating a new pilot program as part of its Enhanced Patent Quality Initiative. Currently, the USPTO performs reviews of applications on target issues for internal quality purposes, referred to as “case studies.” The USPTO now seeks to leverage the experience of its stakeholders to expand the use of case studies to additional quality-related topics. Beginning immediately, stakeholders are invited to submit patent quality-related topics that they believe should be the subject of a case study. After considering the submitted topics, the USPTO will identify which topics will be the subject of upcoming case studies. The USPTO anticipates that the results of these case studies will help it to understand better the quality of its work products and, where appropriate, to take action to remediate quality issues or to formulate best practices to further enhance quality. Such public engagement is sought not only to broaden the scope of quality issues currently studied by the USPTO, but also to continue stakeholder involvement in the quality review process and to maintain a transparent quality enhancement process.
GPO FDSys XML | Text type regulations.gov FR Doc. 2015-27335 RIN 0651-AC95 Docket No. PTO-P-2014-0012 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: The changes in this final rule are effective on November 30, 2015. The revised ADS form (PTO/AIA/14) will be posted on the Office's Web site on or before the effective date. Applicability Date: The changes to 37 CFR 1.14(h) apply to all patent applications filed before November 30, 2015, and to all patent applications filed on or after November 30, 2015. 37 CFR Part 1 The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Current examples of this sharing include the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO). In support of electronic file sharing, the United States Patent and Trademark Office (Office) is revising its rules of practice to include a specific provision by which an applicant can authorize the Office to give a foreign IP office that is a party to an agreement with the Office access to all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign IP office. Previously, for unpublished U.S. patent applications, applicants followed one regulatory provision to provide the Office with authorization for a foreign IP office to access an application-as-filed and followed another regulatory provision to provide the Office with authorization to share the file contents with a foreign IP office. The final rule changes consolidate the specific provisions of the regulations by which applicants give the Office authority to provide a foreign IP office with access to an application in order to satisfy a requirement for information of the foreign IP office. The Office is also revising the rules of practice to indicate there is no fee for providing a foreign IP office with an electronic copy of an application-as-filed or an electronic copy of file contents pursuant to a bilateral or multilateral agreement. Additionally, along with changes to the application data sheet (ADS) form, the final rule changes simplify the process for how applicants provide the Office with the required authorization, thereby reducing the resources applicants must expend to comply with these foreign IP office requirements, and enhance the quality of patent examination.
GPO FDSys XML | Text type regulations.gov FR Doc. 2015-18628 RIN Docket No. PTO-P-2015-0034 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Update; Request for comments. 37 CFR Part 1 The United States Patent and Trademark Office (USPTO) prepared interim guidance (2014 Interim Patent Eligibility Guidance) for use by USPTO personnel in determining subject matter eligibility in view of then-recent decisions by the U.S. Supreme Court (Supreme Court). The USPTO published the 2014 Interim Patent Eligibility Guidance in the Federal Register, and sought public comment on the 2014 Interim Patent Eligibility Guidance. The USPTO has since produced an update pertaining to patent subject matter eligibility titled July 2015 Update: Subject Matter Eligibility, which is available to the public on the USPTO's Internet Web site, in response to the public comment on the 2014 Interim Patent Eligibility Guidance. The July 2015 Update: Subject Matter Eligibility includes a new set of examples and discussion of various issues raised by the public comments, and is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process. The USPTO is now seeking public comment on the July 2015 Update: Subject Matter Eligibility.
GPO FDSys XML | Text type regulations.gov FR Doc. 2015-06397 RIN 0651-AC87 Docket No. PTO-P-2013-0025 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective date: The changes in this final rule take effect on May 13, 2015. Applicability date: The changes to 37 CFR 1.32, 1.46, 1.63, 1.76, and 1.175 in this final rule apply only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012. The changes to 37 CFR 1.53(b) and (c) and 1.57(a)(4) in this final rule apply only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. 37 CFR Parts 1, 3, 5, 11, and 41 Title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”) amends the United States patent laws to implement the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999, (hereinafter “Hague Agreement”) and is to take effect on the entry into force of the Hague Agreement with respect to the United States. Under the Hague Agreement, qualified applicants may apply for design protection in the Contracting Parties to the Hague Agreement by filing a single, standardized international design application in a single language. The United States Patent and Trademark Office is revising the rules of practice to implement title I of the PLTIA.
GPO FDSys XML | Text type regulations.gov FR Doc. 2015-02398 RIN Docket No. PTO-P-2014-0043 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Request for comments; notice of meeting. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before May 6, 2015. The USPTO will hold a Quality Summit on March 25 and 26, 2015 at the Madison Building, USPTO Headquarters, in Alexandria, Virginia. This Summit will be broadcast via webinar and recorded for later viewing. For webinar participants, participation in all Summit sessions, including the group brainstorming sessions, will be possible. See the Supplementary Information section for the proposed agenda. In order to best prepare for the Quality Summit, the USPTO requests that those interested in attending the Quality Summit send an email to WorldClassPatentQuality@uspto.gov indicating their planned attendance by March 18, 2015. 37 CFR Part 1 The United States Patent and Trademark Office (USPTO) is seeking public input and guidance to direct its continued efforts towards enhancing patent quality. These efforts focus on improving patent operations and procedures to provide the best possible work products, to enhance the customer experience, and to improve existing quality metrics. In pursuit of these goals, the USPTO is launching a comprehensive and enhanced quality initiative. This initiative begins with a request for public comments on the set of proposals outlined in this document and will continue with a two-day “Quality Summit” with the public to discuss the outlined proposals. The conversation with the public held at this Quality Summit, complemented by written comments to these proposals, is the first of many steps toward developing a new paradigm of patent quality at the USPTO. Through an active and long-term partnership with the public, the USPTO seeks to ensure the issuance of the best quality patents and provide the best customer service possible.
GPO FDSys XML | Text type regulations.gov FR Doc. 2015-00061 RIN 0651-AC96 Docket No. PTO-P-2014-0023 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective date: The changes to 37 CFR 1.703 in this final rule are effective on January 9, 2015, and the changes to 37 CFR 1.704 in this final rule are effective on March 10, 2015. Applicability date: The changes to 37 CFR 1.703 in this final rule apply to any patent granted before, on, or after January 9, 2015. 37 CFR 1.704 as adopted in this final rule applies to all original applications (other than for a design patent) filed on or after May 29, 2000, and to patents issued on such applications, except that 37 CFR 1.704(c)(12) as adopted in this final rule applies only to applications in which a request for continued examination under 35 U.S.C. 132(b) and 37 CFR 1.114 is filed on or after March 10, 2015, and 37 CFR 1.704(c)(13) as adopted in this final rule applies only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is revising the rules of practice pertaining to patent term adjustment in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Novartis AG v. Lee. The Federal Circuit confirmed in Novartis that any time consumed by continued examination is subtracted in determining the extent to which the period of application pendency exceeds three years, regardless of when the continued examination was initiated. The Federal Circuit, however, decided that the time consumed by continued examination does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. Accordingly, the Office is revising the rules of practice to provide that the time consumed by continued examination does not include the time after a notice of allowance, unless the applicant files a request for continued examination after such allowance. The Office also is revising the rules of practice to provide that the submission of a request for continued examination after any notice of allowance has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application and thus result in a reduction of any period of patent term adjustment. The Office is providing an exception to this patent term adjustment reduction provision for a request for continued examination filed solely to submit information cited in a patent office communication in a counterpart application that is submitted to the Office within thirty days of receipt of the patent office communication. Additionally, the Office is clarifying what papers may be submitted after a notice of allowance without the applicant being considered to have failed to engage in reasonable efforts to conclude processing or examination of the application.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-29414 RIN Docket No. PTO-P-2014-0058 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Examination guidance; request for comments. Effective Date: This Interim Eligibility Guidance is effective on December 16, 2014. This Interim Eligibility Guidance applies to all applications filed before, on or after December 16, 2014. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before March 16, 2015. 37 CFR Part 1 The United States Patent and Trademark Office (USPTO or Office) has prepared interim guidance (2014 Interim Guidance on Patent Subject Matter Eligibility, called “Interim Eligibility Guidance”) for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court (Supreme Court). This Interim Eligibility Guidance supplements the June 25, 2014, Preliminary Examination Instructions in view of the Supreme Court decision in Alice Corp. (June 2014 Preliminary Instructions) and supersedes the March 4, 2014, Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products (March 2014 Procedure) issued in view of the Supreme Court decisions in Myriad and Mayo. The USPTO is seeking public comment on this Interim Eligibility Guidance along with additional suggestions on claim examples for explanatory example sets.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-27032 RIN 0651-AC92 Docket No. PTO-P-2014-0001 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: This final rule is effective on November 14, 2014. The continued prosecution application interim rule published on March 5, 2014 at 79 FR 12384 was effective on March 5, 2014. 37 CFR Part 1 The Leahy-Smith America Invents Act (AIA) revised and streamlined the requirements for the inventor's oath or declaration. In implementing the AIA inventor's oath or declaration provisions, the United States Patent and Trademark Office (Office) provided that an applicant may postpone the filing of the inventor's oath or declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor. The rules pertaining to continued prosecution applications (which are applicable only to design applications) require that the prior nonprovisional application of a continued prosecution application be complete, which requires that the prior nonprovisional application contain the inventor's oath or declaration. The Office published an interim rule on March 5, 2014, to revise the rules pertaining to continued prosecution applications to permit the filing of a continued prosecution application even if the prior nonprovisional application does not contain the inventor's oath or declaration so long as the continued prosecution application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor (continued prosecution application interim rule). The Office received no comments from the public in response to the continued prosecution application interim rule published on March 5, 2014. This final rule adopts as final the amendments to the rules of practice originally set forth in the continued prosecution application interim rule.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-27037 RIN 0651-AC93 Docket No. PTO-P-2014-0003 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: This final rule is effective on November 14, 2014. The prioritized examination interim rule published on March 5, 2014 at 79 FR 12386 was effective on March 5, 2014. Applicability Date: The changes to 37 CFR 1.102 apply only to applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, in which a first action has not been mailed. 37 CFR Part 1 The Leahy-Smith America Invents Act includes provisions for prioritized examination of patent applications (also referred to as “Track I”), which have been implemented by the United States Patent and Trademark Office (Office) in previous rulemakings. The Office published an interim rule on March 5, 2014 (prioritized examination interim rule), to simplify the Track I prioritized examination practice to reduce the number of requests for prioritized examination that must be dismissed. In order to enable rapid processing and examination of those applications, the previous rulemakings provided that a request for Track I prioritized examination requires, upon filing of the application, an inventor's oath or declaration and all required fees, and that the application contain no more than four independent claims, thirty total claims, and no multiple dependent claims. If a request for Track I prioritized examination failed to meet these requirements on filing, then the request was dismissed. After operating under the previous rulemakings for some time, the Office determined that the time period for meeting the identified requirements could be expanded and still enable the Office to timely examine the patent application. Hence, on March 5, 2014, the Office published the prioritized examination interim rule to expand the time period for meeting the identified requirements. The Office received no comments from the public in response. This final rule adopts as final the amendments to the rules of practice originally set forth in the prioritized examination interim rule.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-24891 RIN 0651-AC98 Docket No. PTO-P-2014-0045 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective Date: The changes in this final rule are effective on October 22, 2014. 37 CFR Parts 1, 2, 7, 11, 41, and 42 The United States Patent and Trademark (Office) is revising the rules of practice to change the phrase Express Mail or EXPRESS MAIL® to Priority Mail Express® due to the United States Postal Service (USPS) renaming Express Mail® to Priority Mail Express® on July 28, 2013, and to make other changes to conform the nomenclature used in the rules of practice to the current nomenclature used by the USPS.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-16062 RIN 0651-AC95 Docket No. PTO-P-2014-0012 DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of proposed rulemaking. Written comments must be received on or before September 9, 2014. 37 CFR Part 1 The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Current examples of this sharing include the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO). In support of electronic file sharing, the United States Patent and Trademark Office (Office) is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the Office to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office. Currently, for unpublished U.S. patent applications, applicants follow one regulatory provision to provide the Office with authorization for a foreign IP office to access an application-as-filed via a PDX program and follow another regulatory provision to provide the Office with authorization to share the file contents with a foreign IP office. The proposed changes to the rules will consolidate the specific provisions of the regulations by which applicants give the Office authority to provide a foreign IP office with access to an application in order to satisfy a requirement for information of the foreign IP office. Additionally, along with changes to the application data sheet (ADS) form, the proposed rule changes will simplify the process for how applicants provide the Office with the required authorization, thereby reducing the resources applicants must expend to comply with these foreign IP office requirements, and enhance the quality of patent examination.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-14186 RIN 0651-AC96 Docket No. PTO-P-2014-0023 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of proposed rulemaking. Comment Deadline Date: Written comments must be received on or before August 18, 2014. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is proposing changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Novartis AG v. Lee. The Federal Circuit confirmed in Novartis that any time consumed by continued examination is subtracted in determining the extent to which the period of application pendency exceeds three years, regardless when the continued examination was initiated. The Federal Circuit, however, decided that the time consumed by continued examination does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. The Office is proposing changes to the rules of practice to provide that the time consumed by continued examination does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. The Office also is proposing changes to the rules of practice to provide that the submission of a request for continued examination after a notice of allowance has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application and thus result in a reduction of any period of patent term adjustment.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-11131 RIN 0651-AC84 Docket No. PTO-P-2013-0006 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective Date: This final rule is effective on May 15, 2014. The interim rule, published April 1, 2013, at 78 FR 19416, was effective on April 1, 2013. Applicability Date: The amendments to 37 CFR 1.702, 1.703, and 1.705 apply to any patent granted on or after January 14, 2013. The amendment to 37 CFR 1.704 applies to any application in which a notice of allowance was mailed on or after April 1, 2013. The optional procedure for requesting a patent term adjustment recalculation applies only to patents issued between January 14, 2013, and May 20, 2014, that resulted directly from international applications, and the request must be filed no later than July 31, 2014. 37 CFR Part 1 Section 1(h) of the Act to correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code (AIA Technical Corrections Act) revised the patent law provisions pertaining to patent term adjustment. Section 1(h) of the AIA Technical Corrections Act revised the date from which the fourteen-month patent term adjustment period is measured, and clarified the date from which the three-year patent term adjustment period is measured, with respect to international applications filed under the Patent Cooperation Treaty. Under section 1(h) of the AIA Technical Corrections Act, the fourteen-month patent term adjustment period and the three-year patent term adjustment period is measured from the same date: the date on which an application was filed under 35 U.S.C. 111(a) in an application under 35 U.S.C. 111; or the date of commencement of the national stage under 35 U.S.C. 371 in an international application. Section 1(h) of the AIA Technical Corrections Act also revised the provisions for notifying applicants of patent term adjustment determinations and revised the time period for requesting reconsideration and judicial review of the Office's patent term adjustment determinations and decisions. The United States Patent and Trademark Office (Office) published an interim rule on April 1, 2013 (patent term adjustment interim rule), amending the rules of practice to implement the changes to the patent term adjustment provisions in section 1(h) of the AIA Technical Corrections Act. This final rule adopts as final the amendments to the rules of practice originally set forth in the patent term adjustment interim rule. The Office is further providing an optional procedure for requesting a recalculation of patent term adjustment, as an alternative to the petition and fee otherwise required to request reconsideration of a patent term adjustment determination, for patents issued between January 14, 2013 (the date of enactment of the AIA Technical Corrections Act) and May 20, 2014 (patents issued on or after this date will have patent term adjustment determinations consistent with the AIA Technical Corrections Act) that resulted directly from international applications. The Office is providing this optional procedure for requesting a recalculation of patent term adjustment because the Office has experienced a significant delay in modifying the computer program used to calculate patent term adjustment with respect to the changes resulting from the AIA Technical Corrections Act.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-05281 RIN Docket No. PTO-P-2014-0004 DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of public hearings and extension of period for requesting to testify. Public Hearing Dates: The first public hearing will take place on March 13, 2014, from 1 p.m. Eastern Daylight Time (EDT) until 4 p.m. EDT, in Alexandria, Virginia. The second public hearing will take place on March 26, 2014, from 9 a.m. Pacific Daylight Time (PDT) until noon PDT, in San Francisco, California. Requests To Provide Oral Testimony: Those wishing to provide oral testimony must submit a request to do so in writing no later than March 12, 2014. Members of the public who wish to attend solely to observe need not submit a request to attend. 37 CFR Part 1 The United States Patent and Trademark Office (Office) published a notice on January 24, 2014, proposing changes to the rules of practice to require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent, and seeking written comments on the proposed changes. This initiative is one of a number of executive actions issued by the Administration that are designed to ensure issuance of the highest-quality patents, enhance competition by providing the public with more complete information about the competitive environment in which innovators operate, improve market efficiency for patent rights by making patent ownership information more readily and easily available, reduce abusive patent litigation by helping the public defend itself against frivolous litigation, and level the playing field for innovators. The Office published a notice on February 20, 2014 indicating that it was conducting two public hearings to introduce the proposed changes and directly receive feedback from the public. The notice published on February 20, 2014 also extended the period for comment on the proposed rules until April 24, 2014. The Office is now extending the deadline for requesting to testify at either public hearing until March 12, 2014.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-04807 RIN 0651-AC92 Docket No. PTO-P-2014-0001 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Interim rule. Effective Date: March 5, 2014. Comment Deadline Date: Written comments must be received on or before May 5, 2014. 37 CFR Part 1 The Leahy-Smith America Invents Act (AIA) revised and streamlined the requirements for the inventor's oath or declaration. In implementing the AIA inventor's oath or declaration provisions, the United States Patent and Trademark Office (Office) provided that an applicant may postpone the filing of the inventor's oath or declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor. The rules pertaining to continued prosecution applications (which are applicable only to design applications) require that the prior nonprovisional application of a continued prosecution application be complete, which requires that the prior nonprovisional application contain the inventor's oath or declaration. This interim rule revises the rules pertaining to continued prosecution applications to permit the filing of a continued prosecution application even if the prior nonprovisional application does not contain the inventor's oath or declaration if the continued prosecution application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-04806 RIN 0651-AC93 Docket No. PTO-P-2014-0003 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Interim rule. Effective Date: March 5, 2014. Applicability Date: The changes to 37 CFR 1.102 apply only to applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, in which a first action has not been mailed. Comment Deadline Date: Written comments must be received on or before May 5, 2014. 37 CFR Part 1 The Leahy-Smith America Invents Act includes provisions for prioritized examination of patent applications (also referred to as “Track I”), which have been implemented by the United States Patent and Trademark Office (Office) in previous rulemakings. This interim rule simplifies the Track I prioritized examination practice to reduce the number of requests for prioritized examination that must be dismissed. In order to enable rapid processing and examination of those applications, the previous rulemakings provided that an application having a request for Track I prioritized examination requires, upon filing of the application, an inventor's oath or declaration and all required fees, and contains no more than four independent claims, thirty total claims, and no multiple dependent claims. Accordingly, any request for Track I prioritized examination not meeting all of the requirements on filing must be dismissed. The Office has found that many such dismissals are due to the application as filed not including a properly executed inventor's oath or declaration, not including the excess claims fees or application size fee due, or improperly including a multiple dependent claim or claims in excess of the permitted number. The Office has determined that the time periods for meeting those requirements when filing a request for Track I prioritized examination could be expanded while maintaining the Office's ability to timely examine the patent application.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-03629 RIN Docket No. PTO-P-2014-0004 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of public hearings and extension of comment period. Public Hearing Dates: The first public hearing will take place on March 13, 2014, from 1 p.m. Eastern Daylight Time (EDT) until 4 p.m. EDT, in Alexandria, Virginia. The second public hearing will take place on March 26, 2014, from 9 a.m. Pacific Daylight Time (PDT) until noon PDT, in San Francisco, California. Requests to Provide Oral Testimony: Those wishing to provide oral testimony at either public hearing must submit a request to do so in writing no later than February 28, 2014. Members of the public who wish to attend solely to observe need not submit a request to attend. Comment Deadline Date: To be ensured of consideration, written comments on the proposed changes to the rules of practice to require identification of the attributable owner must be received on or before April 24, 2014. 37 CFR Part 1 The United States Patent and Trademark Office (Office) published a notice on January 24, 2014, proposing changes to the rules of practice to require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent, and seeking written comments on the proposed changes. This initiative is one of a number of executive actions issued by the Administration that are designed to ensure issuance of the highest-quality patents, enhance competition by providing the public with more complete information about the competitive environment in which innovators operate, improve market efficiency for patent rights by making patent ownership information more readily and easily available, reduce abusive patent litigation by helping the public defend itself against frivolous litigation, and level the playing field for innovators. The Office is conducting two public hearings to discuss these proposed changes. The public hearings are an additional way for the Office to introduce the proposed changes and directly receive feedback from the public. The Office also is extending the period for public comment on the proposed changes until April 24, 2014, to provide interested members of the public with additional time to submit written comments.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-01195 RIN 0651-AC90 Docket No. PTO-P-2013-0040 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of proposed rulemaking. Comment deadline date: Written comments must be received on or before March 25, 2014. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is proposing changes to the rules of practice to facilitate the examination of patent applications and to provide greater transparency concerning the ownership of patent applications and patents. This initiative is one of a number of executive actions issued by the Administration that are designed to ensure the highest-quality patents, enhance competition by providing the public with more complete information about the competitive environment in which innovators operate, enhance technology transfer and reduce the costs of transactions for patent rights by making patent ownership information more readily and easily available, reduce abusive patent litigation by helping the public defend itself against frivolous litigation, and level the playing field for innovators. The Office is proposing in this document to require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent. The Office is specifically proposing that the attributable owner be identified on filing of an application (or shortly thereafter), when there is a change in the attributable owner during the pendency of an application, at the time of issue fee and maintenance fee payments, and when a patent is involved in supplemental examination, ex parte reexamination, or a trial proceeding before the Patent Trial and Appeal Board (PTAB). The Office is also seeking comments on whether the Office should enable patent applicants and owners to voluntarily report licensing offers and related information to the Office, which the Office will then make available to the public in an accessible online format.
GPO FDSys XML | Text type regulations.gov FR Doc. 2014-00729 RIN 0651-AC87 Docket No. PTO-P-2013-0025 DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of extension of public comment period. The comment deadline announced in the proposed rule published on November 29, 2013 (78 FR 71870) has been extended. To be ensured of consideration, written comments must be received on or before Tuesday, February 4, 2014. 37 CFR Parts 1, 3, 5 and 11 The United States Patent and Trademark Office (“USPTO” or “Office”) published a notice of proposed rulemaking to change the rules of practice to implement Title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”). Title I of the PLTIA amends the patent laws to implement the provisions of the 1999 Geneva Act of the Hague Agreement and is to take effect on the entry in force of the Hague Agreement with respect to the United States. On January 14, 2014, the Office conducted a public forum at the Alexandria, Virginia headquarters to discuss the proposed rules. The USPTO is extending the comment period in order to provide interested members of the public with additional time to submit written comments to the USPTO.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-30785 RIN Docket No. PTO-C-2013-0059 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of meeting. Event: The USPTO will hold a forum in Alexandria, Virginia, on January 14, 2014, beginning at 9:00 a.m. Eastern Standard Time (EST), and ending at 12:00 p.m. EST. Registration: Registration for the forum is requested by December 31, 2013. 37 CFR Parts 1, 3, 5 and 11 The United States Patent and Trademark Office (“USPTO” or “Office”) is convening a forum to discuss implementation of title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”). The PLTIA amends the patent laws to implement the provisions of the 1999 Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs (“Hague Agreement”) and is to take effect on the entry into force of the Hague Agreement with respect to the United States. On November 29, 2013, the Office published a proposed rule in the Federal Register proposing changes to the rules of practice to implement title I of the PLTIA and seeking written comments on the proposals. The forum is an additional way for the public to learn about the Office's proposals in advance of the written comment deadline.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-29523 RIN 0651-AC85 Docket No. PTO-P-2013-0007 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule; correction. Effective Date: December 18, 2013. 37 CFR Part 1 The United States Patent and Trademark Office (Office) published in the Federal Register on October 21, 2013, a final rule revising the rules of practice in patent cases for consistency with the changes in the Patent Law Treaty (PLT) and provisions of the Patent Law Treaties Implementation Act of 2012 (PLTIA) that implement the PLT (PLT Final Rule). The PLT Final Rule as published in the Federal Register inadvertently omits the small and micro entity fee amounts for certain petitions and contains a cross-reference to a section that has been removed. This document corrects the omission and removes the cross-reference in the PLT Final Rule as published in the Federal Register .
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-28262 RIN 0651-AC87 Docket No. PTO-P-2013-0025 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of proposed rulemaking. Comment Deadline Date: Written comments must be received on or before January 28, 2014. 37 CFR Parts 1, 3, 5 and 11 Title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”) amends the patent laws to implement the provisions of the 1999 Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs (“Hague Agreement”) and is to take effect on the entry into force of the Hague Agreement with respect to the United States. The Hague Agreement provides that an applicant is entitled to apply for design protection in Hague Agreement member countries and with intergovernmental organizations by filing a single, standardized international design application in a single language. The United States Patent and Trademark Office (USPTO or Office) proposes changes to the rules of practice to implement title I of the PLTIA.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-24471 RIN 0651-AC85 Docket No. PTO-P-2013-0007 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective date: December 18, 2013. Applicability date: The changes to 37 CFR 1.1, 1.4, 1.5, 1.6, 1.7, 1.17, 1.20, 1.23, 1.25, 1.29, 1.33, 1.51, 1.52, 1.54, 1.55(b) through (e) and (h), 1.57(b) through (i), 1.58, 1.72, 1.76(d)(2), (f) and (g), 1.78, 1.83, 1.85, 1.131, 1.136, 1.137, 1.138, 1.197, 1.290, 1.311, 1.366, 1.378, 1.452, 1.550, 1.809, 1.958, 3.11, 3.31, and 11.18, and the removal of 37 CFR 1.317, apply to any patent application filed before, on, or after December 18, 2013, to any patent resulting from an application filed before, on, or after December 18, 2013, and to any reexamination proceeding and any request for supplemental examination filed before, on, or after December 18, 2013. The changes to 37 CFR 1.16, 1.53(b) and (c), 1.57(a), 1.76(b)(3), and 1.81 apply only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. The changes to 37 CFR 1.53(f) and 1.495 apply only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012. The changes to 37 CFR 1.55(f) and 37 CFR 1.704 apply only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013. 37 CFR Parts 1, 3 and 11 The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. This final rule revises the rules of practice for consistency with the changes in the PLT and title II of the PLTIA. The United States Patent and Trademark Office (Office) is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking. The notable changes in the PLT and title II of the PLTIA pertain to: The filing date requirements for a patent application; the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. This final rule also revises the patent term adjustment provisions to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application, and contains miscellaneous changes pertaining to the supplemental examination, inventor's oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA).
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-07955 RIN 0651-AC85 Docket No. PTO-P-2013-0007 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of proposed rulemaking. Comment Deadline Date: Written comments must be received on or before June 10, 2013. 37 CFR Parts 1 and 3 The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. This notice proposes changes to the rules of practice for consistency with the changes in the PLT and title II of the PLTIA. The United States Patent and Trademark Office (Office) is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking. The notable changes in the PLT and title II of the PLTIA pertain to: (1) The filing date requirements for a patent application; (2) the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and (3) the restoration of the right of priority to a foreign application or the benefit of a provisional application via the permitting of a claim to priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-07382 RIN 0651-AC81 Docket No. PTO-C-2012-0034 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: May 3, 2013. 37 CFR Parts 1, 2, 7, 10, 11 and 41 The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association's (ABA) Model Rules of Professional Conduct (ABA Model Rules), which were published in 1983, substantially revised in 2003 and updated through 2012. The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings. These changes will enable the Office to better protect the public while also providing practitioners with substantially uniform disciplinary rules across multiple jurisdictions.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-07429 RIN 0651-AC84 Docket No. PTO-P-2013-0006 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Interim final rule. Effective date: April 1, 2013. Applicability date: The changes to 37 CFR 1.702, 1.703, and 1.705 in this interim rule apply to any patent granted on or after January 14, 2013. The change to 37 CFR 1.704 in this interim rule applies to any application in which a notice of allowance was mailed on or after April 1, 2013. Comment deadline date: Written comments must be received on or before May 31, 2013. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is revising the rules of practice to implement the changes to the patent term adjustment provisions in section 1(h) of the Act to correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code (AIA Technical Corrections Act). Section 1(h) of the AIA Technical Corrections Act revises the date from which the fourteen-month patent term adjustment period is measured, and clarifies the date from which the three-year patent term adjustment period is measured, with respect to international applications filed under the Patent Cooperation Treaty. Under section 1(h) of the AIA Technical Corrections Act, the fourteen-month patent term adjustment period and the three-year patent term adjustment period will be measured from the same date: the date on which an application was filed under 35 U.S.C. 111(a) in an application under 35 U.S.C. 111; or the date of commencement of the national stage under 35 U.S.C. 371 in an international application. Section 1(h) of the AIA Technical Corrections Act also revises the provisions for notifying applicants of patent term adjustment determinations and for requesting reconsideration and judicial review of the Office's patent term adjustment determinations and decisions.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-06362 RIN 0651-AC86 Docket No. PTO-C-2013-0010 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Interim rule. Effective March 20, 2013. Comment deadline date: Written comments must be received on or before May 20, 2013. 37 CFR Parts 1 and 41 The United States Patent and Trademark Office (Office) is correcting final regulations that were published in the Federal Register on January 18, 2013 (78 FR 4212) (“Fee Setting final rule”) to set and adjust patent fees as authorized by the Leahy-Smith America Invents Act (“AIA”). The Fee Setting rule became effective on March 19, 2013 (except that certain regulations relating to international applications become effective on January 1, 2014). This rulemaking corrects those final regulations to revise minor inconsistencies within the Fee Setting final rule or arising from other recent rulemakings under the AIA. It also corrects minor inconsistencies with a few of the Regulations under the Patent Cooperation Treaty (PCT) and typographical errors.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-05815 RIN 0651-AC77 Docket No. PTO-P-2012-0015 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule; correction. Effective March 16, 2013. 37 CFR Part 1 The United States Patent and Trademark Office (Office) published in the Federal Register of February 14, 2013, a final rule revising the rules of practice in patent cases for consistency with, and to address the examination issues raised by, the changes in the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA) (First Inventor to File Final Rule). Due to a technical issue, the First Inventor to File Final Rule as published in the Federal Register is missing text in the provisions pertaining to claims for priority to a foreign application in an application filed under the Patent Cooperation Treaty (PCT). This document corrects the omission in the First Inventor to File Final Rule as published in the Federal Register .
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-03453 RIN 0651-AC77 Docket No. PTO-P-2012-0015 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective date: The changes in this final rule are effective on March 16, 2013. Applicability date: The changes to 37 CFR 1.55 and 1.78 apply to any application filed under 35 U.S.C. 111 or 363 on or after March 16, 2013. The provisions of 1.17 and 37 CFR 1.293 through 1.297 as in effect on March 15, 2013, apply to any request for a statutory invention registration filed prior to March 16, 2013. New 37 CFR 1.109 applies to any application for patent, and to any patent issuing thereon, that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013, and to any application for patent, and to any patent issuing thereon, that contains, or contained at any time, a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013. 37 CFR Part 1 The Leahy-Smith America Invents Act (AIA) amends the patent laws pertaining to the conditions of patentability to convert the U.S. patent system from a “first to invent” system to a “first inventor to file” system; treats U.S. patents and U.S. patent application publications as prior art as of their earliest effective U.S., foreign, or international filing date; eliminates the requirement that a prior public use or sale be “in this country” to be a prior art activity; and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The AIA also repeals the provisions pertaining to statutory invention registrations. The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice in patent cases for consistency with, and to address the examination issues raised by, the changes in section 3 of the AIA.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-03450 RIN Docket No. PTO-P-2012-0024 DEPARTMENT OF COMMERCE, Patent and Trademark Office Examination guidelines. Effective March 16, 2013. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is publishing examination guidelines concerning the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the patent laws pertaining to the conditions of patentability to convert the U.S. patent system from a “first to invent” system to a “first inventor to file” system, treats patents and patent application publications as prior art as of their earliest effective U.S., foreign, or international filing date, eliminates the requirement that a prior public use or sale activity be “in this country” to be a prior art activity, and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The changes to the conditions of patentability in the AIA result in greater transparency, objectivity, predictability, and simplicity in patentability determinations. The Office is providing these examination guidelines to Office personnel, and notifying the public of these guidelines, to assist in the implementation of the first inventor to file provisions of the AIA. These examination guidelines also clarify, in response to the public comment, that there is no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure (e.g., inventor discloses his invention at a trade show and the intervening disclosure is in a peer-reviewed journal). Additionally, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply. These guidelines also clarify that the exception applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor.
GPO FDSys XML | Text type regulations.gov FR Doc. 2013-00819 RIN 0651-AC54 Docket No. PTO-C-2011-0008 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. This rule is effective on March 19, 2013, except for amendments to § 1.18(a)(1), (b)(1), (c)(1), and (d)(1) (patent issue and publication fees); § 1.21(h)(1) (fee for recording a patent assignment electronically); § 1.482(a)(1)(i)(A), (a)(1)(ii)(A), and (a)(2)(i) (international application filing, processing and search fees); and § 1.445(a)(1)(i)(A), (a)(2)(i), (a)(3)(i), and (a)(4)(i) (international application transmittal and search fees), which will be effective on January 1, 2014. 37 CFR Parts 1, 41, and 42 The United States Patent and Trademark Office (Office or USPTO) sets or adjusts patent fees in this rulemaking as authorized by the Leahy-Smith America Invents Act (Act or AIA). The fees will provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations, while helping the Office implement a sustainable funding model, reduce the current patent application backlog, decrease patent application pendency, improve patent quality, and upgrade the Office's patent business information technology (IT) capability and infrastructure. The fees also will further key policy considerations. The Office also reduces fees for micro entities under section 10(b) of the Act by 75 percent in this rulemaking and extends the existing fee discount of 50 percent for small entities to additional fees in this rulemaking.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-30674 RIN 0651-AC78 Docket No. PTO-P-2011-0016 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective March 19, 2013. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA). Certain patent fees set or adjusted under the fee setting authority in the AIA will be reduced by seventy-five percent for micro entities. The Office is revising the rules of practice to set out the procedures pertaining to claiming micro entity status, paying patent fees as a micro entity, notification of loss of micro entity status, and correction of payments of patent fees paid erroneously in the micro entity amount. In a separate rulemaking, the Office is in the process of proposing to set or adjust patent fees under the Leahy-Smith America Invents Act, including setting fees for micro entities with a seventy-five percent reduction. The Office has sought to address the concerns of its stakeholders as expressed in the public comment, and plans to seek additional public comment on the micro entity provisions after the Office and the public have gained experience with the micro entity procedures in operation. The Office will pursue further improvements to the micro entity procedures in light of the public comment and its experience with the micro entity procedures.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-25355 RIN 0651-AC81 Docket No. PTO-C-2012-0034 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of proposed rulemaking. To be ensured of consideration, written comments must be received on or before December 17, 2012. 37 CFR Parts 1, 2, 7, 10, 11 and 41 The United States Patent and Trademark Office (Office or USPTO) proposes to align the USPTO's professional responsibility rules with those of most other U.S. jurisdictions by replacing the current Patent and Trademark Office Code of Professional Responsibility, adopted in 1985, based on the 1980 version of the Model Code of Professional Responsibility of the American Bar Association (“ABA”), with new USPTO Rules of Professional Conduct, which are based on the Model Rules of Professional Conduct of the ABA, which were published in 1983, substantially revised in 2003 and updated through 2011. Changes approved by the ABA House of Delegates in August 2012 have not been incorporated in these proposed rules. The Office also proposes to revise the existing procedural rules governing disciplinary investigations and proceedings.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-25042 RIN 0651-AC77 Docket No. s.: PTO-P-2012-0015 and PTO-P-2012-0024 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Request for comments; reopening of the comment period. The deadline for receipt of written comments in response to the notice of proposed rulemaking published July 26, 2012 (77 FR 43742) and notice of proposed examination guidelines published July 26, 2012 (77 FR 43759) is November 5, 2012. 37 CFR Part 1 The United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions the Leahy-Smith America Invents Act (AIA). The USPTO also conducted a roundtable to obtain public input from organizations and individuals on issues relating to the USPTO's proposed implementation of the FITF provisions of the AIA. The Office has received several requests for additional time to submit comments on the USPTO's implementation of the FITF provisions of the AIA. The USPTO is reopening the comment period to provide interested members of the public with an additional opportunity to submit comments to the USPTO.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-21698 RIN 0651-AC54 Docket No. PTO-C-2011-0008 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of proposed rulemaking. The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before November 5, 2012 to ensure consideration. 37 CFR Parts 1, 41, and 42 The United States Patent and Trademark Office (Office or USPTO) proposes to set or adjust patent fees as authorized by the Leahy-Smith America Invents Act (Act or AIA). The proposed fees will provide the Office with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations, while helping the Office implement a sustainable funding model, reduce the current patent application backlog, decrease patent pendency, improve patent quality, and upgrade the Office's patent business information technology (IT) capability and infrastructure. The Office also proposes to reduce fees for micro entities under section 10(b) of the Act (75 percent discount). The proposed fees also will further key policy considerations. For example, the proposal includes multipart and staged fees for requests for continued examination and appeals, both of which aim to increase patent prosecution options for applicants.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-21974 RIN 0651-AC55 PTO-C-2011-0007 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. This final rule is effective on October 5, 2012. 37 CFR Parts 1 and 41 The United States Patent and Trademark Office (Office or USPTO) is adjusting certain patent fee amounts for fiscal year 2013 to reflect fluctuations in the Consumer Price Index (CPI). The patent statute provides for the annual CPI adjustment of patent fees set by statute to recover the higher costs associated with doing business as reflected by the CPI.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-20238 RIN 0651-AC63 Docket No. PTO-P-2011-0058 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective date: This final rule is effective September 17, 2012. Applicability date: The amendments to 37 CFR 1.703 in this final rule are applicable to any application in which a notice of allowance is issued on or after September 17, 2012, and any patent issuing thereon. The amendment to 37 CFR 1.704 is applicable with respect to the filing of an appeal brief in any application in which a notice of appeal under 37 CFR 41.31 is filed on or after September 17, 2012. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is revising the patent term adjustment provisions of the rules of practice in patent cases to better reflect the period of appellate review. The patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) provide for patent term adjustment if, inter alia, the issuance of the patent was delayed due to appellate review by the Board of Patent Appeals and Interferences (Board) or by a Federal court, and the patent was issued under a decision in the review reversing an adverse determination of patentability. The Office is specifically revising the rules of practice to indicate that the period of appellate review under the patent term adjustment provisions of the AIPA begins when jurisdiction over the application passes to the Board rather than the date on which a notice of appeal to the Board is filed.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-17900 RIN 0651-AC70 Docket No. PTO-P-2011-0082 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: The changes in this final rule take effect on September 16, 2012. 37 CFR Parts 1, 42 and 90 The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (“AIA”) that provide for trials before the Patent Trial and Appeal Board (Board). This final rule provides a consolidated set of rules relating to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This final rule also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-17907 RIN 0651-AC68 Docket No. PTO-P-2011-0074 DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: The changes in this final rule take effect on September 16, 2012. Applicability Date: The changes to 37 CFR 1.9, 1.12, 1.14, 1.17(g), 1.27, 1.32, 1.33, 1.36, 1.41, 1.42, 1.43, 1.45, 1.46, 1.53(f) and (h), 1.55, 1.56, 1.63, 1.64, 1.66, 1.67, 1.76, 1.78, 1.81, 1.105, 1.131, 1.153, 1.162, 1.172, 1.175, 1.211, 1.215, 1.321, 1.421, 1.422, 1.424, 1.431, 1.491, 1.495(a), (c), and (h), 1.497, 3.31, 3.71, 3.73, and 41.9, and the removal of 37 CFR 1.47 and 1.432, apply only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012. 37 CFR Parts 1, 3, 5, 10, and 41 The United States Patent and Trademark Office (Office) is revising the rules of practice to implement the inventor's oath or declaration provisions of the Leahy-Smith America Invents Act (AIA). The AIA permits a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent. The AIA also streamlines the requirements for the inventor's oath or declaration, and permits a substitute statement in lieu of an oath or declaration in certain circumstances. The Office is revising the rules of practice relating to the inventor's oath or declaration, including reissue oaths or declarations, and substitute statements signed by a person other than an inventor, and to provide for assignments containing oath or declaration statements. Additionally, the Office is revising the rules of practice relating to the inventor's oath or declaration to allow applicants to postpone filing the inventor's oath or declaration until the application is otherwise in condition for allowance. Finally, to better facilitate processing of patent applications, the Office is revising and clarifying the rules of practice for power of attorney and prosecution of an application by an assignee.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-17917 RIN 0651-AC69 Docket No. PTO-P-2011-0075 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective Date: The changes in this final rule take effect on September 16, 2012. Applicability Date: The changes in this final rule apply to any patent issued before, on, or after September 16, 2012. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the supplemental examination provisions of the Leahy-Smith America Invents Act (AIA). The supplemental examination provisions permit a patent owner to request supplemental examination of a patent by the Office to consider, reconsider, or correct information believed to be relevant to the patent. These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation. The Office is also adjusting the fee for filing a request for ex parte reexamination and setting a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-18530 RIN 0651-AC66 Docket No. PTO-P-2011-0072 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective date: The changes in this final rule are effective on September 16, 2012. 37 CFR Parts 1, 5, 10, 11, and 41 The Leahy-Smith America Invents Act (AIA) expands the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a Federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. The AIA also provides for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding. The Office is revising the rules of practice to implement these post-patent provisions, as well as other miscellaneous provisions, of the AIA.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-18121 RIN 0651-AC77 Docket No. PTO-P-2012-0015 DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of proposed rulemaking. Comment Deadline Date: Written comments must be received on or before October 5, 2012. 37 CFR Part 1 The Leahy-Smith America Invents Act (AIA) amends the patent laws pertaining to the conditions of patentability to convert the United States patent system from a “first to invent” system to a “first inventor to file” system; treats United States patents and United States patent application publications as prior art as of their earliest effective United States, foreign, or international filing date; eliminates the requirement that a prior public use or sale be “in this country” to be a prior art activity; and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The AIA also repeals the provisions pertaining to statutory invention registrations. The current rules of practice in patent cases have a number of provisions based on the conditions of patentability of a “first to invent” patent system. The United States Patent and Trademark Office (Office) is proposing to amend the rules of practice in patent cases to implement the changes to the conditions of patentability in the AIA, and to eliminate the provisions pertaining to statutory invention registrations.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-17898 RIN Docket No. PTO-P-2012-0024 DEPARTMENT OF COMMERCE, Patent and Trademark Office Request for comments. Written comments must be received on or before October 5, 2012. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is publishing proposed examination guidelines concerning the first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the patent laws pertaining to the conditions of patentability to convert the United States patent system from a “first to invent” system to a “first inventor to file” system, treats United States patents and United States patent application publications as prior art as of their earliest effective United States, foreign, or international filing date, eliminates the requirement that a prior public use or sale activity be “in this country” to be a prior art activity, and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The changes to the conditions of patentability in the AIA result in greater transparency, objectivity, predictability, and simplicity in patentability determinations. These guidelines will assist Office personnel in, and inform the public of how the Office is, implementing the FITF provisions of the AIA. The Office is concurrently proposing in a separate action (RIN 0651-AC77) published elsewhere in this issue of the Federal Register to amend the rules of practice in patent cases to implement the FITF provisions of the AIA.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-16710 RIN 0651-AC67 Docket No. PTO-P-2011-0073 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Final rule. Effective Date: The changes in this final rule take effect on September 16, 2012. Applicability Date: The changes in this final rule apply to any application filed before, on, or after September 16, 2012. 37 CFR Parts 1 and 41 The United States Patent and Trademark Office (Office) is revising the rules of patent practice to implement the preissuance submissions by third parties provision of the Leahy-Smith America Invents Act (AIA). This provision provides a mechanism for third parties to contribute to the quality of issued patents by submitting to the Office, for consideration and inclusion in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application. A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted, and must be submitted within a certain statutorily specified time period. The third party must submit a fee as prescribed by the Director, and a statement that the submission complies with the statutory provision. The Office has also revised the rules of patent practice to make related aspects of the existing protest rule more consistent with the new rule implementing the preissuance submissions by third parties provision. Further, the Office is eliminating the provision providing for public use proceedings.
GPO FDSys XML | Text type regulations.gov FR Doc. 2012-12971 RIN 0651-AC78 Docket No. PTO-P-2011-0016 DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Notice of proposed rulemaking. Comment Deadline Date: Written comments must be received on or before July 30, 2012. 37 CFR Part 1 The United States Patent and Trademark Office (Office) is proposing to amend the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act. Certain patent fees set or adjusted under the fee setting authority in the Leahy-Smith America Invents Act will be reduced by seventy-five percent for micro entities. The Office is proposing changes to the rules of practice to set out the procedures pertaining to claiming micro entity status, paying patent fees as a micro entity, notification of loss of micro entity status, and correction of payments of patent fees paid erroneously in the micro entity amount. In a separate rulemaking, the Office is in the process of proposing to set or adjust patent fees under the Leahy-Smith America Invents Act, including setting fees for micro entities with a seventy-five percent reduction.