This is a list of United States Code sections, Statutes at Large, Public Laws, and Presidential Documents, which provide rulemaking authority for this CFR Part.
This list is taken from the Parallel Table of Authorities and Rules provided by GPO [Government Printing Office] .
It is not guaranteed to be accurate or up-to-date, though we do refresh the database weekly. More limitations on accuracy are described at the GPO site.
United States Code U.S. Code: Title 35 - PATENTS Statutes at Large Public Laws
Title 37 published on 03-Aug-2017 03:52
The following are ALL rules, proposed rules, and notices (chronologically) published in the Federal Register relating to 37 CFR Part 42 after this date.
2016-10-18; vol. 81 # 201 - Tuesday, October 18, 2016 81 FR 71653 - Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Proposed rule. Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before December 19, 2016 to ensure consideration. 37 CFR Part 42 Summary This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board to recognize that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office (USPTO or Office), communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. The rule would apply to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.
2016-10-03; vol. 81 # 191 - Monday, October 3, 2016 81 FR 68150 - Setting and Adjusting Patent Fees During Fiscal Year 2017
GPO FDSys XML | Text Additional Documents 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 Summary 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.
2016-04-27; vol. 81 # 81 - Wednesday, April 27, 2016 81 FR 24702 - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board; Correction
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule; correction. Effective Date: This rule is effective May 2, 2016 and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the Office. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office) published a final rule in the Federal Register on April 1, 2016, revising the rules related to trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office. This document corrects an error in that final rule.
2016-04-01; vol. 81 # 63 - Friday, April 1, 2016 81 FR 18750 - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: This rule is effective May 2, 2016 and applies to all AIA petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the Office. 37 CFR Part 42 Summary This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office.
2015-11-03; vol. 80 # 212 - Tuesday, November 3, 2015 80 FR 67680 - Proposed Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board; Reopening of Period for Comments
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of proposed rulemaking; reopening of comment period. Written comments on the proposed rule published August 20, 2015 (80 FR 50720) must be received on or before November 18, 2015. 37 CFR Part 42 Summary The Leahy-Smith America Invents Act (AIA) provided for new administrative trial proceedings before the Patent Trial and Appeal Board (Board). The United States Patent and Trademark Office (USPTO) issued a number of final rules and a trial practice guide in August and September of 2012 to implement the new administrative trial provisions of the AIA. The USPTO published a request for comments in the Federal Register on June 27, 2014, seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. In response to comments received by the public, the USPTO issued a first, final rule, which was published on May 19, 2015. That final rule addressed issues concerning the patent owner's motion to amend and the petitioner's reply brief that involved ministerial changes. The USPTO issued a second, proposed rule that addresses more involved proposed changes to the rules concerning the claim construction standard for AIA trials, new testimonial evidence submitted with a patent owner's preliminary response, Rule 11-type certification, and word count for major briefing. The USPTO is now extending the period for public comment on the second, proposed rule until November 18, 2015.
2015-08-20; vol. 80 # 161 - Thursday, August 20, 2015 80 FR 50720 - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, United States Patent and Trademark Office Proposed rule. Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before October 19, 2015 to ensure consideration. Roadshow Dates: The Office, in concert with the American Intellectual Property Association (“AIPLA”), will have a Road Show Series in August 2015 where the proposed rules will be discussed. This AIPLA/USPTO Road Show Series, entitled “Enhancing Patent Quality and Conducting AIA Trials,” will be held on August 24, 2015 in Santa Clara, California, August 26, 2015 in Dallas, Texas, and August 28, 2015 in Alexandria, Virginia. 37 CFR Part 42 Summary This proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office.
2015-06-16; vol. 80 # 115 - Tuesday, June 16, 2015 80 FR - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office 37 CFR Part 42 Summary
2015-05-19; vol. 80 # 96 - Tuesday, May 19, 2015 80 FR 28561 - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: This rule is effective May 19, 2015. 37 CFR Part 42 Summary This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office.
2014-10-22; vol. 79 # 204 - Wednesday, October 22, 2014 79 FR 63036 - Renaming of Express Mail® to Priority Mail Express®
GPO FDSys XML | Text Additional Documents 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 Summary 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.
2013-03-25; vol. 78 # 57 - Monday, March 25, 2013 78 FR 17871 - Changes To Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: March 25, 2013. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the changes with respect to inter partes review that are set forth in section 1(d) 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”). Consistent with the statutory changes, this final rule eliminates the nine-month “dead zone” for filing an inter partes review petition challenging a first-to-invent patent or reissue patent. Under the final rule, a petitioner may file an inter partes review petition challenging a first-to-invent patent or reissue patent upon issuance, including during the first nine months after issuance.
2013-01-18; vol. 78 # 13 - Friday, January 18, 2013 78 FR 4212 - Setting and Adjusting Patent Fees
GPO FDSys XML | Text Additional Documents 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 Summary 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.
2012-09-11; vol. 77 # 176 - Tuesday, September 11, 2012 77 FR 56068 - Changes To Implement Derivation Proceedings
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: The changes in this final rule take effect on March 16, 2013. 37 CFR Part 42 Summary 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 create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the AIA will take effect on March 16, 2013, eighteen months after the date of enactment, and apply to applications for patent, and any patent issuing thereon, that are subject to first-inventor-to-file provisions of the AIA.
2012-09-06; vol. 77 # 173 - Thursday, September 6, 2012 77 FR 55028 - Setting and Adjusting Patent Fees
GPO FDSys XML | Text Additional Documents 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 Summary 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.
2012-08-14; vol. 77 # 157 - Tuesday, August 14, 2012 77 FR 48612 - Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
GPO FDSys XML | Text Additional Documents 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 Summary 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.
77 FR 48680 - Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Final rule. Effective Date: September 16, 2012. Applicability Dates: The changes for inter partes review proceedings apply to any patent issued before, on, or after September 16, 2012 (subpart B). The changes for post-grant review proceedings generally apply to patents issuing from applications subject to first-inventor-to-file provisions of the AIA (subpart C). In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interferences commenced before September 16, 2012, to be dismissed without prejudice to the filing of a petition for post-grant review. See 42.200(d) and § 6(f)((3)(A) of the AIA. The changes for transitional program for covered business method patents apply to any covered business method patent issued before, on, or after September 16, 2012 (subpart D). 37 CFR Part 42 Summary 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 create the new inter partes review proceeding, post-grant review proceeding, and transitional post-grant review proceeding for covered business method patents, to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the AIA will take effect on September 16, 2012, one year after the date of enactment.
77 FR 48734 - Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention
GPO FDSys XML | Text Additional Documents 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 in this final rule apply to any covered business method patent issued before, on, or after September 16, 2012. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provision of the Leahy-Smith America Invents Act (“AIA”) that requires the Office to issue regulations for determining whether a patent is for a technological invention in a transitional post-grant review proceeding for covered business method patents. The provision of the AIA will take effect on September 16, 2012, one year after the date of enactment. The AIA provides that this provision and any regulations issued under the provision will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
77 FR 48756 - Office Patent Trial Practice Guide
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Notice of practice guide. Effective Date: This practice guide applies to inter partes review, post-grant review, and covered business method patent review proceedings commencing on or after September 16, 2012, as well as derivation proceedings commencing on or after March 16, 2013. 37 CFR Part 42 Summary The Leahy-Smith America Invents Act (AIA) establishes several new trial proceedings to be conducted by the Patent Trial and Appeal Board (Board) including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. In separate rulemakings, the United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement these provisions of the AIA that provide for the trial proceedings before the Board. The Office publishes in this notice a practice guide for the trial final rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings.
2012-02-10; vol. 77 # 28 - Friday, February 10, 2012 77 FR 7028 - Changes To Implement Derivation Proceedings
GPO FDSys XML | Text Additional Documents 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 April 10, 2012 to ensure consideration. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy-Smith America Invents Act that create a new derivation proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on March 16, 2013, eighteen months after the date of enactment, and apply to applications for patent, and any patent issuing thereon, that are subject to first-inventor-to-file provisions of the Leahy-Smith America Invents Act.
77 FR 7041 - Changes to Implement Inter Partes Review Proceedings
GPO FDSys XML | Text Additional Documents 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 April 10, 2012 to ensure consideration. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy-Smith America Invents Act that create a new inter partes review proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment, and apply to any patent issued before, on, or after the effective date.
77 FR 7060 - Changes To Implement Post-Grant Review Proceedings
GPO FDSys XML | Text Additional Documents 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 April 10, 2012 to ensure consideration. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy-Smith America Invents Act that create a new post-grant review proceeding to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment, and generally apply to patents issuing from applications subject to first-inventor-to-file provisions of the Leahy-Smith America Invents Act.
77 FR 7080 - Changes To Implement Transitional Program for Covered Business Method Patents
GPO FDSys XML | Text Additional Documents 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 April 10, 2012 to ensure consideration. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office or USPTO) proposes new rules to implement the provisions of the Leahy-Smith America Invents Act that create a new transitional post-grant review proceeding for covered business method patents to be conducted before the Patent Trial and Appeal Board (Board). These provisions of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment. These provisions and any regulations issued under these provisions will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
77 FR 7095 - Transitional Program for Covered Business Method Patents—Definition of Technological Invention
GPO FDSys XML | Text Additional Documents 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 April 10, 2012 to ensure consideration. 37 CFR Part 42 Summary The United States Patent and Trademark Office (Office or USPTO) proposes a new rule to implement the provision of the Leahy-Smith America Invents Act that requires the Office to issue regulations for determining whether a patent is for a technological invention in a transitional post-grant review proceeding for covered business method patents. The provision of the Leahy-Smith America Invents Act will take effect on September 16, 2012, one year after the date of enactment. The provision and any regulations issued under the provision will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
2012-02-09; vol. 77 # 27 - Thursday, February 9, 2012 77 FR 6868 - Practice Guide for Proposed Trial Rules
GPO FDSys XML | Text Additional Documents DEPARTMENT OF COMMERCE, Patent and Trademark Office Request for Comments. Written comments must be received on or before April 9, 2012 to ensure consideration. 37 CFR Part 42 Summary The Leahy-Smith America Invents Act establishes several new trial proceedings to be conducted by the Patent Trial and Appeal Board (Board) including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. The Leahy-Smith America Invents Act also requires the United States Patent and Trademark Office (Office or USPTO) to promulgate rules specific to each proceeding. In separate rulemakings elsewhere in this issue and in the February 10, 2012, issue of the Federal Register , the Office proposes rules relating to Board trial practice for the new proceedings. The Office publishes in this document a practice guide for the proposed trial rules to advise the public on the general framework of the proposed regulations, including the structure and times for taking action in each of the new proceedings.
77 FR 6879 - Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
GPO FDSys XML | Text Additional Documents 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 April 9, 2012 to ensure consideration. 37 CFR Parts 42 and 90 Summary The United States Patent and Trademark Office (Office or USPTO) proposes new rules of practice to implement the provisions of the Leahy-Smith America Invents Act that provide for trials before the Patent Trial and Appeal Board (Board). The proposed rules would provide 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. The proposed rules would also provide a consolidated set of rules to implement the provisions of the Leahy-Smith America Invents Act related to seeking judicial review of Board decisions.
