International Patent Pilot Programs

[Federal Register: November 21, 2008 (Volume 73, Number 226)]
[Notices][Page 70625]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr21no08-38]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Submission for OMB Review; Comment Request

The United States Patent and Trademark Office (USPTO) will submit to the Office of Management and Budget (OMB) for clearance of the following proposal for collection of information under the provisions of the Paperwork Reduction Act (44 U.S.C. Chapter 35).

AGENCY: United States Patent and Trademark Office (USPTO).

Title: Patent Prosecution Highway (PPH) Program.

Form Number(s): PTO/SB/10, PTO/SB/12, PTO/SB/20AU, PTO/SB/20CA, PTO/SB/20DK, PTO/SB/20EP, PTO/SB/20JP, PTO/SB/20KR, and PTO/SB/20UK.

Agency Approval Number: 0651-0058.

Type of Request: Revision of a currently approved collection.
...

Needs and Uses: The Patent Prosecution Highway (PPH) pilot program was originally established between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) on July 3,2006. The PPH program allows applicants whose claims are determined to be patentable in the office of first filing to have the corresponding application that is filed in the office of second filing be advanced out of turn for examination. At the same time, the PPH program allows the office of second filing to exploit the search and examination results of the office of first filing, which increases examination efficiency and improves patent quality. Additional PPH pilot programs have recently been established between the USPTO and the United Kingdom Intellectual Property Office (UKIPO), the Canadian Intellectual Property Office (CIPO), the Danish Patent and Trademark Office (DKPTO), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), and the Intellectual Property Office of Australia(IPAU).

The USPTO and the JPO also participate in a work-sharing pilot project called the ``New Route.'' Under the New Route framework, a filing in one member office of this arrangement would be deemed a filing in all member offices. The first office and applicant would be given a 30-month processing time frame in which to make available a first office action and any necessary translations to the second office(s), and the second office(s) would exploit the search and examination results in conducting their own examination.

This information collection previously included two forms, Request for Participation in the New Route Pilot Program Between the JPO and the USPTO (PTO/SB/10) and Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the (1) JPO or (2)UKIPO and the USPTO (PTO/SB/20), which may be used by applicants to request participation in the programs and to ensure that they meet the program requirements. Since the PPH program with the JPO has been fully implemented, Form PTO/SB/20 has been revised as Form PTO/SB/20JP for use with the JPO and a separate Form PTO/SB/20UK has been created for the ongoing pilot program with the UKIPO. Similar forms have been created for the PPH pilot programs with the CIPO, the DKPTO, the EPO,the KIPO, and the IPAU. These additional PPH pilot program forms are being added to this collection.

The USPTO is undertaking another worksharing program with the EPO and the JPO called the ``Triway'' program. Under the Triway framework,each Office will conduct searches on corresponding applications filed under the Paris Convention in each of the Offices in a sufficiently early time period. The search results will then be shared among the Offices in order to reduce the search and examination workload. To support this program, the USPTO is adding the Request for Participation in Triway Pilot Program Among the USPTO, the EPO and the JPO (PTO/SB/12) to this collection.

Affected Public: Individuals or households, businesses or other for-profits, and not-for-profit institutions.

Frequency: On occasion.

Respondent's Obligation: Required to obtain or retain benefits.

OMB Desk Officer: Nicholas A. Fraser, e-mail: Nicholas_A._Fraser@omb.eop.gov.

Once submitted, the request will be publicly available in electronic format through the Information Collection Review page at http://www.reginfo.gov.

Paper copies can be obtained by:

• E-mail: Susan.Fawcett@uspto.gov. Include ``0651-0058 PPH Program copy request'' in the subject line of the message.
  
• Fax: 571-273-0112, marked to the attention of Susan K. Fawcett.
  
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

Written comments and recommendations for the proposed information collection should be sent on or before December 22, 2008 to Nicholas A. Fraser, OMB Desk Officer, via e-mail at Nicholas_A._Fraser@omb.eop.gov, or by fax to 202-395-5167, marked to the attention of Nicholas A. Fraser.

Dated: November 14, 2008. Susan K. Fawcett, Records Officer, USPTO, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division.
[FR Doc. E8-27692 Filed 11-20-08; 8:45 am]
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Recommendations for Change in the Worldwide Patent System

The International Expert Group on Biotechnology, Innovation and Intellectual Property has recently published a report entitled Toward a New Era of Intellectual Property: from Confrontation to Negotiation. The group published the report in order "to assist policy-makers, industry, universities, researchers and NGOs in managing the transition from Old IP, under which companies and governments mistakenly believed that holding on to more and greater patents was the key to success, to New IP, in which actors recognise the importance of collaboration and sharing."

Section 5 of the executive summary's recommendations stresses the following for universities and the scientific community:

• 5.1. Universities should establish clear principles relating to
  the use and dissemination of their IP that includes ensuring
  greater access and the use of licensing provisions that make
  it easy to conduct research and development on products
  needed by low and middle income countries.
  
• 5.2. They should develop new measures of the success of
  technology transfer, development and social investment that
  correspond to social and economic return.
  
• 5.3. Business schools should include low and middle income
  country conditions and opportunities in their curriculum and
  should develop programmes through which their students
  can provide business planning assistance to low and middle
  income country entrepreneurs.
  
• 5.4. Universities in high income countries should collaborate
  with those in low and middle income countries to create educational
  opportunities at the doctoral and post-doctoral levels
  through which scientists maintain links with their countries
  of origin and conduct research focused on the needs of
  those countries. Universities in high income countries should
  encourage those of its professors from the Diaspora to assist
  their countries of origin through supervision of students, joint
  research projects, conducting peer review and so on.
  
• 5.5. Researchers should analyse questions of IP within the
  larger context of IP and innovation systems. To do so, they
  should use analytical tools that provide a broader, interdisciplinary
  perspective on IP and innovation.

Federal Register - Changes to PCT Transmittal & Search Fees

[Federal Register: November 12, 2008 (Volume 73, Number 219)]
[Rules and Regulations][Page 66754-66759]

Fiscal Year 2009 Changes to Patent Cooperation Treaty Transmittal and Search Fees


AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
To see the complete text access:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2008_register&docid=fr12no08-13

SUMMARY: The United States Patent and Trademark Office (Office) is amending the rules of practice to adjust the transmittal and search fees for international applications filed under the Patent Cooperation Treaty (PCT). The Office is adjusting the PCT transmittal and search fees to recover the estimated average cost to the Office of processing PCT international applications and preparing international search reports and written opinions for PCT international applications.

DATES: Effective Date:

The changes to 37 CFR 1.445 are effective on January 12, 2009 and are applicable to any international application having a receipt date that is on or after January 12, 2009.

FOR FURTHER INFORMATION CONTACT: Boris Milef, Legal Examiner, Office of PCT Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272-3288; or by mail addressed to: Box Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Federal Register - Ex Parte Appeals Clarification

[Federal Register: November 20, 2008 (Volume 73, Number 225)]
[Rules and Regulations][Page 70282]

From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr20no08-19]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 41
[Docket No.: PTO-P-2008-0054]
Clarification of the Effective Date Provision in the Final Rule for Ex Parte Appeals
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interpretation and effective date clarification.

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SUMMARY: On June 10, 2008, the United States Patent and Trademark Office (Office) published the final rule that amends the rules governing practice before the Board of Patent Appeals and Interferences(BPAI) in ex parte patent appeals. The effective date provision in the final rule states that the effective date is December 10, 2008, and the final rule shall apply to all appeals in which an appeal brief is filed on or after the effective date. The final rule requires, in part, appeal briefs in a new format relative to the format required prior to the rule revision. The Office is issuing this notice to clarify that it will not hold an appeal brief as non-compliant solely for following the new format even though it is filed before the effective date.

DATES: This is effective November 20, 2008.

FOR FURTHER INFORMATION CONTACT: Kery A. Fries at (571) 272-7757 or Joni Y. Chang at (571) 272-7720, Senior Legal Advisors, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy directly by phone, or by facsimile to (571)273-7757, or by mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: On June 10, 2008, the United States Patent and Trademark Office (Office) published the final rule that amends the rules governing practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte patent appeals. See Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals; Final Rule, 73 FR 32938 (June 10, 2008), 1332 Off. Gaz. Pat. Office 47 (July 1, 2008) (hereinafter ``BPAI final rule 2008''). The BPAI final rule 2008 states that the effective date is December 10,2008, and the final rule shall apply to all appeals in which an appeal brief is filed on or after the effective date. The BPAI final rule requires, in part, appeal briefs in a new format relative to the format required prior to the rule revision. The Office has received appeal
briefs in the new format under the final rule before the effective date. The Office will not hold an appeal brief as non-compliant solely for following the new format even though it is filed before the effective date.

Accordingly, appeal briefs filed before December 10, 2008, must either comply with current 37 CFR 41.37 (in effect before December 10, 2008) or revised 37 CFR 41.37 (in effect on or after December 10,2008). Appeal briefs filed on or after December 10, 2008, must comply with the revised 37 CFR 41.37. A certificate of mailing or transmission in compliance with 37 CFR 1.8 will be applicable to determine whether the appeal brief was filed prior to the effective date in order to determine which rule applies. For any appeal brief filed in the new format under revised 37 CFR 41.37, the Office will provide an examiner's answer in the new format under revised 37 CFR 41.39 if the appeal is maintained.

Similarly, a notice of appeal filed before December 10, 2008, in compliance with revised 37 CFR 41.31 (in effect on or after December 10, 2008) will be accepted by the Office. Thus a notice of appeal filed before December 10, 2008, must either comply with current 37 CFR 41.31(in effect before December 10, 2008) or revised 37 CFR 41.31 (in effect on or after December 10, 2008), regardless of the date of filing of the appeal brief. However, a notice of appeal filed on or after December 10, 2008, must comply with the revised 37 CFR 41.31 (e.g., the notice of appeal must be signed in accordance with 37 CFR 1.33(b)).

The Office has held a few appeal briefs filed in the new format prior to the publication of this clarification notice non-compliant. Any appellant who has received a notice of non-compliant appeal brief may request that the notice of non-compliant appeal brief be withdrawn if the sole reason for non-compliance is that the appeal brief was presented in the new format.

Dated: November 10, 2008.

Jon W. Dudas,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

[FR Doc. E8-27357 Filed 11-19-08; 8:45 am]

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Federal Register - Trademark Rule Changes

[Federal Register: November 17, 2008 (Volume 73, Number 222)]
[Rules and Regulations][Page 67759-67776]
To see the complete text of this Final Rule access:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2008_register&docid=fr17no08-13

Miscellaneous Changes to Trademark Rules of Practice

AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (``Office'') is amending the Trademark Rules of Practice to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the rules; and to make other miscellaneous changes. For the most part, the rule changes are intended to codify existing practice, as set forth in the Trademark Manual of Examining Procedure (``TMEP'').

DATES: This rule is effective January 16, 2009.

FOR FURTHER INFORMATION: Contact Mary Hannon, Office of the Commissioner for Trademarks, by telephone at (571) 272-9569.

Federal Register - Patent Practitioner Fee

[Federal Register: November 17, 2008 (Volume 73, Number 222)]
[Rules and Regulations][Page 67750-67759]

To see the complete text of this Final Rule see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2008_register&docid=fr17no08-12

Changes to Representation of Others Before the United States Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office) is
adopting new rules governing the conduct of individuals registered to
practice before the Office. The Office is adopting a new rule that provides for an annual practitioner maintenance fee for those recognized to practice before the Office in patent cases. These changes will enable the Office to maintain a roster of registered practitioners and, consequently, better protect the public from unqualified practitioners. The Office is also making conforming amendments to 37 CFR 1.21.

DATES: Effective Date: December 17, 2008.

FOR FURTHER INFORMATION CONTACT: Harry I. Moatz , Director of Enrollment and Discipline (OED Director), directly by phone at (571) 272-6069; by facsimile to (571) 273-6069 marked to the attention of Mr. Moatz; or by mail addressed to: Mail Stop OED-Ethics Rules, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Federal Register - Financial Transactions Comment Request

[Federal Register: November 10, 2008 (Volume 73, Number 218)]
[Notices][Page 66602-66603]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr10no08-47]

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Submission for OMB Review; Comment Request

The United States Patent and Trademark Office (USPTO) will submit to the Office of Management and Budget (OMB) for clearance the following proposal for collection of information under the provisions of the Paperwork Reduction Act (44 U.S.C. Chapter 35).
Agency: United States Patent and Trademark Office (USPTO).
Title: Patent and Trademark Financial Transactions.
Form Number(s): PTO-2038, PTO-2231, PTO-2232, PTO-2233, PTO-2234, PTO-2236.
Agency Approval Number: 0651-0043.
Type of Request: Revision of a currently approved collection.
Burden: 49,795 hours annually.
Number of Respondents: 1,647,133 responses per year.

Avg. Hours per Response: The USPTO estimates that it will take the public approximately two to six minutes (0.03 to 0.10 hours) to gather the necessary information, prepare the appropriate form or document, and submit the completed request.

Needs and Uses: Under 35 U.S.C. 41 and 15 U.S.C. 1113, as implemented in 37 CFR 1.16-1.28, 2.6-2.7, and 2.206-2.209, the USPTO charges fees for processing and other services related to patents, trademarks, and information products. Customers may submit payments to the USPTO by several methods, including credit card, deposit account, electronic funds transfer (EFT), and paper check transactions. The public uses this collection to pay patent and trademark fees by credit card, establish and manage USPTO deposit accounts, request refunds, and set up user profiles. The USPTO uses this collection to process credit card payments, handle deposit account requests, issue refunds, and provide user accounts for EFT and other financial transactions.

Affected Public: Individuals or households, businesses or other for-profits, and not-for-profit institutions.
Frequency: On occasion.
Respondent's Obligation: Required to obtain or retain benefits.
OMB Desk Officer: Nicholas A. Fraser, e-mail: Nicholas_A._Fraser@omb.eop.gov.
Once submitted, the request will be publicly available in electronic format through the Information Collection Review page at www.reginfo.gov.
Paper copies can be obtained by:
E-mail: Susan.Fawcett@uspto.gov. Include ``0651-0043 Patent and Trademark Financial Transactions copy request'' in the subject line of the message.
Fax: 571-273-0112, marked to the attention of Susan K. Fawcett.
Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services

[[Page 66603]]

Division, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Written comments and recommendations for the proposed information collection should be sent on or before December 10, 2008 to Nicholas A. Fraser, OMB Desk Officer, via e-mail at Nicholas_A._Fraser@omb.eop.gov, or by fax to 202-395-5167, marked to the attention of Nicholas A. Fraser.

Dated: November 3, 2008.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division.
[FR Doc. E8-26697 Filed 11-7-08; 8:45 am]

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