Thursday, May 6, 2010

Pitfalls and Benefits of Provisional Patent Applications

In the April 2010 issue of the USPTO's bimonthly publication for independent inventors called the Inventors Eye, John Calvert discusses the pros and cons of filing a provisional patent application. He also talks about the minimum filing requirements, filling dates, purpose of a provisional application, important facts, and proposed changes.

Patent Applications

[Federal Register: May 3, 2010 (Volume 75, Number 84)]
[Notices][Page 23227-23235]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr03my10-43]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office

Initial Patent Applications

ACTION: Proposed collection; comment request.

To view the complete text of this comment request see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2010_register&docid=fr03my10-43
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SUMMARY: The United States Patent and Trademark Office (USPTO), as part of its continuing efforts to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on this revision of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES: Written comments must be submitted on or before July 2, 2010.

ADDRESSES: You may submit comments by any of the following methods:
E-mail: InformationCollection@uspto.gov. Include ``0651-0032 comment'' 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, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Federal e-Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT: Requests for additional information should be directed to the attention of Raul Tamayo, Legal Advisor, Office of Patent Legal Administration, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7728; or by e-mail at raul.tamayo@uspto.gov with ``Paperwork'' in the subject line.

SUPPLEMENTARY INFORMATION

I. Abstract

The USPTO is required by Title 35 of the United States Code,including 35 U.S.C. 131, to examine applications for patents. The USPTO administers the patent statues through various rules in Chapter 37 of the Code of Federal Regulations, including 37 CFR 1.16 through 1.84. The patent statutes and regulations require applicants to provide sufficient information to allow the USPTO to properly examine the application to determine whether it meets the criteria set forth in the patent statutes and regulations to be issued as a patent.

Most applications for patent, including new utility, design, and provisional applications, can be submitted to the USPTO on paper or through EFS-Web. EFS-Web is the USPTO's system for electronic filing of patent correspondence. EFS-Web is accessible via the Internet on the USPTO Web site. The system utilizes standard Web-based screens and prompts to enable users to submit patent documents in Portable Document Format (PDF) directly to the USPTO. The Legal Framework for EFS-Web, available at http://www.uspto.gov/patents/process/file/efs/guidance/ New_legal_framework.jsp, provides a listing of patent applications and documents permitted to be filed via EFS-Web and patent applications and
[[Page 23228]]
documents not permitted to be filed via EFS-Web.

The USPTO has identified continuation/divisional of an international application, utility continuation/divisional, design continuation/divisional, continued prosecution application--design, utility continuation-in-part, and design continuation-in-part applications as types of applications that can be filed electronically that were not identified as being able to be filed electronically in the last renewal of this collection.

The USPTO has also determined that the papers filed under 37 CFR1.41 to supply the name or names of the inventor or inventors after the filing date without a cover sheet as prescribed by 37 CFR 1.51(c)(1) in a provisional application, 37 CFR 1.48 for correction of inventorshipin a provisional application, and 37 CFR 1.53(c)(2) to convert anonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c), which were originally overlooked, should be added into the collection at this time. These papers also have a processing fee associated with them that will be added into the collection as well. All of the other fees remain the same.

In order to get a more specific accounting of the additional fees
and surcharges that can be applied to the various applications and to simplify the entry of these items into ROCIS, additional application groups have been broken out in this renewal. Previously, the utility, design, and plant applications were broken out in a manner that helped calculate the filing, search, and examination fees, but not in a manner that help calculate the additional fees and surcharges, which made it difficult to calculate the total burden for some of these applications.

There are 28 forms in this collection. The petitions and the papers filed to supply the name or names of the inventor or inventors after the filing date without a cover sheet in a provisional application, to correct inventorship in a provisional application, and to convert a nonprovisional application to a provisional application do not have forms associated with them.

Monday, May 3, 2010

Patent Quality - Comment Requests and Rountables

[Federal Register: April 27, 2010 (Volume 75, Number 80)]
[Notices][Page 22120-22121]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr27ap10-40]

[[Page 22120]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2010-0038]

Notice of Roundtables and Request for Comments on Enhancement in the Quality of Patents and on United States Patent and Trademark Office Patent Quality Metrics

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of public meeting; request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO), in conjunction with the Patent Public Advisory Committee (PPAC), has undertaken a project related to enhancing overall patent quality. As part of this initiative, the USPTO is conducting two roundtables to obtain public input from organizations and individuals on actions that can improve patent quality and the metrics the USPTO should use to measure progress. The roundtables are open to the public. The USPTO plans to invite a number of roundtable participants from among patent user groups, practitioners, industry, independent inventor organizations, academia, and government. Any member of the public may submit written comments on USPTO patent quality enhancement and metrics as well as on any issue raised at the roundtable.

DATES: The first roundtable will be held on Monday, May 10, 2010, beginning at 1 p.m. Pacific Daylight Time (PDT) and ending at 5 p.m. PDT.

The second roundtable will be held on Tuesday, May 18, 2010, beginning at 8:30 a.m. Eastern Daylight Time (EDT) and ending at 12 noon EDT.

The deadline for receipt of written comments is June 18, 2010.

ADDRESSES: The first (May 10, 2010) roundtable will be held at the Los Angeles Public Library--Central Library, which is located at 630 W. 5th Street, Los Angeles, California 90071.

The second (May 18, 2010) roundtable will be held at the USPTO in the Madison Auditorium on the concourse level of the Madison Building, which is located at 600 Dulany Street, Alexandria, Virginia 22314.

Written comments should be sent by electronic mail message over the Internet addressed to patent_quality_comments@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Elizabeth L. Dougherty. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet.

The written comments and list of the roundtable participants and their associations will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site (address: http://www.uspto.gov).

Because comments will be made available for public inspection, information that is not desired to be made public, such as an address
or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Elizabeth L. Dougherty, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy, by telephone at (571) 272-7733, by electronic mail message at elizabeth.dougherty@uspto.gov.

SUPPLEMENTARY INFORMATION: The USPTO in conjunction with the PPAC has undertaken a project related to overall patent quality. As part of that effort, a notice was published soliciting comments from the public on means to enhance quality of the patent process with particular emphasis on the search, examination, application and methods of meaningfully measuring such enhanced quality. See Request for Comments on
Enhancement in the Quality of Patents, 74 FR 65093 (Dec. 9, 2009) (Patent Quality Request for Comments). In the Patent Quality Request for Comments, the USPTO stated that it would like to focus, inter alia, on improving the process for obtaining the best prior art, preparation of the initial application, and examination and prosecution of the application. The USPTO sought public comment directed to this focus with respect to methods that may be employed by applicants and the USPTO to enhance the quality of issued patents, to identify appropriate indicia of quality, and to establish metrics for the measurement of the indicia. The original comment period was extended to March 8, 2010. See Extension of Period for Comments on Enhancement in the Quality of Patents, 75 FR 5040 (Feb. 1, 2010).

The comments may be viewed on the USPTO's Web site at http://www.uspto.gov/patents/law/comments/patentqualitycomments.jsp. A summary of the comments, prepared by the PPAC, as well as a summary of the comments and responses prepared by the USPTO, is included for the participants to review and will be posted on the USPTO's Web site at http://www.uspto.gov/patents/init_events/patentquality.jsp.

As a part of this initiative, the USPTO is conducting two roundtables, one at the Los Angeles Public Library--Central Library facility, and one at the USPTO, to obtain public input from organizations and individuals on patent quality and USPTO patent quality metrics. The number of participants in each roundtable is limited to ensure that all who are speaking will have a meaningful chance to do so. The USPTO plans to invite participants from patent user groups, practitioners, industry, independent inventor organizations, academia, and government. The roundtables are open to the public.

The USPTO will provide an agenda, list of participants, and preparatory materials to the participants prior to the roundtable in order to focus the discussion and enhance the efficiency of the proceedings. All such materials will be posted on the USPTO's Internet Web site. The USPTO plans to make the roundtable held at the USPTO on May 18, 2010, available via Web cast; efforts are being made to also make the roundtable held at the Los Angeles Public Library-Central Library facility available via Web cast if reasonably possible. Web cast information will be available before the roundtable on the USPTO's Internet Web site. The written materials for the roundtable, any slides or handouts distributed at the roundtable, and the list of the roundtable participants for each roundtable and their ssociations will also be posted on the USPTO's Internet Web site. The USPTO patent quality metrics under consideration will be posted on the USPTO's Web site at http://www.uspto.gov/patents/init_events/patentquality.jsp.

The patent quality metrics posted on the USPTO's Web site have been presented to facilitate a discussion on patent quality metrics and should not be taken as an indication that the USPTO has predetermined that it will adopt these patent quality metrics or that the USPTO is not interested in suggestions that the USPTO consider other patent quality metrics. The USPTO is inviting written comments from any member
of the public on USPTO patent quality metrics as well as on any issue raised at the roundtable.

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Dated: April 23, 2010.
David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
[FR Doc. 2010-9851 Filed 4-26-10; 8:45 am]
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