Thursday, July 21, 2011

USPTO Training Portal Open to the Public

In cooperation with the National Technical Information Service (NTIS), the United States Patent and Trademark Office (USPTO) is making available to the public the same courses patent examiners take. Taking these courses should help inventors understand the process examiners use and, therefore, communicate better with examiners. You can select a course from a catalog, set up an account, and enroll in free titles or purchase courses from the library. For more information and/or to enroll in a course access the USPTO Public Training Portal.

Tuesday, July 19, 2011

Statutory Invention Registration vs 1.211 Publication of an Application

Federal Register Volume 76, Number 138 (Tuesday, July 19, 2011)]
[Notices] [Pages 42684-42686]
From the Federal Register Online via the Government Printing Office [] [FR Doc No: 2011-18092]

Patent and Trademark Office
Statutory Invention Registration
ACTION: Proposed collection; comment request.

To see the complete text of this comment request access:

An applicant for an original patent may request, at any time during the pendency of the applicant's pending complete application, that the specification and drawings be published as a statutory invention registration (SIR). A published SIR is not a patent. It has the defensive attributes of a patent, e.g., it is usable as a reference as of its filing date in the same manner as a patent, but does not have the enforceable attributes of a patent. Historically, applicants have requested that the USPTO publish their patent applications as SIRs in certain instances when, for any of a variety of reasons, applicants no longer wanted to go through the effort and expense of obtaining patents on the inventions claimed in the applications. However, given that 37 CFR 1.211 requires the publication of most nonprovisional applications filed on or after November 29, 2000, applicants have increasingly found 1.211 publication of an application to be a desirable alternative to requesting an SIR, particularly since 1.211 publication of the application is achieved without any waiver of patent rights.

35 U.S.C. 157 authorizes the USPTO to publish an SIR containing the specifications and drawings of a regularly filed application for a patent without examination if the applicant: (i) Meets the requirements of 35 U.S.C. 112; (ii) has complied with the requirements for printing; (iii) waives the right to receive a patent on the invention claimed effective upon the date of publication of the SIR; and (iv) pays all application, publication and other processing fees.

The USPTO administers 35 U.S.C. 157 through 37 CFR 1.293-1.297. Any request for an SIR is examined to determine whether the subject matter of the application is appropriate for publication and all other requirements have been met, including the requirements of 35 U.S.C. 112 and 37 CFR 1.293.

The requester may petition the USPTO to review rejection decisions within one month or other such time as is set forth in the decision refusing publication. The requester may also petition the USPTO to withdraw a request to publish an SIR prior to the date of the notice of the intent to publish.

If the request for an SIR is approved, a notice to that effect will be published in the Official Gazette of the USPTO. Each SIR that is published will include a statement relating to the attributes of an SIR.

The public uses form PTO/SB/94, Request for Statutory Invention Registration, to request and authorize publication of a regularly filed patent application as an SIR, to waive the right to receive a United States patent on the same invention claimed in the identified patent application, to agree that the waiver will be effective upon publication of the SIR, and to state that the identified patent application complies with the requirements for printing. No forms are associated with the petition for a review of the refusal to publish an SIR or the petition to withdraw the request for publication of an SIR.

Tuesday, July 12, 2011

Changes in Trademark Requirements

[Federal Register Volume 76, Number 133 (Tuesday, July 12, 2011)]
[Proposed Rules][Pages 40839-40844]
From the Federal Register Online via the Government Printing Office []
[FR Doc No: 2011-17121]

Changes in Requirements for Specimens and for Affidavits or
Declarations of Continued Use or Excusable Nonuse in Trademark Cases
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Proposed rule.
SUMMARY: In order to help assess and ensure the accuracy of the trademark register, the United States Patent and Trademark Office (``USPTO'') proposes to revise the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to provide for the USPTO to require: any information, exhibits, and affidavits or declarations deemed reasonably necessary to examine an affidavit or declaration of continued use or excusable nonuse in trademark cases, or for the USPTO to assess the accuracy and integrity of the register; and upon request, more than one specimen in connection with a use-based trademark application, an allegation of use, an amendment to a registered mark, or an affidavit or declaration of continued use in trademark cases. A lack of ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration imposes costs and burdens on the public. The proposed rules will allow the USPTO to require additional proof of use of a mark to verify the accuracy of claims that a trademark is in use on particular goods/services. The USPTO anticipates issuing requirements for such proof in a relatively small number of cases to assess the accuracy of the identifications. The proposed rules will facilitate an assessment of the reliability of the trademark register in this regard, so that the USPTO and stakeholders may determine whether and to what extent a general problem may exist and consider measures to address it, if necessary.

To see the complete text of this proposed rule access:

Friday, July 8, 2011

Patent Prosecution Highway (PPH) Program

[Federal Register Volume 76, Number 131 (Friday, July 8, 2011)]
[Notices][Pages 40339-40341]
From the Federal Register Online via the Government Printing Office [][FR Doc No: 2011-17077]
Patent and Trademark Office
Patent Prosecution Highway (PPH) Program
ACTION: Proposed collection; comment request.

To view the complete text of this comment request, access
I. Abstract
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 USPTO and the JPO agreed at the November 2007 Trilateral Conference to fully implement the PPH program on a permanent basis starting on January 4, 2008.

The USPTO entered into a PPH pilot program with the United Kingdom Intellectual Property Office (UKIPO) on September 4, 2007. Since then, additional PPH pilot programs have [[Page 40340]]been established between the USPTO and the intellectual property offices of several other countries. Some of the pilot programs, such as those with Japan, Canada, and South Korea, have become permanent.

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. The PCT-PPH pilot program is an expansion to the PPH program based on the framework of the Patent Cooperation Treaty (PCT). Information collected for the PCT is approved under OMB control number 0651-0021.

PPH agreements streamline the patent system by allowing patent examiners to avail themselves of the work product from other participating patent offices. Originally, the PPH program was limited to the utilization of search and examination results of national applications between cross filings under the Paris Convention. The newer PCT-PPH agreements have greatly expanded the potential of the PPH program by permitting participating patent offices to draw upon the positive results of the PCT work product from another participating office. The PCT-PPH pilot program uses international written opinions and international preliminary examination reports developed within the framework of the PCT, thereby making the PPH program available to a larger number of applicants.

The forms in this collection allow participants to file a request in a corresponding U.S. application and petition to make the U.S. application special under the PPH or PCT-PPH program. The PPH forms collect similar data; however, there is a unique form for each participant. This collection includes forms for these current PPH programs with the USPTO: Japan Patent Office (JPO), United Kingdom Intellectual Property Office (UKIPO), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), European Patent Office (EPO), Korean Intellectual Property Office (KIPO), Intellectual Property Office of Australia (IPAU), Intellectual Property Office of Singapore (IPOS), German Patent and Trade Mark Office (DPMA), National Board of Patents and Registration of Finland (NBPR), Russian Patent Office (ROSPATENT), Hungarian Patent Office (HPO), Spanish Patent and Trademark Office (SPTO), Austrian Patent Office (APO), and the Mexican Institute of Industrial Property (IMPI). This collection also includes forms for these upcoming PPH programs that are being planned with the USPTO: Israeli Patent Office, State Intellectual Property Office of the P.R.C. (SIPO), Instituto Nacional da Propriedade Industrial (INPI), and the Taiwan Intellectual Property Office (TIPO).

This collection includes forms for these current PCT-PPH pilot programs with the USPTO: EPO, JPO, KIPO, APO, ROSPATENT, SPTO, IPAU, NBPR, the Swedish Patent and Registration Office (PRV), and in U.S. applications where the USPTO was the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). This collection also includes forms for these upcoming PCT-PPH pilot programs that are being planned with the USPTO: CIPO, SIPO, and the Nordic Patent Institute (NPI).

Wednesday, July 6, 2011

Adjust Patent Fees

[Federal Register Volume 76, Number 123 (Monday, June 27, 2011)]
[Proposed Rules][Pages 37296-37300]
From the Federal Register Online via the Government Printing Office [][FR Doc No: 2011-16001]
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing to adjust certain patent fee amounts for fiscal year 2012 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.

DATES: Written comments must be received on or before July 27, 2011. No public hearing will be held.

ADDRESSES: You may submit comments, identified by RIN number RIN 0651-AC44, by any of the following methods:
  • Federal eRulemaking Portal: Follow the instructions for submitting comments.
  • E-mail: Include RIN number RIN 0651-AC44 in the subject line of the message.
  • Fax: (571) 273-6299, marked to the attention of Walter Schlueter.
  • Mail: Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Walter Schlueter.
Instructions: All submissions received must include the agency name and Regulatory Information Number (RIN) for this proposed rule making. For additional information on the rule making process, see the heading of the SUPPLEMENTARY INFORMATION section of this document.

To view the full text of this proposed rule, access