Monday, August 27, 2012

Prior Art/International Search Via Google

Google has introduced a prior art search tool to search journal articles, books, and trade publications in addition to patents. Once you've done a search and opened a result page, look for the blue "Find prior art" box at the top.
Google is also now searching patents from the European Patent Office. For more information about the international patent search and the prior art search tool, see the Google blog entry, Improving Google Patents with European Patent Office patents and the Prior Art Finder.
For a more definitive classification search of international patents, Fondren Library is now offering a one-hour introductory class about how to search for international patents online using the European Patent Office Espacenet interface directly. For class times call 713-348-5483 or access the patent searching class schedule.
A tutorial for using PubWest to search for both U.S. and international patents is also loaded on a library computer used for accessing PubWest.

Friday, August 24, 2012

Intellectual Property Webinar Series

NIST MEP (National Institute of Standards and Technology Manufacturing Extension Partnership) began a patent webinar series on June 13, 2012 that continues every 2nd Wednesday of the month until January 29, 2013 from noon-1:30 pm (1:00-2:30 pm ET). The webinars seek to "bridge the knowledge gap on Intellectual Property Law Issues between the US Government and various stakeholders." One registration provides access to all webinars including archives for those already presented. Archives are also available on the webinar information and sign-up page. Upcoming topics include:
  • September 12 – Researcher’s Life After Invention Disclosure Topics: Working with university TTOs, agreements, within the context of AIA
  • October 10 – Working with a Patent Attorney/Agent and USPTO Topics: Working with the right TT Officer and law firm, addressing the documents needed for a proper application submission, drafting proper specification/drawings/claims, effective use of interview, understanding a final and non-final rejection
  • November 14 - Patent Trial and Appeal Board Topics: Post-final rejection, post-grant review, appeal process, inter partes re-exam
  • December 12 – Protecting IP in Global Markets: Understanding a PCT, international issues on IP procurement, markets and competitors
  • January 9, 2013 - Picking the Right Global Markets Topics: To where and how do I export? What programs are out there to help?
Past topics included:
  • June 13 - Patents 101 Topics: Overview of the patent process with examination of each of the statutory requirements for patentability: useful, novel, non-obvious, enabling, and acceptable patentable subject matter
  • August 8 – Intellectual Property, non-patented Topics: Trade secrets, trademarks, copyrights

Tuesday, August 21, 2012

Revision of Patent Term Adjustment Provisions Relating to Appellate Review

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.

For more information see the August 16, 2012 Federal Register Final Rule.

Amend First Filing Deadline for Trademark Use Affidavits

The United States Patent and Trademark Office (``USPTO'') is seeking public comment on a potential legislative change to amend the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act from between the fifth and sixth years after the registration date, or the six-month grace period that follows, to between the third and fourth years after the registration date, or the six-month grace period that follows. The change would require Congress to amend the Trademark Act, and the USPTO is interested in receiving public input on whether and why such an amendment is or is not favored.

For more information see the August 16, 2012 Federal Register Comment Request.

American Invents Act (AIA) Roundtable

As a part of the implementation of the AIA, the USPTO is conducting a roundtable at the USPTO to obtain public input from organizations and  individuals on issues relating to the USPTO's implementation of the first-inventor-to-file provisions of the AIA. The USPTO plans to invite participants from patent user groups, practitioners, industry, independent inventor organizations, academia, and government to provide input. The roundtable likewise is open to any member of the public to provide input. The USPTO will provide an agenda prior to the roundtable in order to focus the discussion and enhance the efficiency of the proceedings. The agenda will be posted on the USPTO's Internet Web site at The USPTO plans to make the roundtable available via Web cast. Web cast information will be available before the roundtable on the USPTO's Internet Web site at

For more information, see the August 16 Federal Register notice.

Wednesday, August 15, 2012

Texas Regional Independent Inventors Conference

The Texas Regional Independent Inventors Conference is coming to Austin on September 14-15, 2012. Sponsored by the United States Patent and Trademark Office (USPTO), Invent Now®, and the University of Texas (UT) at Austin, the conference will be held in UT's Thompson Conference Center, 2405 Robert Dedman Drive (for directions see Presentations and workshops will be conducted by senior USPTO officials, Supervisory Patent Examiners, and Trademark staff attorneys. A limited number of one-on-one advisory sessions will also be available, with guaranteed slots for the first 20 registrants. Presenters include:
  • Robert Metcalfe, 2007 National Inventors Hall of Fame Inductee
  • Karen C. Parker, Director and International Trade Specialist, Austin U.S. Export Assistance Center
  • John Calvert, Acting Associate Commissioner for the Office of Innovation Development
  • Elizabeth Dougherty, Director of Inventor Education, Outreach and Recognition, Office of Innovation Development
  • Darnell Jayne, Supervisory Patent Examiner, Technology Center 3600
  • Catherine Cain, Trademark Staff Attorney
Afternoon breakout sessions will focus on the America Invents Act (AIA), patent and trademark basics, searching sessions for patents and trademarks, and advanced patent prosecution. A networking reception will be held on Friday evening, September 14.

To register, access To view the agenda, speakers, topics, lodging, and directions, access the USPTO's conference page.

AIA Implementation - Additional Final Rules

The Federal Register has published final rules implementing a number of provisions of the America Invents Acts (AIA). Most will go into effect on September 16, 2012. The provisions are:

Thursday, August 9, 2012

International Trademark Classification Changes

The United States Patent and Trademark Office (USPTO) has published a final trademark rule regarding incorporating classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. These changes became effective January 1, 2012, and are listed in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed., 2011), which is published by the World Intellectual Property Organization (WIPO). In addition, the USPTO is amending some punctuation and grammar to conform to what appears in the Nice Agreement. Read the changes in the August 9, 2012 Federal Register for Trademarks at .

Wednesday, August 8, 2012

Final Rule for Statute of Limitations Provision of the America Invents Act

The final rule that relates to the to the statute of limitations provision of the Leahy-Smith America Invents Act (AIA) for Office disciplinary actions are now available in the Federal Register. Further information about the OED statute of limitations final rule may be found at:

South Texas College of Law Included in Trademark Law School Pilot Program

South Texas College of Law in Houston (1303 San Jacinto Street, Houston, Texas 77002) is one of nine new law schools included in the Trademark Law School Clinic Certification Pilot Program beginning this fall. Under the guidance of a faculty clinic supervisor, students in the trademark program will draft and file trademark applications and respond to Office Actions. For more information, see the July 31, 2012 press release.

Tuesday, August 7, 2012

Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act

The Federal Register has published a final rule regarding changes to implement miscellaneous post patent provisions of the America Invents Act (AIA).

SUMMARY: 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.

DATES: Effective date: The changes in this final rule are effective on September 16, 2012.

For more information see the text of the final rule.

Friday, August 3, 2012

America Invents Act (AIA) Proposed Rule and Comment Request

A proposed rule and a request for comments regarding the Leahy-Smith America Invents Act (AIA) have been published in the Federal Register. According to the summary of the proposed rule, Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act, the act "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." See more at .

The request for comments pertains to examination guidelines to implement the first-to-file provisions of the AIA. See details at