Roundtable - 3rd Party Preissuance Submissions to Identify Relevant Prior Art

According to a Federal Register Notice of March 19, 2014 (Volume 79, Number 53,Pages 15319-15321), the USPTO is hosing a "Roundtable Event on the Use of Crowdsourcing and Third-Party Preissuance Submissions To Identify Relevant Prior Art."

SUMMARY: The United States Patent and Trademark Office (Office) is hosting a roundtable event to solicit public opinions regarding the use of crowdsourcing and third-party preissuance submissions to identify relevant prior art and enhance the quality of examination as well as the quality of issued patents. Members of the public are invited to participate. The roundtable will provide a forum for an informal discussion of the topics identified in this notice. Written comments in response to these topics also are requested.

DATES: Event: The roundtable event will be held on April 10, 2014,beginning at 12:30 p.m. Eastern Daylight Time (EDT), and ending at 5:00p.m. EDT.

Registration: Registration to attend the roundtable in person or via webcast is required by April 4, 2014. Additionally, members of the public who wish to participate in the roundtable as a speaker must do so by request in writing no later than March 27, 2014. See the ``Event Registration Information'' section of this notice for additional details on how to register.

For more information visit http://www.gpo.gov/fdsys/pkg/FR-2014-03-19/html/2014-05996.htm 

First-Inventor-to-File Public Forum

The USPTO’s First-Inventor-to-File (FITF) Public Forum is this coming Monday, March 17, 2014, at the USPTO headquarters, Madison Auditorium, in Alexandria, Virginia from 12:30 to 5 pm ET. The forum is being held on the first anniversary of the FITF implementation. You are invited to attend in person or via webcast (access instructions below):
Access Instructions:
First-Inventor-to-File Public Forum
Monday, March 17, 2014
12:30 to 5 pm ET
Webcast access:
Event number: 996 792 614
Event password: 12345
Click here to access the event: (https://uspto-events.webex.com/uspto-events/onstage/g.php?t=a&d=996792614)

All presentation materials will be available in advance of the forum on the AIA (FITF) micro-site at (http://www.uspto.gov/aia_implementation/index.jsp)

 Agenda: 

•  12:30 to 1:00 PM - Meet and Greet
•  1:00 to 1:15 PM - Welcome -  Janet Gongola, Senior Advisor to the Deputy Director: Opening Remarks -  Michelle K. Lee, Deputy Under Secretary and Deputy Director 
•  1:15 to 2:15 PM - Will My Application Be Examined Under AIA (FITF) Or Not? - Cassandra Spyrou, QAS in TC 2800
•  2:15 to 3:00 PM FITF -- A Year in Review - Tom Hughes, SPE in TC 3700
•  3 to 3:15 PM BREAK
•  3:15 to 4:20 PM FITF Overview and Tips on Responding to Prior Art Rejections - Kathleen Fonda, Senior Legal Advisor Office of Patent Legal Administration
•  4:20 to 4:30 PM Tour of the AIA (FITF) Website - Kathleen Bragdon, QAS in TC 1600
•  4:30 to 5:00 PM Q&A Panel Discussion (Hughes, Spyrou, Fonda, Bragdon) Christopher Grant, QAS in TC 2400 (Moderator) 

Visit the AIA micro-site (http://www.uspto.gov/aia_implementation/index.jsp)  to view other newly added features.

One of the perks of Fondren Library at Rice University being a Patent and Trademark Resource Center is having on-site access to the PubWest and PubEast databases allowing for more sophisticated search techniques.

PubWest (WEST stands for Web-based Examiner’s Search Tool) has precision search tools to allow for more focused searches, multiple database searching, and faster viewing. It includes abstracts from the European and Japanese Patent Offices plus a database of foreign patents and published applications searchable only by patent number or application number.

For those who are already expert patent searchers, PubEast allows for even more sophisticated search techniques and faster viewing. PubEast now includes the Foreign Patent Retrieval Service (FPRS) database. FPRS is a foreign abstract database with text searchable indexes. It expands the image link available for the European Patent Office (EPO) and the Japanese Patent Office (JPO) abstracts that include the entire Foreign Document collection held by USPTO (with the caveat that some documents may not have an associated image).

It's advisable to become proficient with the USPTO's online patent searching tools before trying first PubWest and then perhaps the more-complicated-to-learn PubEast.

For inventors in the Houston area, a good place to start learning patent searching is the basic patent search class at Rice University's Fondren Library offered once a month (class schedule). After this introduction to the basics of searching, a PubWest self-directed PowerPoint is available on Fondren's patent computers. Before the end of 2014, look for an introductory PubEast class. For those who are already expert patent searchers, a handout providing an orientation to PubEast is available now.

Request to Testify at Hearing Re. Identification of Attributable Owner of a Patent

The following is a summary of Federal Register Notice Volume 79, Number 48 (Wednesday, March 12, 2014)] concerning extending the period of request to testify at public hearings regarding identification of attributable owner:

SUMMARY: The United States Patent and Trademark Office (Office) published a notice on January 24, 2014, proposing changes to the rules of practice to require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent, and seeking written comments on the proposed changes. This initiative is one of a number of executive actions issued by the Administration that are designed to ensure issuance of the highest-quality patents, enhance competition by providing the public with more complete information about the competitive environment in which innovators operate, improve market efficiency for patent rights by making patent ownership information more readily and easily available, reduce abusive patent litigation by helping the public defend itself against frivolous litigation, and level the playing field for innovators. The Office published a notice on February 20, 2014 indicating that it was conducting two public hearings to introduce the proposed changes anddirectly receive feedback from the public. The notice published on February 20, 2014 also extended the period for comment on the proposed rules until April 24, 2014. The Office is now extending the deadline for requesting to testify at either public hearing until March 12,2014.

DATES: Public Hearing Dates: The first public hearing will take place on March 13, 2014, from 1 p.m. Eastern Daylight Time (EDT) until 4 p.m. EDT, in Alexandria, Virginia.

The second public hearing will take place on March 26, 2014, from 9 a.m. Pacific Daylight Time (PDT) until noon PDT, in San Francisco, California.

Requests To Provide Oral Testimony: Those wishing to provide oral testimony must submit a request to do so in writing no later than March 12, 2014. Members of the public who wish to attend solely to observe need not submit a request to attend.

For more information visit http://www.gpo.gov/fdsys/pkg/FR-2014-03-12/html/2014-05281.htm

Substantive Submissions Made During Prosecution of the Trademark

According to the Federal Register Vol. 79, No. 43 (Wednesday, March 5, 2014), the United States Patent and Trademark Office is seeking comments about substantive submissions made during prosecution of the Trademark Application.

I. Abstract
The United States Patent and Trademark Office (USPTO) administers the Trademark Act, 15 U.S.C. 1051 et seq., which provides for the Federal registration of trademarks, service marks, collective trademarks and service marks, collective membership marks, and certification marks. Individuals and businesses that use or intend to use such marks in commerce may file an application to register their mark with the USPTO. Such individuals and businesses may also submit various communications to the USPTO, including providing additional information needed to process a request to delete a particular filing basis from an application or to divide an application identifying multiple goods and/or services into two or more separate applications. Applicants may seek a six-month extension of time to file a statement that the mark is in use in commerce or submit a petition to revive an application that abandoned for failure to submit a timely response to an office action or a timely statement of use or extension request. In some circumstances, an applicant may expressly abandon an application by filing a written request for withdrawal of the application. The rules implementing the Act are set forth in 37 CFR Part 2. These rules mandate that each register entry include the mark, the goods and/or services in connection with which the mark is [[Page 12491]] used, ownership information, dates of use, and certain other information. The USPTO also provides similar information concerning pending applications. The register and pending application information may be accessed by an individual or by businesses to determine the availability of a mark. By accessing the USPTO's information, parties may reduce the possibility of initiating use of a mark previously adopted by another. The Federal trademark registration process may thereby lessen the filing of papers in court and between parties.

DATES: Written comments must be submitted on or before May 5, 2014.

For more information visit http://www.gpo.gov/fdsys/pkg/FR-2014-03-05/html/2014-04814.htm

Delayed Submission of Certain Requirements - Prioritized Patent Examination

According to Federal Register Vol. 79, No. 43 (Wed., March 5, 2014), the United States Patent and Trademark Office is considering changes to permit delayed submission of certain requirements for prioritized examinations.

SUMMARY: The Leahy-Smith America Invents Act includes provisions for prioritized examination of patent applications (also referred to as ``Track I''), which have been implemented by the United States Patent and Trademark Office (Office) in previous rulemakings. This interim rule simplifies the Track I prioritized examination practice to reduce the number of requests for prioritized examination that must be dismissed. In order to enable rapid processing and examination of those applications, the previous rulemakings provided that an application having a request for Track I prioritized examination requires, upon filing of the application, an inventor's oath or declaration and all required fees, and contains no more than four independent claims, thirty total claims, and no multiple dependent claims. Accordingly, any request for Track I prioritized examination not meeting all of the requirements on filing must be dismissed. The Office has found that many such dismissals are due to the application as filed not including a properly executed inventor's oath or declaration, not including the excess claims fees or application size fee due, or improperly including a multiple dependent claim or claims in excess of the permitted number. The Office has determined that the time periods for meeting those requirements when filing a request for Track I prioritized examination could be expanded while maintaining the Office's ability to timely examine the patent application.

DATES: Effective Date: March 5, 2014. Applicability Date: The changes to 37 CFR 1.102 apply only to applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, in which a first action has not been mailed.

Comment Deadline Date: Written comments must be received on or before May 5, 2014.

For more information access http://www.gpo.gov/fdsys/pkg/FR-2014-03-05/html/2014-04806.htm

Changes to Continued Prosecution Application Practice for Patents

According to the Wednesday March 5, 2014 Federal Register, the United States Patent and Trademark Office is proposing the following changes to continued prosecution application practice.

SUMMARY: The Leahy-Smith America Invents Act (AIA) revised and streamlined the requirements for the inventor's oath or declaration. In implementing the AIA inventor's oath or declaration provisions, the United States Patent and Trademark Office (Office) provided that an applicant may postpone the filing of the inventor's oath or declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor. The rules pertaining to continued prosecution applications (which are applicable only to design applications) require that the prior nonprovisional application of a continued prosecution application be complete, which requires that the prior nonprovisional application contain the inventor's oath or declaration. This interim rule revises the rules pertaining to continued prosecution applications to permit the filing of a continued prosecution application even if the prior nonprovisional application does not contain the inventor's oath or declaration if the continued prosecution application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor.

DATES: Effective Date: March 5, 2014. Comment Deadline Date: Written comments must be received on or before May 5, 2014.

ADDRESSES: Comments should be sent by electronic mail message over the Internet addressed to: AC92.comments@uspto.gov. Comments also may be submitted by postal mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Eugenia A. Jones, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.

For more information access http://www.gpo.gov/fdsys/pkg/FR-2014-03-05/html/2014-04807.htm