Patent Reexaminations

[Federal Register: August 10, 2009 (Volume 74, Number 152)]
[Notices]
[Page 39916-39918]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr10au09-11]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office

Patent Reexaminations

ACTION: Proposed collection; comment request.

The complete comment request is available at http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2009_register&docid=fr10au09-11

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SUMMARY: The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the new 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 October 9, 2009.

ADDRESSES: You may submit comments by any of the following methods:

• E-mail: Susan.Fawcett@uspto.gov. Include A0651-00XX Patent Reexaminations 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, Administrative Management Group, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
  
• Federal Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT: Requests for additional information should be directed to Robert A. Clarke, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail at Robert.Clarke@uspto.gov.

SUPPLEMENTARY INFORMATION:

I. Abstract

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. 131 and 151 to examine applications and, when appropriate, allow applications and issue them as patents.

Chapter 30 of Title 35 U.S.C. provides that any person at any time may file a request for reexamination by the USPTO of any claim of a patent on the basis of prior art patents or printed publications. Once initiated, the reexamination proceedings under Chapter 30 are substantially ex parte and do not permit input from third parties. Chapter 31 of Title 35 U.S.C. provides for inter partes reexamination allowing third parties to participate throughout the reexamination proceeding. If a request for ex parte or inter partes reexamination is denied, the requester may petition the Director to review the examiner's refusal of reexamination. The rules outlining ex parte and inter partes reexaminations are found at 37 CFR 1.510-1.570 and 1.902-1.997.

Information requirements related to patent reexaminations are currently covered under OMB Control Number 0651-0033, along with other requirements related to patent issue fees and reissue applications. The USPTO is proposing to move the following items that are under 0651-0033 into a new information collection for Patent Reexaminations: Request for Ex Parte Reexamination Transmittal Form; Request for Inter Partes Reexamination Transmittal Form; Petition to Review the Refusal to Grant
Ex Parte Reexamination; Petition to Review the Refusal to Grant Inter Partes Reexamination; and Petition to Request Extension of Time in Ex Parte or Inter Partes Reexamination.

The USPTO is also proposing to include additional items related to patent reexaminations in this new information collection: Request for Ex Parte Reexamination; Request for Inter Partes Reexamination; Patent Owner's 37 CFR 1.530 Statement; Third Party Requester's 37 CFR 1.535 Reply; Amendment in Ex Parte or Inter Partes Reexamination; Third Party Requester's 37 CFR 1.947 Comments in Inter Partes Reexamination; Response to Final Rejection in Ex Parte Reexamination; Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination; and Third Party Requester's 37 CFR 1.951 Comments in Inter Partes Reexamination. These additional items are existing information requirements that previously were not fully covered by an information collection and are now being included in order to more accurately reflect the burden on the public for submitting requests related to patent reexaminations.

The Requests for Ex Parte and Inter Partes Reexamination are distinct collections from the Request for Ex Parte Reexamination Transmittal Form and the Request for Inter Partes Reexamination Transmittal Form, respectively. Whereas the transmittal forms are used by a requester (patent owner or third party) as a checklist to ensure compliance with the requirements of the statutes and rules for ex parte and inter partes reexaminations, the newly added collections represent the substantive analysis undertaken by a requester of reexamination. Thus, the Requests for Ex Parte and Inter Partes Reexamination are not new requirements. The other items being included in this new

[[Page 39917]]

collection cover additional information that may be submitted by patent owners and third party requesters in relation to a reexamination proceeding. Likewise, these items are existing requirements that previously were not fully covered by an information collection.

The public uses this information collection to request reexamination proceedings and to ensure that the associated fees and documentation are submitted to the USPTO.

New USPTO Director

On August 7, 2009 the U.S. Senate confirmed David Kappos as the Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO). Kappos comes to the USPTO from IBM where, as vice president and assistant general counsel for intellectual property, he managed IBM's patent and trademark portfolios. More information about him is available in a news release.

Federal Register: Trademark Examination Guides Updates

[Federal Register: July 13, 2009 (Volume 74, Number 132)]
[Notices]
[Page 33416-33417]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr13jy09-40]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-T-2009-0026]

Trademark Examination Guides 01-09 and 02-09 on Deceptiveness
Refusals

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice
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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or``Office'') is publishing two Trademark Examination Guides (``Guides'') regarding deceptiveness refusals for non-geographic and geographic marks. These Guides, issued on May 11, 2009, are being published to give members of the public notice of them in addition to the notice already provided on the USPTO's Web site. Members of the public may submit comments regarding the Guides. Comments will be given consideration in connection with developing future examination guidance dealing with the subjects of the Guides.

ADDRESSES: The Office prefers that any comments be submitted via electronic mail message to TMFRNotices@uspto.gov. Written comments may also be submitted by mail addressed to: Commissioner for Trademarks,P.O. Box 1451, Alexandria, VA 22313-1451, marked to the attention of Cynthia C. Lynch; or by hand delivery to the Trademark Assistance Center, Concourse Level, James Madison Building--East Wing, 600 Dulany
Street, Alexandria, Virginia, marked to the attention of Cynthia C.Lynch.

The comments will be available for public inspection on the Office's Web site at http://www.uspto.gov and will also be available at the Office of the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. 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: Cynthia C. Lynch, Office of the Deputy Commissioner for Trademark Examination Policy, by electronic mail at: cynthia.lynch@uspto.gov; or by mail addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, marked to the attention of Cynthia C. Lynch.

SUPPLEMENTARY INFORMATION: On May 11, 2009, the Office issued Examination Guides 01-09 and 02-09 regarding examination procedures for marks that may be deceptive under either section

[[Page 33417]]

2(a) or section 2(e)(3). Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), prohibits, inter alia, the registration of deceptive matter. Section 2(e)(3) of the Trademark Act, 15 U.S.C. 1052(e)(3), prohibits the registration of primarily geographically deceptively misdescriptive marks. Each Guide reviews and discusses case law regarding: (1) The elements of the refusal; (2) evidentiary issues with respect to the refusal; and (3) procedures for issuing refusals. The Guides may be
found on the Office's Web site at: http://www.uspto.gov/web/offices/ tac/notices/notices.htm.

The purpose of these Guides is to promote consistency in examination and to provide guidance to examining attorneys regarding when deceptiveness refusals must be issued. These Guides do not constitute substantive rulemaking and hence do not have the force and effect of law. They have been developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. To the extent that earlier guidance from the Office, including certain sections of the Trademark Manual of Examining Procedure (TMEP), 5th edition, is inconsistent with the guidance set forth in the Guides, Office personnel are to follow the Guides. The next revision of the TMEP will be updated accordingly.

Any member of the public may submit written comments on either or both of the Guides. The Office will consider any comments received in connection with developing future examination guidance dealing with the subjects of the Guides. Persons submitting comments should note that the USPTO does not plan to provide a response to or analysis of any comments, as these Guides are not notices of proposed rulemaking.

Dated: July 6, 2009.
John J. Doll,
Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.
[FR Doc. E9-16424 Filed 7-10-09; 8:45 am]

BILLING CODE 3510-16-P

Houston Inventors Tradeshow 7/12/2009

The Houston Inventors Association annual invention tradeshow will be held Wednesday, August 12, 2009, starting at 5:00 p.m. at the Bayland Community Center, 6400 Bissonnet. The tradeshow gives local inventors a chance to display their inventions and interact with groups who provide services to inventors such as the University of Houston Small Business Development Center. On that morning Deborah Duncan's Great Day Houston television show will spotlight invention. Inventors who wish to participate by displaying an invention or being an audience member should contact Otto Glaser at 713-896-9935.

For more information, see the Houston Inventors Association Web site. Remember, however, if you publicize an invention that is not already patented and you plan to patent it, you must apply for a patent within one year of first public display.

International Patent Application - Amendments to Claims

[Federal Register: July 1, 2009 (Volume 74, Number 125)] [Rules and Regulations] [Page 31372-31373] From the Federal Register Online via GPO Access [wais.access.gpo.gov] [DOCID:fr01jy09-8]

DEPARTMENT OF COMMERCE United States Patent and Trademark Office 37 CFR Part 1 [Docket No.: PTO-P-2009-0025] RIN 0651-AC34 July 2009 Revision of Patent Cooperation Treaty Procedures AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Final rule.

SUMMARY: The United States Patent and Trademark Office (USPTO) is revising the rules of practice in title 37 of the Code of Federal Regulations (CFR) to conform them to certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT) that take effect on July 1, 2009. These amendments result in a change to the procedure under the PCT whereby applicants may make amendments to the claims in an international application. DATES: Effective Date: The changes to 37 CFR 1.485 are effective on July 1, 2009.

FOR FURTHER INFORMATION CONTACT: Richard R. Cole, Senior Legal Examiner, Office of PCT Legal Administration (OPCTLA) directly by telephone at (571) 272-3281, or by facsimile at (571) 273-0459.

SUPPLEMENTARY INFORMATION: During the September 2008 meeting of the Governing Bodies of the World Intellectual Property Organization (WIPO), the PCT Assembly adopted various amendments to the Regulations under the PCT that enter into force on July 1, 2009. The amended PCT Regulations were published in the PCT Gazette of December 11, 2008 (38/ 2008), at pages 166-167. The amendments include provisions which modify the procedures for making amendments to the claims in an international application. The Patent Cooperation Treaty (PCT) enables an applicant to file one application, ``an international application'' or a ``PCT application,'' in a standardized format in a PCT Receiving Office and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant desires. The requirements for PCT applications are specified in the PCT Treaty Articles and the Regulations issued under the PCT Treaty (the PCT Regulations). Certain requirements of the PCT Treaty and PCT Regulations are reiterated in the USPTO's rules of practice in 37 CFR for the convenience of patent applicants. Changes to the PCT Regulations (PCT Rules 46.5 and 66.8) that govern the manner of making amendments to the claims in international applications will become effective on July 1, 2009. Under the current PCT Regulations, applicants are required to submit replacement pages for only those pages which contain changes, where under the revised PCT Regulations applicants will be required to submit a complete set of the claims when amending any of the claims. The USPTO's rules of practice in 37 CFR (37 CFR 1.485) set forth the current practice for amending claims and must be changed to be consistent with the changes to the PCT Regulations. The changes to 37 CFR 1.485 are effective on July 1, 2009, and apply to any amendment filed in an international application on or after that date regardless of the filing date of the international application.