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 http://www.gpo.gov/fdsys/pkg/FR-2012-08-09/html/2012-19568.htm .

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: http://www.uspto.gov/aia_implementation/OED_SOL_Final_Rules.pdf.

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.

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.

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 http://www.gpo.gov/fdsys/pkg/FR-2012-07-26/pdf/2012-18121.pdf .

The request for comments pertains to examination guidelines to implement the first-to-file provisions of the AIA. See details at http://www.gpo.gov/fdsys/pkg/FR-2012-07-26/pdf/2012-17898.pdf.