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Proposed Rules for Supplemental Examination, Revised Reexamination Fees and Deadline for Satellite Office Comments

Written by U.S. Patent and Trademark Office
Posted: January 26, 2012 @ 4:21 pm
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USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

Changes will implement provisions of the America Invents Act

Washington – The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.

“The supplemental examination provisions will permit a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation.”

Publication of the proposed rules for supplemental examination and reexamination fees in the Federal Register begins a sixty-day public comment period during which time the public may provide written input to the agency about the proposals. Further information about the proposed rules for supplemental examination and reexamination fees may be found in the Federal Register Notice available at www.uspto.gov/aia_implementation/77fr3666.pdf.

For non-press inquiries, contact Cynthia L. Nessler, Senior Legal Advisor, (571) 272-7724, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy.

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Deadline for Comments on Future Locations for USPTO Satellite Offices Approaches Monday January 30, 2012

Written comments must be received on or before deadline to ensure consideration

Washington – The United States Patent and Trademark Office (USPTO) published a Federal Register Notice on November 29, 2011 seeking written comments on potential locations for additional USPTO satellite offices.  The deadline for comments is set for Monday, January 30, 2012 11:59 p.m. ET.

“We’re looking forward to reviewing community feedback on locations for Satellite Offices to recruit and retain top talent, and to better serve our applicant community,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. ”We’re committed to conducting an open and transparent selection process that will ultimately yield the best locations for the USPTO and its user community.”

Subject to available resources and as provided for in the America Invents Act, the USPTO intends to establish at least two more satellite offices in addition to the one in Detroit in the next three years. In order for the USPTO to begin the process of selecting locations in addition to its Alexandria headquarters and the office planned for Detroit, written comments to the Notice must be received on or before Monday, January 30, 2012, to ensure full consideration.  The USPTO is not extending the Jan. 30 deadline for written comments to the Notice.

Public comments should be submitted to satelliteoffices@uspto.gov or as otherwise dictated in the Federal Register Notice.   Comments should provide information that supports the USPTO’s purposes of establishing satellite offices, including that the location will increase outreach activities to better connect patent filers and innovators with the offices, enhance patent examiner retention, and improve recruitment of patent examiners.

For non-press inquiries, contact Azam Khan, Deputy Chief of Staff, United States Patent and Trademark Office at azam.khan@uspto.gov.

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Editorial Note: For Gene’s top 10 list of Satellite Patent Office locations please see Top 10 Locations the PTO Should Consider for Satellite Offices, which will be submitted for consideration by the USPTO.

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  1. I was a bit nervous about the new Post Grant Review included in the AIA, until I saw today that ex-parte challengers requesting a re-examination will have to cough up more than $17,000 as well as a few more documents trying to support their allegations. Also only one bite, or forever hold your peace. The way it looks to me, the supplemental re-exam might be good insurance if litigation seems likely. Pretty rare, but perhaps something to consider.

    The 17K is apparently what David figures the proceedings will actually cost the USPTO, and no more free rides for challengers from the USPTO.

    If you want to destroy a patent right in the future, it seems to have just gotten a lot more expensive. Probably not a problem if large dollars are involved, but that would seem to be pretty rare to me.

    Stan~