Recent Patent Related Federal Register Notices

At this time of the year many attorneys and agents are not paying all that much attention to the rules and requests for comments coming out of the Patent Office. Truthfully, with the number of changes that have taken place under the Kappos run Patent Office and the enormity of the America Invents Act many patent attorneys, including myself, are worn out!  Add to that the typical end of the year matters for clients and our own businesses and it is easy to miss announcements in November and December.

With that in mind I thought I would take this opportunity to try and bring everyone up to speed on the various patent related announcements and notices in the Federal Register that were published in November 2011 and December 2011.  I am told that more are on the way in January 2012.  I can’t wait!

Announced December 16, 2011
Extension of the Extended Missing Parts Pilot Program

The USPTO is extending the Extended Missing Parts Pilot Program until December 31, 2012. Therefore, any certification and request to participate in the Extended Missing Parts Pilot Program must be filed before December 31, 2012. The USPTO may further extend the pilot program (with or without modifications) depending on the feedback received and the continued effectiveness of the pilot program.

The USPTO previously implemented a change to missing parts practice in certain nonprovisional applications, which in some circles is referred to as the 24 month provisional patent program. Under the pilot program an applicant under certain conditions can request a twelve-month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional patent application.  This never created a “clean” 24 month provisional patent application because statutorily a nonprovisional patent application must be filed within 12 months and the provisional patent application goes abandoned.  It did, however, string out the filing of claims and payment of fees through Notice of Missing Parts practice, which is rule based and under the purview of the Office.

Announced December 15, 2011
Sunset of Backlog Reduction Stimulus Plan, Extension of Green Technology Pilot

Obviously named before “stimulus” became such a negative term, this program provided two procedures under which an applicant may have an application accorded special status for examination. The Patent Application Backlog Reduction Stimulus Plan has been available if the applicant expressly abandons another co-pending unexamined application. The Green Technology Pilot Program has been available to patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction.

According to the Patent Office the Patent Application Backlog Reduction Stimulus Plan fulfilled its intended purpose and will not be extended. Whether that signals success or failure is likely in the eye of the beholder.  It would seem that not as many took advantage of the application exchange program as anticipated.  On the opposite end of the spectrum, the Green Technology Pilot Program has been proclaimed a success and the plan will be extended until 500 additional applications have been accorded special status under this program or until March 30, 2012, whichever occurs earlier.

Announced November 23, 2011
Request for Comments on More Complete Patent Assignment Information

The USPTO is considering changes aimed at building a more complete record of assigned applications and patents.  In the Federal Register announcement the Patent Office explains that intangible assets now comprise over 50% of the business outputs of U.S. industry, which is a staggeringly high percentage.  The Office also explains that markets operate most efficiently when buyers and sellers can find one another, which is of course a true statement.  Ergo, the USPTO is considering rule changes to provide more accurate assignment data for pending patent applications and issued patents.  But is this a real problem?  Is getting a more accurate picture really necessary to facilitate business? It probably will help the USPTO to determine whether they are getting appropriate fee payments, including maintenance fee payments.  Maybe there is a concern about people claiming small entity status?

The potential changes proposed by the USPTO include: (1) Amending 37 CFR to require that any assignee or assignees be disclosed at the time of application filing; (2) Amending 37 CFR 3.81 to require that the application issue in the name of the assignee or assignees as of the date of payment of the issue fee; (3) Amending 37 CFR 1.215(b) to require the identification of assignment changes after filing date for inclusion on the patent application publication (PGPub); (4) Amending 37 CFR 1.27(g) to require timely identification of any new ownership rights that cause the application or issued patent to gain or lose entitlement to small entity status; and (5) Amending 37 CFR to provide for discounted maintenance fees in return for verification or update of assignee information either when a maintenance fee is paid or within a limited time period from the date of maintenance fee payment.

If you wish to comment you have until January 23, 2012.  You can comment via e-mail by sending yoru comments to [email protected].

Announced November 22, 2011
New Rules of Practice Before the BPAI in ex parte Appeals

The USPTO amended the rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals.  If any of these Federal Register Notices caught your attention it was probably this one, even though its release came up against the Thanksgiving holiday.

For more treatment of these rules see

• U.S. Patent Office Finalizes New Appeal Rules
• New BPAI Final Rules
• USPTO to Implement New Ex Parte Appeals Rules for 2012

Announced November 15, 2011
Fee for Filing a Patent Application Without Using EFS

The Leahy-Smith America Invents Act provides that an additional fee of $400 shall be established for each application for an original (i.e., non- reissue) patent application that is not filed by electronic means.  This additional fee does not apply to design patents, but does equally apply to nonprovisional and provisional patent applications.

This final rule simply revised the rules of practice to include the $400 fee for applications not filed electronically, becoming effective on November 15, 2011.

Announced November 7, 2011
Trademark Manual of Examining Procedure, Eighth Edition

On October 15, 2011, the USPTO issued the eighth edition of the TMEP, which provides USPTO trademark examining attorneys, trademark applicants, and attorneys and representatives for trademark applicants with a reference on the practices and procedures for prosecution of applications to register marks in the USPTO. The TMEP contains guidelines for examining attorneys and materials in the nature of information and interpretation, and outlines the procedures which examining attorneys are required or authorized to follow in the examination of trademark applications. The eighth edition incorporates USPTO trademark practice and relevant case law reported prior to September 1, 2011.

Announced November 4, 2011
National Entrepreneurship Month

On November 1, 2011, President Obama issued a Presidential Proclamation declaring November 2011 as National Entrepreneurship Month.  President Obama started out the proclamation by saying:

From inventing the traffic light to developing the artificial heart, our Nation’s doers, makers, and entrepreneurs have proven time and again that, in America, it takes only a single good idea and the courage to pursue it to change history. In fulfilling this simple promise, these visionaries play a critical role in sparking new industries, expanding our economy, and generating new job growth across our country. This month, we celebrate the remarkable and everyday successes of our entrepreneurs and innovators, and we reaffirm our commitment to ensuring that our economy remains the engine and the envy of the world.

The President then goes on to tout the virtues the the America Invents Act, seeing streamlining advantages that are not readily apparent to me. The President also promises to work “to create new opportunities for collaboration within the private sector.” By and large the broad strokes you would expect from a Presidential statement about innovation and patents, but still nice that entrepreneurs get their own month.

Announced November 3, 2011
Discontinuing the Mass Mailing of Paper Fee Schedules

Effective November 3, 2011, the USPTO discontinued the practice of mass mailing the revised fee schedules to registered attorneys, agents, and deposit account holders when fees are adjusted due to enactment of legislation or fluctuations in the Consumer Price Index. The Office says that because a substantial majority of filings and fee payments are submitted on-line, and the most up-to-date fee schedule is always available and maintained on-line, there is simply no need to mass mail paper fee schedules.

The current fee schedule is available online at USPTO Fee page online.