USPTO News Briefs - August 27 2012

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Donald Zuhn]

USPTO to Hold Roundtable on AIA First Inventor to File Provisions

USPTO Building FacadeEarlier this month, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 49427) announcing that the Office will be hosting a roundtable on September 6, 2012 to obtain public input from organizations and individuals on issues relating to the USPTO's proposed implementation of the first-inventor-to-file provisions of the AIA.  On July 26, the Office published a notice of proposed rulemaking regarding "Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act" (77 Fed. Reg. 43742) and a request for comments regarding "Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act" (77 Fed. Reg. 43759).  The roundtable will focus on the above documents.

The roundtable will be held from 1:30 to 4:30 (EDT) in the Madison Auditorium at 600 Dulany Street in Alexandria, Virginia, and is open to the public.  The Office indicated that it plans to invite a number of roundtable participants from among patent user groups, practitioners, industry, independent inventor organizations, academia, and the government.  An agenda for the roundtable can be found here.  The roundtable will be available via WebEx webinar (event number: 997 151 983; password: 123456) or teleconference at +1-408-600-3600 (access code: 997 151 983).

USPTO to Hold Eight AIA Roadshows on Final Rules

The U.S. Patent and Trademark Office has announced that it will be hosting eight roadshows in September to share information about the new final rules for implementing the provisions of the Leahy-Smith America Invents Act that take effect on September 16, 2012.  The final rules to be covered at the roadshows relate to the inventor's oath/declaration, preissuance submissions, citation of patent owner statements, supplemental examination, inter partes review, post grant review, and covered business method review provisions of the AIA.  The roadshows will be free and open to the public.  While pre-registration is not required, seating will be available on a first-come, first-served basis.  The Office notes that the roadshows in Minneapolis, Alexandria, and Los Angeles will be webcast.  The eight roadshows include:

Monday, September 10
Hennepin County Library
Minneapolis, MN

Wednesday, September 12
USPTO Campus
Alexandria, VA

Friday, September 14
Los Angeles Public Library
Los Angeles, CA

Monday, September 17
Denver Public Library
Denver, CO

Thursday, September 20
Detroit Public Library
Detroit, MI

Monday, September 24
Georgia Institute of Technology Library
Atlanta, GA

Wednesday, September 26
Rice University Fondren Library
Houston, TX

Friday, September 28
New York Public Library
New York, NY

According to the USPTO's AIA Roadshow webpage, the agenda of the roadshows will be as follows:

10:30 am -- Opening Remarks

11:00 am -- Patents: Final Rules for Inventor's Oath/Declaration, Pre-issuance Submission, Miscellaneous Post Patent Provisions, and Supplemental Examination

12:30 pm -- Lunch Break

1:30 pm -- Board: Umbrella Final Rules and Specific Final Rules for Post Grant Review, Inter Partes Review, and Covered Business Method Review

3:15 pm -- Break

3:30 pm -- Finance: Proposed Rules for Fees

4:10 pm -- Patents: Proposed Rules for First-Inventor-to-File

4:50 pm -- Closing Remarks


USPTO Expands Patent Law School Clinic Certification Pilot Program

USPTO SealLast month, the U.S. Patent and Trademark Office announced the further expansion of the Patent Law School Clinic Certification Pilot Program to include an additional eleven schools for the upcoming academic year.  Under the pilot program, law students are permitted to practice patent law before the Office under the guidance of a law school faculty clinic supervisor.  In particular, students in the program can expect to draft and file a patent application and respond to an office action.

The Patent Law School Clinic Certification Pilot Program was begun in 2008 with six law schools, was expanded to include ten more schools in 2010 (some of the participating schools allow students to practice before the Office in both patents and trademarks and others allow students to practice before the Office in trademarks only).  The eleven new participating schools are Arizona State University Sandra Day O'Connor College of Law, Case Western Reserve University School of Law, University of Colorado Law School, Fordham University School of Law, University of Maryland Francis Carey School of Law, North Carolina Central University School of Law, University of Notre Dame Law School, University of Puerto Rico Law School, Thomas Jefferson School of Law, University of Washington School of Law, and Wayne State University Law School.  The above schools join the sixteen prior participating law schools -- University of Akron School of Law; American University, Washington College of Law; University of Connecticut School of Law; The George Washington University School of Law; Howard University School of Law; The John Marshall School of Law; University of Maine School of Law; University of Maryland School of Law; University of New Hampshire School of Law; North Carolina Central University School of Law; University of Puerto Rico School of Law; University of Richmond – Richmond School of Law; Rutgers Law School – Newark Vanderbilt College of Law; West Virginia University School of Law; and William Mitchell College of Law.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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