USPTO News Briefs - February 06, 2013

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Seeks Comments on Patent Law Harmonization

USPTO SealLast week, the U.S. Patent and Trademark Office issued a notice in the Federal Register (78 Fed. Reg. 7411) seeking comments on matters related to the harmonization of substantive patent law.  In particular, the Office indicated that it was seeking input from the public regarding four topics:

(1) The grace period,
(2) publication of applications,
(3) the treatment of conflicting applications, and
(4) prior user rights.

The notice also indicated that the Office would be holding a public hearing from 8:30 am to 12:00 pm (EDT) on March 21, 2013, to permit members of the public to testify on the above issues.  The hearing will be held at the Madison Auditorium on the USPTO campus in Alexandria, Virginia.  Those wishing to testify at the hearing can request an opportunity to do so by e-mailing no later than February 28, 2013.  Requests to testify at must include: (1) The name of the person desiring to testify; (2) the person's contact information (telephone number and e-mail address); (3) the organizations the person represents, if any; and (4) a preliminary written copy of their testimony.  The Office plans to webcast the public hearing, and information regarding the webcast will be made available closer to the hearing date.

With respect to the submission of comments, the Office noted that while separate written comments would be accepted, the Office encouraged interested stakeholders to complete an electronic questionnaire relating to the above issues instead.  Written comments can be sent by e-mail to, or by regular mail addressed to:  Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313–1450, ATTN: Bijou Mgbojikwe, with the text "Harmonization issues" in the subject line of the e-mail or regular mailing.  The deadline for submitting written comments is February 28, 2013.  However, in lieu of written comments, the Office is asking the public to complete a questionnaire that is available here.

The USPTO's effort to obtain stakeholder input on patent law harmonization arises out of a July 2011 meeting in Tegernsee, Germany of representatives from the patent offices of Denmark, France, Germany, Japan, the United Kingdom, the United States, and the European Patent Office -- or the "Tegernsee Group" -- to discuss international harmonization of substantive patent law.  The Tegernsee Group mandated detailed studies on the four topics above and collaboratively developed a joint harmonization questionnaire to aid in the acquisition and analysis of stakeholder views across jurisdictions on these issues.

USPTO Releases Patent Term Calculator

In January, the U.S. Patent and Trademark Office announced the release of the beta version of a patent term calculator, which allows for the estimation of the expiration date of a utility, plant, or design patent.  The calculator, which is in the form of an Excel spreadsheet, can be downloaded here.  Guidance as to how to best use the tool, including a guide for locating information to be entered into the calculator, can be found on the patent term calculator webpage.

In its press release, the Office notes that the calculator "provides a best estimate of a patent's expiration date, based on a comprehensive list of factors than can be found in USPTO records," and that "[b]efore relying on an expiration date, individuals should always carefully inspect all relevant documents available through the USPTO, court records and elsewhere, and consult with an attorney."

Patent Docs thanks Kery Fries of the USPTO's Office of Patent Legal Advisor and Office of Deputy Commissioner for Patent Examination Policy for alerting us to the new tool.

USPTO Extends PPH with IPO

Icelandic Patent Office (IPO)Last month, the U.S. Patent and Trademark Office announced that the Patent Prosecution Highway (PPH) pilot program with the Icelandic Patent Office (IPO) would be extended indefinitely.  As with other PPH programs, the USPTO-IPO PPH permits an applicant having an application whose claims have been allowed in one of the offices to fast track the examination of an application in the other office, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from either the USPTO or IPO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in the corresponding application in that office.

The USPTO currently has twenty-two PPH programs (full or pilot) in place with IP Australia (IP AU), the Austrian Patent Office (APO), the Canadian Intellectual Property Office (CIPO), China's State Intellectual Property Office (SIPO), the Colombian Superintendence of Industry and Commerce (SIC), the Industrial Property Office of the Czech Republic (IPOCZ), the Danish Patent and Trademark Office (DKPTO), the European Patent Office (EPO), the National Board of Patents and Registration of Finland (NBPR), the German Patent and Trade Mark Office (DPMA), the Hungarian Intellectual Property Office (HIPO), the Icelandic Patent Office (IPO), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Mexican Institute of Industrial Property (IMPI), the Norwegian Industrial Property Office (NIPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Intellectual Property Office of Singapore (IPOS), the Spanish Patent and Trademark Office (SPTO), the Taiwan Intellectual Property Office (TIPO), and the United Kingdom Intellectual Property Office (UK IPO).  The USPTO has also established twelve PCT-PPH programs with other patent offices:  IP AU, APO, SIPO, EPO, NBPR, ILPO, JPO, KIPO, the Nordic Patent Institute (NPI), ROSPATENT, SPTO, and the Swedish Patent and Registration Office (PRV).  Additional information regarding the various PPH and PCT-PPH programs, as well as links to the appropriate request forms to be used for each program, can be found here.


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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