USPTO News Briefs - May 24, 2012

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Donald Zuhn]

USPTO Releases Certain AIA Implementation Dates

Gongola, JanetThe U.S. Patent and Trademark Office recently updated its Leahy-Smith America Invents Act Implementation micro-site to announce several AIA implementation dates.  On the micro-site, USPTO Patent Reform Coordinator Janet Gongola (at right) indicated that the Office will submit its genetic testing study to Congress (pursuant to § 27 of the AIA) on June 15; will issue a Federal Register notice making the Patent Ombudsman Program permanent in June or July; will issue three notices of proposed rulemaking on First-Inventor-to-File, Fee Setting, and Micro-entity provisions and one guidance document on the First-Inventor-to-File provisio in June or July; will open the Detroit satellite office on July 13; will issue final rules for the Inventor's Oath/Declaration, Supplemental Examination, Preissuance Submissions, Citation of Patent Owner Statements, Post Grant Review, Inter Partes Review, and Covered Business Method Review provisions, the Technological Invention Definition, the Umbrella Administrative Trial Rules, and a trial practice guide for the administrative trials by August 16.  Ms. Gongola also indicated that the Office was planning a roundtable discussion on its First-Inventor-to-File proposal in the late summer, and a second series of cross-country roadshows in the early fall to teach stakeholders about the final rules.

USPTO Posts Comments on AIA Implementation

USPTO SealThe U.S. Patent and Trademark Office has posted comments it has received in response to the Office's several notices on AIA implementation.  The comments have been divided by subject as follows:

Inter Partes Review
• Post-Grant Review
• Transitional Program for Covered Business Method Patent Review
• Definition of Technological Invention
• Derivation Proceedings
• Umbrella Administrative Trial Rules and Practice Guide
• Genetic Diagnostic Testing
• Statute of Limitations Provisions for Office Disciplinary Proceedings
• Patent Public Advisory Committee Public Hearings on the Proposed Patent Fee Schedule
• Satellite Offices for the Nationwide Workforce
• Supplemental Examination and Revision of the Nationwide Workforce
• Inventor's Oath or Declaration
• Preissuance Submissions by Third Parties
• Post Patent Provisions
• Leahy-Smith America Invents Act Implementation

The comments page on the AIA microsite also outlines the process by which the public can submit comments to the final rules to be published by the Office by August 16.

Rospatent Given Authority to Act as ISA/IPEA for PCT Applications Filed with RO/US

RospatentLast month, the U.S. Patent and Trademark Office and Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent) concluded an agreement that permits Rospatent to act as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for international applications filed with the USPTO as a Receiving Office (RO/US) provided that the applications are filed in English and Rospatent has been selected as the ISA and IPEA.  The agreement became effective January 10, 2012.

In announcing the agreement, the USPTO noted that it would collect a search fee of $415 for Rospatent acting as an ISA (with the fee increasing to $453 effective June 1, 2012), and then transmit the fee to Rospatent.  The Office also noted that all correspondence between Rospatent and the USPTO will be in English.

With the addition of Rospatent, applicants can now choose among five offices to act as ISA or IPEA:  the USPTO, European Patent Office (EPO), Korean Intellectual Property Office (KIPO), IP Australia, and Rospatent.  Currently, the search fees for electing one of these offices are:  $2,426 (EPO), $2,080 (USPTO), $2,041 (IP Australia), $1,101 (KIPO), and $415 (Rospatent).  Applicants should keep in mind that the National Stage search fee will depend on whether the international search report (ISR) was prepared by another office ($490) or by the USPTO ($120).

Java Update Not Supported By EFS-Web and Private PAIR

EFS-WebEarlier this month, the U.S. Patent and Trademark Office issued an e-mail alert notifying EFS-Web and Private PAIR users that neither system would support the Java 7 update 4 (7u4) released by Oracle Corp. on May 2.  The Office has recommended that users not install this update until the Office resolves issues with that update and the EFS-Web and Private PAIR.


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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