ILPO to Act as ISR and IPEA for PCT Applications Received by USPTO

Last month, the U.S. Patent and Trademark Office announced that as of October 1, 2014, the Israel Patent Office (ILPO) can act as an International Searching Authority (ISR) and International Preliminary Examining Authority (IPEA) for International applications filed with the USPTO as the Receiving Office.  The ability of the ILPO to act as an ISR/IPEA for any International application received by the USPTO will depend on the satisfaction of four requirements:  (1) the application is submitted in English, (2) the ILPO has not received more than 75 such applications in a given fiscal quarter, (3) the application does not contain any claims relating to a business method, and (4) the ILPO is chosen as a competent authority by the applicant.  The search fee for the ILPO acting as an ISA for International applications received by the USPTO is currently $1,021.  With the addition of the ILPO, U.S. applicants can now elect the USPTO, European Patent Office (EPO), Korean Intellectual Property Office (KIPO), IP Australia, Rospatent, or ILPO as the ISA or IPEA.  Additional information about the arrangement between the USPTO and ILPO with respect to International applications received by the USPTO can be found here.

USPTO and SIPO Launch Priority Document Exchange Program

Last month, the U.S. Patent and Trademark Office and the State Intellectual Property Office of China (SIPO) announced the launch of a new system that would allow the two offices to electronically exchange patent application priority documents directly.  The program will allow the USPTO and the SIPO, with appropriate authorization, to obtain electronic copies of priority documents filed with the other office at no cost to the applicant.  The USPTO's announcement notes that while applicants will no longer need to obtain and file paper copies of the priority documents, they will still be responsible for ensuring that priority documents are provided in a timely manner.  Additional information regarding priority document exchange between the USPTO and SIPO can be found here.

USPTO and KIPO Sign Agreement on Cooperative Patent Classification System

In September, the U.S. Patent and Trademark Office announced that the Korean Intellectual Property Office (KIPO) had agreed to fully classify its patent applications and utility models using the Cooperative Patent Classification (CPC) system.  The two offices reached the agreement during a bilateral meeting in Geneva, Switzerland.  USPTO Deputy Director Michelle Lee expressed the hope that other IP5 offices would follow KIPO's lead in utilizing the CPC system, which was jointly developed by the USPTO and the European Patent Office (EPO).  KIPO had been using the CPC system in selected technology areas as part of a pilot program since June of 2013 (see "SIPO and KIPO to Use Cooperative Patent Classification System").

USPTO Revises Rules of Practice to Replace Express Mail References

Last month, the U.S. Patent Trademark Office issued a Federal Register notice (79 Fed. Reg. 63036) indicating that the Office would be revising the rules of practice to replace all references to Express Mail® with references to Priority Mail Express®.  The change is being made in response to the decision by the United States Postal Service (USPS) to rename Express Mail® as Priority Express Mail®.  The changes to the rules took effect on October 22, 2014.  While the continued adoption of electronic filing has diminished the need for Priority Express Mail® filings, astute patent practitioners may still want to strike the now obsolete Express Mail® phrase from their lexicon.