USPTO News Briefs - September 5, 2012

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Donald Zuhn]

USPTO Seeks Comments on Proposed Fee Schedule

USPTO SealYesterday, the U.S. Patent and Trademark Office announced that it would be publishing a notice in the Federal Register on September 6, 2012, seeking public input on proposed patent fees.  The Office noted that:

The proposed fees are at least 22 percent lower for a routine patent process -- i.e., filing, search, examination, publication, and issue fees -- than the current fee schedule.  The current proposed fees also are lower than those originally proposed by the USPTO in February.  The Office acted on extensive public feedback solicited in writing and at public hearings held by the Patent Public Advisory Committee in Alexandria, Virginia, and Sunnyvale, California.

An advance copy of the 213-page notice to be published on Thursday can be found here.  Publication of the notice will begin a 60-day comment period that will conclude on Monday, November 5, 2012.

USPTO Begins Inter Partes Reexamination Countdown

Last week, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 52315) reminding potential third-party requesters that pursuant to § 6(c)(3) of the Leahy-Smith America Invents Act, which terminates the authority for inter partes reexamination filings effective September 16, 2012, "any original or corrected/replacement request for an inter partes reexamination submitted on or after September 16, 2012, will not be accorded a filing date, and any such request will not be granted."  Thus, the last day for filing an inter partes reexamination request is Saturday, September 15, 2012 (the Office notes that September 15, 2012 is the final deadline "even though September 15, 2012, the last day to file a request, is a Saturday").  The notice advises requesters to file any requests as soon as possible in order to give the Office time to receive, process, and review such requests, and if necessary, notify requesters of any deficiencies via a Notice of Failure to Comply with Inter Partes Reexamination Request Filing Requirements so that the requester can submit a corrected/replacement request by September 15, 2012.  Most importantly, the notice states that:

The Office will make every effort to promptly and efficiently process and review all requests for inter partes reexamination.  It is to be emphasized, however, that the Office cannot guarantee that a Notice of Failure to Comply with Inter Partes Reexamination Request Filing Requirements will be issued by the Office prior to September 16, 2012, or even if it is so issued, that sufficient time will remain for the mailing to reach a requester and allow for response prior to September 16, 2012.  While, traditionally, the Office has been setting a thirty-day period to respond to the Notice of Failure to Comply, this will no longer be possible for any Notice of Failure to Comply mailed after August 16, 2012, because the statute which provides for the filing of a request for inter partes reexamination will no longer be in effect as of September 16, 2012.

USPTO to Host AIA Webinar on September 7

The U.S. Patent and Trademark Office announced that it will be holding a webinar on September 7, 2012 from 12:30 to 1:30 pm (EDT) to discuss all aspects of the AIA.  Participants will include USPTO Director David Kappos, Deputy Director Terry Rea, Commissioner for Patents Peggy Focarino, General Counsel Bernie Knight, Chief Judge James Smith, and Lead Judge Michael Tierney.  Chief Communications Officer Todd Elmer will moderate the webinar.

The roundtable will be available via WebEx webinar (event number: 990 842 706; password: 123456) or via teleconference at +1-408-600-3600 (access code: 990 842 706).

The September 7 webinar will be the Office's second AIA event this week, with a roundtable scheduled for tomorrow 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 (see "USPTO News Briefs," August 27, 2012 for information regarding tomorrow's roundtable).


Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

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