By Donald Zuhn --
USPTO Planning to Review Existing Rules
In a notice published in the Federal Register (76 Fed. Reg. 39797) earlier this summer, the U.S. Patent and Trademark Office indicated that it has prepared a preliminary plan to review its existing regulations in response to Executive Order 13563. That Order, which was issued on January 18, 2011, directed agencies to develop and submit preliminary plans for reviewing their existing "significant regulations" (as defined in Executive Order 12866) and determining whether and how such regulations could be made more effective and less burdensome. The Office's plan is part of the Department of Commerce's "Preliminary Plan for Retrospective Analysis of Existing Rules," which calls for the Office to review its regulations and determine whether any of the regulations should be modified, streamlined, expanded, or repealed in order to make the Office's regulatory program more effective and less burdensome. The DOC plan can be found on the DOC website and on the White House website. The Office is seeking comments regarding the plan, which must be submitted on or before September 6, 2011 (although the notice indicates that the Office will continue to receive and consider comments submitted after that date). In particular, the Office seeks comments regarding ways in which the plan can be improved or best implemented and suggestions for regulations (in addition to those listed in the plan) that should be reviewed. Comments can be sent by e-mail to email@example.com, or by regular mail to Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Nicolas Oettinger. Information regarding the plan, the Office's implementation of the plan, and the Office's review of its regulations can be found on a webpage dedicated to the plan on the USPTO website. The webpage will also provide comments received by the Office and allow for the submission of comments after the September 6 deadline.
USPTO Considering One-Year Retention Plan for Patent-Related Papers
In a notice published last week in the Federal Register (76 Fed. Reg. 53667), the U.S. Patent and Trademark Office indicated that it was considering establishing a one-year retention period for patent-related papers that have been scanned into the Image File Wrapper system (IFW), where the Office electronically stores and maintains the files of patent applications and reexamination proceedings, or the Supplemental Complex Repository for Examiners (SCORE), a data repository system for the capture and retrieval of non-standard content, such as color and grayscale drawings, complex tables, and sequence listings. Under the Office's proposed document retention plan, papers scanned into the IFW system or SCORE prior to September 1, 2011 would be disposed of on September 1, 2012, and papers scanned into the IFW system or SCORE after September 1, 2011 would be disposed of one year after their submission date. The Office would exempt papers for which a request to correct the electronic record, made by a patent applicant or owner or reexamination party, is pending at the time of disposal (provided that the request was made one month prior to the expiration of the one-year retention period). Currently, the Office retains papers that have been scanned indefinitely (even though the papers, once scanned, are no longer part of the official record); the notice indicates that the Office has accumulated approximately 235,700 boxes of papers that have been scanned into the IFW system or SCORE. The Office is seeking comments regarding its document retention proposal, which must be submitted on or before October 28, 2011. Comments can be sent by e-mail to IFWPaperRetention@uspto.gov, or by regular mail to Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450. Additional information regarding the Office's document retention practices (including the fact that the Office scanned 24,895,341 pages last year and that the Office's image scanning quality rate is 99.999916%) can be found in the Federal Register notice. The notice also outlines procedures for correcting the electronic record.
USPTO Clarifies Criteria for Reissue Error
Last month, the U.S. Patent and Trademark Office issued a notice regarding a change in reissue policy in view of the Federal Circuit's April 15, 2011 decision in In re Tanaka. In particular, the notice indicates that the addition of claims in a reissue application that are narrower in scope than the existing claims, without any narrowing of the existing patent claims, will be considered to be a sufficient basis for correcting an error under 35 U.S.C. § 251. The notice also indicates that the Office is withdrawing any rejection in a pending application that contravenes the Court's decision in Tanaka. In addition, the Office noted that MPEP § 1402 is not consistent with the Tanaka decision, and therefore, that the Office intends to revise this section in due course.
USPTO and TIPO Establish PPH Pilot Program
On August 22, the U.S. Patent and Trademark Office announced the establishment of a new Patent Prosecution Highway (PPH) pilot program between the USPTO, as the designated representative of the American Institute in Taiwan (AIT), and the Taiwan Intellectual Property Office (TIPO), as the designated representative of the Taipei Economic and Cultural Representative Office (TECRO) in the United States. As with other PPH programs, the USPTO-TIPO PPH will permit 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 TIPO 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-TIPO PPH pilot program, which began today, is scheduled to expire on August 31, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. USPTO requirements for participation in the USPTO-TIPO PPH pilot program can be found here, and TIPO requirements can be here. The USPTO also issued a pre-OG notice yesterday for the new PPH program with TIPO.
With the addition of the new pilot program with TIPO, the USPTO has now established PPH programs with nineteen Offices. Currently the USPTO has PPH programs (full or pilot) in place with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), IP Australia (IP AU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the Intellectual Property Office of Singapore (IPOS), the German Patent and Trade Mark Office (DPMA), the National Board of Patents and Registration of Finland (NBPR), the Hungarian Patent Office (HPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), the Mexican Institute of Industrial Property (IMPI), the Swedish Patent and Registration Office (PRV), Nordic Patent Institute (NPI), and the Israel Patent Office (ILPO), and the Taiwan Intellectual Property Office (TIPO).
USPTO and China's Jiangsu Provincial People's Government Sign Memorandum of Understanding
The U.S. Patent and Trademark Office announced earlier this summer that the Office had signed a Memorandum of Understanding (MOU) with the Jiangsu Provincial People's Government in the People's Republic of China. The MOU was the Office's first agreement with a provincial government. USPTO Director David Kappos noted that the agreement was "aimed at improving enforcement and collaboration on intellectual property matters through exchanges of information, capacity building, and other educational activities." The MOU is part of a larger effort by the USPTO to work with the Chinese government on IP matters.