By Donald Zuhn --
USPTO to Hold Roundtable on Recordation of Real-Part-in-Interest Information
Last month, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 70385) indicating that the Office will be holding a roundtable from 8:30 am to 12:00 pm (EDT) on January 11, 2013 to obtain public input regarding changes to the Office's rules of practice for collecting and providing patent and application ownership information and making such information publicly available. The roundtable will be held in the Madison Auditorium on the USPTO campus (600 Dulany Street, Alexandria, Virginia 22314).
Those wishing to participate in the roundtable must submit requests by Friday, December 21, 2012. Requests can be submitted by e-mail to email@example.com, and should include the name of the person wishing to participate, the person's contact information (telephone number and e-mail address), and the organizations that the person represents. The notice indicates that the roundtable will be webcast, and that information regarding accessing the webcast will be made available prior to the roundtable.
The Office is also seeking written comments on the issue. Written comments, which must be submitted by January 25, 2013, can be sent by e-mail to firstname.lastname@example.org or SMEpatenting@uspto.gov, or by regular mail to: Saurabh Vishnubhakat, Expert Advisor, Office of Chief Economist, United States Patent and Trademark Office, Mail Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313–1450.
The Office is seeking comment regarding whether the definition of real-party-in-interest (RPI) information should be broad (RPIs would correspond to those entities having the legal right to enforce the patent and would likely require the disclosure of exclusive licensees) or limited (RPIs restricted to legal title holders and "ultimate parent entities"), and the timing of and mechanism for collecting such information.
USPTO Requests Comments on Grace Period Study
Last week, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 73452) inviting the public and other Federal agencies to submit comments regarding the Office's grace period study. The notice states that:
The United States' grace period, which permits exceptions to absolute novelty, figures centrally in the international discourse on patent law harmonization. The grace period allows individuals to improve upon their ideas by sharing them with the research and business communities without jeopardizing their intellectual property interests. Many European countries, however, lack adequate grace periods. The consequences of this are not fully understood. Few studies in the past ten years have dealt with the grace period, and none of them have quantified the effects of premature disclosure on researchers’ failure to apply for or receive patents.
To examine this issue, the Office will be conducting a study "to estimate the commercial opportunities lost as a result of the lack of grace periods." As part of the study, the Office will survey scientific researchers affiliated with certain European universities who have published journal articles disclosing potentially patentable materials during a five-year period.
Written comments regarding the collection of information with respect to the grace period study, which must be submitted by February 8, 2013, can be sent by e-mail to InformationCollection@uspto.gov (those submitting comments by e-mail should include "0651–00xx Grace Period Study comment" in the subject line of the message); by regular mail to: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450; or using the Federal Rulemaking Portal. Additional information, including the specific topics for which the Office has invited comment, can be found in the Federal Register notice.
USPTO Seeks Comments on Patent Small Claims Proceedings
On Tuesday, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 74830) seeking comments as to whether a small claims proceeding for patent enforcement should be developed. The Office is particularly interested in obtaining comments regarding whether there is a need and desire for this type of proceeding, the circumstances for which such proceedings would be needed, and the features such proceedings should have. The Office is also interested in collecting comments regarding the characteristics of such proceedings, including subject matter jurisdiction, venue, case management, appellate review, available remedies, and conformity with the U.S. constitutional framework. The Office's notice provides a list of additional topics and questions for which the Office is seeking comments.
Written comments regarding patent small claims proceedings, which must be submitted by March 18, 2013, can be sent by e-mail to email@example.com, or by regular mail to: Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313–1450, ATTN: Elizabeth Shaw.