By Donald Zuhn --
USPTO and INPI Establish PPH Pilot Program
On November 23, the U.S. Patent and Trademark Office and Brazil's National Institute for Industrial Property (INPI) entered into a Memorandum of Understanding to establish a Patent Prosecution Highway (PPH) pilot program between the two offices. The two-year pilot program will begin on January 11, 2016 and may be extended upon mutual agreement of the offices.
PPH programs permit applicants who receive a positive ruling on patent claims from one participating office to request accelerated prosecution of corresponding claims in another participating office. The USPTO noted that the new PPH pilot program is the centerpiece of the June 2015 U.S.-Brazil Commercial Dialogue Joint Statement on Patent Work Sharing signed by Secretary of Commerce Penny Pritzker and Brazilian Minister of Development, Industry and Foreign Trade, Armando Monteiro.
Requirements for participation in the USPTO-INPI PPH can be found here.
USPTO Revises ADS Form
The U.S. Patent and Trademark Office announced via a Patent Alert e-mail earlier this month that a revised version of the Application Data Sheet (ADS) form PTO/AIA/14 is now available on the USPTO patents forms page and that applicants can begin using the form as of today. As we reported previously, the new ADS form was necessitated by changes to the rules of practice that permit applicants to authorize the USPTO to give certain foreign IP offices access to all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign IP office (see "USPTO Revises Rules to Facilitate Access to Applications and File Contents by Foreign IP Offices").
As the Office notes, applicants are no longer required to check a box on the ADS form to provide the USPTO with authorization to permit a foreign intellectual property office participating in the priority document exchange (PDX) program access to a U.S. priority application or permit access to the search results from a U.S. priority application by the European Patent Office (EPO), and instead, the revised ADS form contains by default the authorization to permit access to the U.S. priority application or search results. The new form contains opt-out check boxes in place of the old opt-in check box. Applicants wishing to revoke either of the above authorizations must use forms PTO/SB/39 and PTO/SB/69 rather than the new ADS form.
USPTO Releases Revised MPEP
The U.S. Patent and Trademark Office announced via a Patents Alert e-mail last month that the Ninth Edition, Revision 07.2015 of the Manual of Patent Examining Procedure (MPEP) has been released. The new version of the MPEP incorporates changes to the laws, rules, and practice necessitated by the Patent Law Treaties Implementation Act of 2012 (PLTIA) (see "USPTO Issues Final Rule to Implement Patent Law Treaty -- Changes Take Effect December 18"), as well as other revisions. The new version of the MPEP can be access here.
USPTO Systems Offline on December 5
The U.S. Patent and Trademark Office announced via a Patents Alert e-mail earlier today that access to Public PAIR, Private PAIR, EFS-Web, and EFS-Web Contingency will be unavailable from 12:01 am until 11:59 pm ET on Saturday, December 5 to allow for systems maintenance. The Office noted that availability of the systems will be posted here.
The Office reminded applicants that during the time that the systems will be down, new patent applications, new international design applications and documents and fees for national stage entry under 35 U.S.C. § 371 may be filed via Priority Mail Express® in accordance with 37 C.F.R. § 1.10, and that other documents and fee payments may be made by facsimile transmission to the USPTO Central Facsimile number at 571-273-8300, by first class mail with a certificate of mailing in accordance with 37 C.F.R. § 1.8, or Priority Mail Express® in accordance with 37 C.F.R. § 1.10. The Office also reminded applicants that filing of new applications under 35 U.S.C. § 111(a) (other than reissue, design or plant applications) via Priority Mail Express® will still require payment of the non-electronic filing fee ($400 for large entities) under 37 C.F.R. § 1.16(t). Finally, the Office strongly advised applicants to complete any filings via the EFS-Web prior to the outage period in order to ensure that the submissions are correctly completed. Questions regarding alternative filing methods to the EFS-Web should be directed to the USPTO Inventor's Assistance Center at 1-800-786-9199 during business hours (Mon-Fri, 8:30 am to 5:00 pm ET).