By Donald Zuhn --
USPTO Announces Expansion of eMod Text Pilot
In August 2015, the U.S. Patent and Trademark Office announced that it would begin implementing a new system that would eventually replace the EFS-Web, Public PAIR, and Private PAIR (see "USPTO News Briefs," August 9, 2015). According to the Office, the new initiative, eCommerce Modernization (eMod), is intended to improve the electronic patent application process by modernizing the filing and viewing systems, and will be implemented in phases over the next few years.
Last month, the Office announced via a Patent Alert e-mail that it was expanding the eMod Text Pilot Program. As part of that expansion, participants in the pilot program will be able to access new system functionality such as the ability to submit text and receive Office actions in text. The Office continues to seek new participants for the pilot program, but encourages those interested in participating in the pilot program to carefully review the eMod Text Pilot Participant Guidelines, which describes the use of the Text features offered in the pilot. Those wishing to participate in the pilot program must fill out a participation form.
The Office's latest announcement indicates that the goal of the eMod Text Pilot Program is to have applicants utilize new features to file patent applications in text, and provide feedback to the eMod Team for further improvements. Additional information regarding the eMod Text Pilot Program can be found at the eMod Participant Programs webpage.
Changes to Conditions under which ILPO May Act as ISA/IPEA for PCT Applications Filed with RO/US
Late last year, the U.S. Patent and Trademark Office announced in the Official Gazette (1432 OG 264) that the conditions under which the Israel Patent Office (ILPO) would act as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) for International applications filed with the U.S. Patent and Trademark Office (USPTO) as a Receiving Office (RO/US) had changed. In particular, the restriction against the ILPO acting as an ISA for applications containing one or more claims directed to a business method (as defined by specified areas of the International Patent Classification System) has been removed. In addition, instead of limiting the number of applications the ILPO can receive from the USPTO to 75 per fiscal quarter, the ILPO will now take up to 100 applications per fiscal quarter.
The changes are part of a new agreement that was signed in April 2016 by the Director of the USPTO and Director of the ILPO and Commissioner of Patents, Designs and Trademarks. According to the agreement, the ILPO may act as an ISA under the PCT for International applications filed with the RO/US provided that: (1) the applications are submitted in the English language; (2) the ILPO has not received more than 100 international applications from the USPTO during a fiscal quarter; and (3) the ILPO is chosen as a competent authority by the applicants of said applications. The ILPO will also act as an IPEA if these three requirements are met, and the ILPO acted as the ISA.
The USPTO's announcement indicates that the search fee for the ILPO acting as an ISA for international applications received by the USPTO is $912 (USD), which the USPTO will collect and transmit to the ILPO.
USPTO Announces Continuation of IP5 PPH Pilot Program
In November, the U.S. Patent and Trademark Office announced that the IP5 offices -- the USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People's Republic of China (SIPO) -- have agreed to extend the IP5 Patent Prosecution Highway (PPH) pilot program to January 5, 2020.
The IP5 PPH pilot program enables applicants who receive a positive ruling on patent claims from one of the IP5 offices to request accelerated prosecution of corresponding claims in another IP5 office. A discussion of the requirements for participation in the IP5 PPH can be found here.