BSKB IP Updates

Editors: Marc S. Weiner, Esq. and Joe McKinney ("Ken") Muncy, Jr., Esq.

Vol. 3, No. 1 (2 May 2005)

In this Issue:

:: Former Commissioner for Patents Nicholas P. Godici to Join BSKB

:: BSKB Ranks Third in U.S. Patents Obtained

:: USPTO 2006 Budget Request Submitted

:: USPTO CREATE Act Interim Rule

:: USPTO eBiz Systems to Be Down Periodically During Move

:: Proposed USPTO Rule - Late Search/Exam Fee and Counting Sheets

:: Pace of Patenting

:: Second Reexam Request While First Reexam Is Pending

:: Changes in Fee for Filing Applications for Trademark Registration

:: Trademark Document Retrieval Is Now Accessible on USPTO Website

:: New Trademark Fees into Effect 31 January 2005

:: BSKB Advanced Patent & Licensing Seminar

:: Upcoming Federal Government Holidays

:: Electronic Version Requested

:: Communicating with BSKB via E-Mail

 

Former Commissioner for Patents Nicholas P. Godici to Join BSKB

BSKB is pleased to announce that Nicholas P. Godici has joined the firm. 

Mr. Godici comes to BSKB after serving for five years as the Commissioner for Patents and as the Acting Under Secretary of Commerce for Intellectual Property and Director at the United States Patent and Trademark Office (USPTO). As Commissioner, Mr. Godici was responsible for all aspects of the patent granting process for the United States.

Return to top

BSKB Ranks Third in U.S. Patents Obtained

BSKB has ranked third among U.S. law firms by the number of patents issued in 2004, according to the May 2005 issue of Intellectual Property Today. BSKB obtained 2700 utility patents and 248 design patents for its clients in calendar year 2004, over 9% growth from the previous year.

Return to top

USPTO 2006 Budget Request Submitted

On 7 February 2005, the President submitted his fiscal year 2006 budget request to Congress. It includes $1.7 billion for the USPTO, equaling anticipated FY 2006 fee collections from patent and trademark filings. The request is a $149 million increase over FY 2005. Fiscal year 2006 begins 1 October 2005.

Jon Dudas, Under Secretary of Commerce for Intellectual Property, said in a statement that the "budget request for fiscal year 2006 permits the USPTO to continue the work necessary to fulfill promises made in the 21st Century Strategic Plan."

In FY 2006, the USPTO expects to hire 900 patent examiners and 75 trademark examining attorneys, making a total of over 4,500 patent examiners and over 350 trademark examining attorneys by the end of that fiscal year.

A summary of the requested USPTO budget may be found at http://www.whitehouse.gov/omb/
budget/fy2006/commerce.html. Supporting details, including estimates of the total patents and trademarks expected to be handled through fiscal year 2006, are posted at http://www.whitehouse.gov/omb/
budget/fy2006/pdf/appendix/com.pdf (see pp. 230-231).

Summary supplied by Jeffrey J. Berns.

Return to top

USPTO CREATE Act Interim Rule

The 8 February 2005 Official Gazette ("OG") has an interim rule about the CREATE Act.

SUMMARY: The Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) amends the patent laws to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met: the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the CREATE Act.

EFFECTIVE DATE: 10 December 2004. See http://www.uspto.gov/web/offices/
com/sol/og/2005/week06/patcrac.htm

Summary supplied by Joe McKinney ("Ken") Muncy, Jr., Esq.

Return to top

USPTO eBiz Systems to Be Down Periodically During Move

The USPTO is moving its Data Center to its new offices in Alexandria, Virginia. During the move, which will take place on weekends through July 2005, electronic business (eBiz) systems will be periodically offline. As the moves occur, some systems will be temporarily unavailable or may havereduced functionality for short periods of up to several days at a time.

A schedule of planned outages is posted at http://www.uspto.gov/helpdesk/outageschedule.htm. The informational pages of the USPTO website itself will remain available without interruption.

Summary supplied by Jeffrey J. Berns.

Return to top

Proposed USPTO Rule - Late Search/Exam Fee and Counting Sheets

In the Official Gazette of 22 March 2005, there is a notice of proposed changes in the Office's practice for handling patent applications filed without the appropriate filing, search, and examination fees and proposing how to count sheets in electronic medium (sequence listings and computer program listings). While this is just a notice of proposed rulemaking, it seems likely it will become the rule (the comment period ended quickly and there is no public hearing).

Basically there will be a perfect filing fee if the search and exam fees are not paid together with the filing fee. The Office is also proposing to eliminate the processing and retention fee (sec. 1.21(l)) practice. The processing and retention fee practice permitted an applicant to file an application without the basic filing fee (which formerly covered the cost of the initial processing of an application and part of the cost of the search and examination of an application) and pay only the processing and retention fee set forth in sec. 1.21(l) in order for the application to be used as a basis for foreign filing and benefit claims under 35 U.S.C. sec. 120 and sec. 1.78(a). Under the revised patent fee structure set forth in the Consolidated Appropriations Act, the basic filing fee covers only the cost of the initial processing of an application. Thus, the Office is proposing to require payment of the basic filing fee (rather than just the current processing and retention fee set forth in sec. 1.21(l)) to retain the application. Since the Office must retain an application to permit benefit of the application to be claimed under 35 U.S.C. sec. 120 and sec. 1.78 in a subsequent nonprovisional or international application, the Office is also proposing to require payment of the basic filing fee (rather than just the current processing and retention fee set forth in sec. 1.21(l)) to permit benefit of the application to be claimed under 35 U.S.C. sec. 120 and sec. 1.78 in a subsequent nonprovisional or international application.

Proposed rule - Any sequence listing in an electronic medium in compliance with secs. 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with secs. 1.52(e) and 1.96, will be excluded when determining the application size fee required by sec. 1.16(s) or sec. 1.492(j). For purposes of determining the application size fee required by sec. 1.16(s) or sec. 1.492(j), for an application the specification and drawings of which, excluding any sequence listing in compliance with sec. 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with secs. 1.52(e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each two kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.

Pace of Patenting

To find a series code which is based upon your application filing date, the following table can be used

Second Reexam Request While First Reexam Is Pending

Notice of Changes in Requirement for a Substantial New Question of Patentability for a Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending.  See

http://www.uspto.gov/web/offices/com/
sol/og/2005/week09/patchng.htm.

Changes in Fee for Filing Applications for Trademark Registration

A 15 February 2005 OG Notice:

SUMMARY: The United States Patent and Trademark Office (Office) is amending its rules of practice to adjust the fee for filing a trademark application for registration based on whether the application is filed on paper or electronically using the Trademark Electronic Application System (TEAS). Specifically, the Office is amending its rules to provide that: (1) the fee for a trademark application filed on paper shall be increased to $375.00 for each class of goods or services; and (2) the fee for a trademark application filed through TEAS shall be decreased to $325.00 for each class of goods or services. EFFECTIVE DATE: 31 January 2005.

Trademark Document Retrieval Is Now Accessible on USPTO Website

New Trademark Fees into Effect 31 January 2005

Initial Applications:  (1) $325.00 per international class for applications filed electronically via the Trademark Electronic Application System ("TEAS"); (2) $375.00 per international class for applications filed via paper.

Amendments or Responses to Office Actions:  (1) $325.00 per additional international class for responses filed electronically via TEAS; (2) $375.00 per additional international class for responses filed via paper.

The trademark fees did not go into effect on 8 December 2004, the date President Bush signed the legislation to revise the patent and trademark fees.  Section 803(b)(2) states that “The provisions of section 802 [entitled ‘Adjustment of Trademark Fees’] shall apply to all applications for the registration of a trademark filed or amended on or after the effective date set forth in subsection (a) of this section.”  Section 803(a) generally sets the effective date as the date of enactment date, but it begins with the phrase “Except as otherwise provided in this title.”  Section 802(a) regarding trademark fees “provides otherwise” with the introductory language “During fiscal years 2005 and 2006, under such conditions as may be prescribed by the Director, the fee under section 31(a) of the Trademark Act.”

Acting Trademark Commissioner Lynne Beresford sets forth that the trademark side of the USPTO requires transitional flexibility partly since trademark owners would lose a filing date if the incorrect filing fee is paid with the application.  The lack of the appropriate filing fee cannot be remedied by later paying a surcharge as is the practice with patent applications.  Also, she explained that the discounted fee of $275.00 for electronic filing could not be implemented until the electronic filing procedure is fully operational.

Additionally, sec. 31 of the Lanham Act (15 U.S.C. sec. 1113) states that “[n]o fee established under this section shall take effect until at least 30 days after notice of the fee has been published in the Federal Register and in the Official Gazette of the Patent and Trademark Office.” 

Return to top

BSKB Advanced Patent & Licensing Seminar