New Pre-Appeal Brief Conference Pilot Program

As of 12 July 2005, the U.S. Patent and Trademark Office (USPTO) has implemented a pilot program to allow applicants to request that an appeal conference be conducted prior to the Applicants’ filing of an appeal brief.  The pilot program is scheduled to last at least six (6) months and offers Applicants a way to request that a panel of Examiners, including the Examiner of record and his supervisor, to formally review the legal and factual basis of the rejections in their application prior to the filing of an appeal brief.  This program is intended to save Applicants the added time and expense of preparing an appeal brief if the review panel determines an application is not in condition for appeal.  This pilot program offers Applicants an opportunity to request a review of identified matters on appeal by employing the appeal conference practice that is currently employed at the USPTO, but prior to the filing of the appeal brief.

This procedure is ideal when the Applicant believes that the rejections of record are clearly not proper, are without merit, and are based on a clear legal or factual deficiency in the rejections rather than an interpretation of the claims or the prior art teachings.

In order to request a pre-appeal brief conference, the application must be ready for appeal. In other words, any amendments or arguments filed after the final Official Action must have been acted upon by the Examiner prior to the filing of the Notice of Appeal and the Request for Pre-Appeal Brief Conference. If there is an outstanding after final reply that has not been considered by the Examiner, then any Request for Pre-Appeal Brief Conference filed with the Notice of Appeal will be denied.

Further, in order to request a pre-appeal brief conference, a Request for Pre-Appeal Brief Conference must be filed with the Notice of Appeal.  The Request for Pre-Appeal Brief Conference is a document five pages or less that provides a concise and focused set of arguments for which the review is being requested.  The Request should specify clear errors in the Examiner’s rejections or the Examiner’s omissions of one or more essential elements needed for a prima facie rejection. 

Upon conducting the pre-appeal brief conference, the USPTO will mail a decision on the status of the application which will state one of the following:

1.       the application remains under appeal because there is at least one actual issue for appeal;

2.      prosecution on the merits is reopened and an appropriate official communication will follow in due course.  In appropriate circumstances, a proposed amendment may accompany the panel’s decision proposing changes that, if accepted, may result in an indication of allowability of the contested claims;

3.       the application is allowed on the existing claims and prosecution remains closed; and

4.       the Request fails to comply with the submission requirements and is dismissed.

The due date for the Appeal Brief will be reset to one month from the mailing of the decision on the request or the balance of the two-month time period running from the receipt of the Notice of Appeal, whichever is greater. There are no additional USPTO filing fees for this Request for Pre-Appeal Brief Conference. http://www.uspto.gov/web/offices/com/

sol/og/2005/week28/patbref.htm.

Summary supplied by Catherine M. Voisinet, Esq.

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Changes to the Practice for Handling Patent Applications Filed Without the Appropriate Fees
 

The Official Gazette ("OG") of 21 June 2005 has a final rule about "Changes to the Practice for Handling Patent Applications Filed Without the Appropriate Fees" and about page counting for electronic medium submissions.

The examination fee and search fee are due on filing in an application filed under 35 U.S.C. sec. 111(a) or on commencement of the national stage in a PCT international application, but may be paid at a later time if paid within such period and under such conditions (including payment of a surcharge) as may be prescribed by the Director.

The Office is also eliminating 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 former 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 requiring payment of the basic filing fee (rather than just the processing and retention fee set forth in former sec. 1.21(l)) to retain the application. Since the Office must retain an application to permit the 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 requiring payment of the basic filing fee (rather than just the processing and retention fee set forth in former 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.

The Office is providing that each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper for purposes of the application size fee specified in 35 U.S.C. sec. 41(a)(1)(G).  See: http://www.uspto.gov/web/offices/com/

sol/og/2005/week25/patchng.htm

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

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Forms and Font Sizes

Please note that the USPTO suggests "Times Roman" font size 12 (37 C.F.R. sec. 1.52(b)(2)(ii)). You will also note that some of the "Official" PTO forms are in both Arial and Times Roman.

You use a font size of 6 (smallest font allowed) for large specifications to decrease the extra fees for excess pages in specification, if necessary.

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

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Submission Under 37 C.F.R. 1.129(a) Change

Official Gazette Notice of 7 June 2005:

A decade ago, the Uruguay Round Agreements Act (URAA) passed and provided for a transitional procedure for the limited examination after final rejection in certain applications filed before June 8, 1995 (i.e. "old cases" which are really old now). In the 7 June 2005 OG, there is a notice about changes to this procedure. It has now been a decade since the change to a twenty-year patent term in the URAA.  Nevertheless, there are still applications filed before 8 June 1995, pending before the Office in which a second (or both first and second) submission under 37 C.F.R. 1.129(a) may be filed, though the Office now receives fewer than 100 submissions under 37 C.F.R. 1.129(a) each year. Nonetheless, if you have such an "old" case, be aware that the provisions for a submission under 37 C.F.R. 1.129(a) have changed.  See http://www.uspto.gov/web/offices/com/

sol/og/2005/week23/patchng.htm.

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

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USPTO Improves Process for Reviewing Patents

The USPTO has posted a notice on their website on 29 July 2005. Basically, new reexaminations will be assigned to a newly formed central reexamination unit. The unit will have 20 primary examiners. Currently pending reexaminations will remain with the examiners to whom they were assigned based on technology. There is a push to complete reexaminations within two years.  To view the notice, click on http://www.uspto.gov/web/offices/com/

speeches/05-38.htm.

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

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Trademark Electronic Application System (TEAS) Plus

Effective July 18, 2005, the United States Patent and Trademark Office implemented a new form for filing Trademark applications; i.e. the TEAS Plus form. New applications may be filed using this new form if Applicant agrees to meet stricter filing requirements such as:

1.     Taking the goods and/or services directly from the USPTO's List of Acceptable Identification of Goods and Services Manual;

2.     Receiving USPTO communications by e-mail; and

3.     Filing most later communications, such as Responses to Office Actions, electronically.

One of the benefits of using this new filing option is a reduced filing fee of $275.00 per class.
 

Summary supplied by Astrid Wyckoff

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Field of Search on Face of Patent

In view of the revised procedure for recording search data discussed below, it is not practical to record the various formats of the many types of text or other searches on the face of the printed patent grant. The USPTO will replace the current printed US classes and subclasses under the heading "Field of Search" on the face of a patent with a section listing the "Classified Field of Search" and the following statement: "See application file for the complete search history."

The procedure for recording search data in an application file currently set forth in the Manual of Patent Examining Procedure ("MPEP") sec. 719.05 does not accurately reflect what was searched by the examiner since the current procedure makes no distinction between a classified search and a classified search limited by text query(ies). Furthermore, when an electronic search is performed, the current procedure for recording search data does not require a complete search history (i.e., a printout) identifying all the search logic used in the database query, (the name of the file searched, the database service and the date the search was performed) to be included in the application file. Examiners may instead provide such information in the "SEARCH NOTE" box in the application file, which may or may not be as complete as a printout. In most instances, the recorded annotations in the "SEARCH NOTE" box are far less complete than the associated search history printout. A proper recordation of the search in an application file will improve the quality of the application file record by accurately reflecting what was searched by the examiner and will permit any person reviewing the application file to reproduce the search performed by the examiner and evaluate the adequacy of the search. A revised procedure for recording search data (a summary of which is set forth below) has recently been implemented in the patent examining corps. MPEP sec. 719.05 will be updated in the next revision of the MPEP to incorporate the revised procedure for recording search data.

This is from the 19 July 2005 OG http://www.uspto.gov/web/offices/com/

sol/og/2005/week29/patrfos.htm.

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

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New Interference Search Procedure

The 19 July 2005 OG has a notice about the USPTO's New Interference Search Procedure. Previously before an application was in condition for allowance, the Examiner would search the paper files to consider the possibility of interfering claims in the U.S. patent documents. Since paper files are no longer maintained at the USPTO, the Examiner will now make an interference search by performing a text search of the U.S. patent application publication (PGPub) database directed to the comprehensive inventive features in the broadest claim. If the application contains a claim directed to nucleotide or peptide sequence, an interference search of the sequence database will be made. If the search results identify any potential interfering subject matter, the Examiner will review the application(s) with the potential interfering subject to determine whether interfering subject matter exists.

The USPTO recognizes that for interference purposes, a text search should encompass the claims of all pending U.S. applications and recently issued U.S. patents within a certain range of effective filing dates. However, since the Image File Wrapper (IFW) system does not provide for a text-searchable database encompassing unpublished pending applications, Examiners currently can only perform a text search of the PGPub database as set forth above. It is expected that in the future, there will be a new system that will permit text searches of pending unpublished applications.

The OG notice can be found at http://www.uspto.gov/web/offices/com/

sol/og/2005/week29/patnspr.htm.

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

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Claim Status Identifiers & Cancelled Claim Text

In the 5 July 2005 Official Gazette, there is the following:

Text in cancelled claims: The Office hereby waives the provision of 37 C.F.R. 1.121(c)(4)(i) that no claim text shall be presented for "cancelled" or "not entered" claims. Accordingly, the Office will accept amendments that include the text of a cancelled claim, or a not entered claim, if the amendment otherwise complies with 37 C.F.R. 1.121, including use of the proper status identifier "cancelled" or "not entered," respectively. Even though the Office will accept an amendment that includes the text of a cancelled claim, or a not entered claim, applicants should comply with 37 C.F.R. 1.121(c)(4)(i) by not providing the text of a cancelled claim or a not entered claim.

Status identifiers: The Office wants to reduce the burden on both the applicants and the Office and avoid delays in processing that result from holding an amendment noncompliant when the only noncompliance is the use of certain status identifiers that are not provided in 37 C.F.R. 1.121(c) and which are determined to be clear and accurate by the Office. Therefore, the Office hereby waives the provision in 37 C.F.R. 1.121(c) that the status of the claims must be indicated by one of the status identifiers listed in 37 C.F.R. 1.121(c) to the extent permitted in this notice. The Office will accept claim listings that include the alternative status identifiers set forth in the table (See Notice) if the amendment otherwise complies with 37 C.F.R. 1.121.

Note: 37 C.F.R. 1.121(c) sets forth that "Withdrawn - currently amended" is an acceptable variation of the status identifier "Withdrawn" for a withdrawn claim that is currently amended. Additionally, the Office may also accept other variations of the status identifiers provided in 37 C.F.R. 1.121(c) when the examiner determines that the status identifier used by the applicant clearly and accurately designates the status of the claim. Applicants should make every effort to comply with all of the requirements of 37 C.F.R. 1.121, such as the use of the status identifiers provided in 37 C.F.R. 1.121(c) in a complete claim listing, to reduce processing delays. The Office may continue to refuse to accept an amendment that does not otherwise comply with 37 C.F.R. 1.121 or includes a status identifier which, in the opinion of the examiner, fails to clearly and accurately designate the status of a claim.

See http://www.uspto.gov/web/offices/com/

sol/og/2005/week27/patamnd.htm.

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

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Proposed TEAS Fee Reduction

A 3 May 2005 OG Notice:

The USPTO proposes to amend its rules to permit an applicant using the Trademark Electronic Application System (TEAS) to file a trademark or service mark application for registration on the Principal Register under section 1 and/or 44 of the Act to pay a reduced fee under certain circumstances. The Office proposes to offer a reduced fee to TEAS applicants if the application meets certain filing requirements beyond those required to receive a filing date. The applicant must also respond to Office actions within two months of the mailing date, file communications regarding the application through TEAS, and agree to receive communications concerning the application by electronic mail (e-mail). TEAS applications that qualify for the reduced fee option will be referred to as "TEAS Plus" applications. The reduced fee option will not apply to applications filed pursuant to section 66(a) of the Act because they cannot be filed through TEAS.

The full OG notice is at http://www.uspto.gov/web/offices/com/

sol/og/2005/week18/patfees.htm.

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

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Suit to Stop Diversion of USPTO Fees Dismissed

Over the last fourteen years, Congress has taken billions of dollars of user fees from the USPTO and used the money for other purposes. For example, funds were given to National Public Radio or for US homeland defense projects. A lawsuit (Georgina Figueroa, Petitioner v. United States - 540 U.S. 884; 124 S. Ct. 210; 157 L. Ed. 2d 152; 2003 U.S. LEXIS 6334; 72 U.S.L.W. 3241, October 6, 2003) had been filed challenging the constitutionality of congressional diversion of these fees. On 28 June 2005, this lawsuit was dismissed.

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

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USPTO's Move to Alexandria, Virginia Complete

The USPTO announced that on 1 July 2005, the move from Crystal City to Alexandria was completed.

"WASHINGTON, D.C. --The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced completion of its move to new, consolidated headquarters in Alexandria, VA, which involved relocating over 7,000 employees and contractors. The consolidation from 18 buildings in Crystal City, VA, is expected to save the federal government more than $98 million over the 20-year term of the lease."

The Notice is at http://www.uspto.gov/web/offices/com/

speeches/05-28.htm.

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BSKB 2005 Summer Training Program

BSKB had another successful 4-week Summer Training Program that started on Saturday, 11 June and ended on Friday, 8 July 2005.  Our class was composed of 66 trainees from 9 countries which are: China, Germany, Hong Kong, India, Japan, Korea, The Netherlands, Sweden and Switzerland.  To see a class picture, visit our website at www.bskb.com and click on Seminars & Training then click on Summer Training Program.

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BSKB 2005 Advanced Patent & Licensing Seminar

BSKB's annual Advanced Patent & Licensing Seminar will be held 26 September 2005 through 7 October 2005. This two-week seminar in its 10th year will focus on issues concerning the enforcement of U.S. patents by patent owners, the avoidance of infringement of U.S. patents by competitors, and negotiation techniques directed towards patent licenses and other settlement agreements.  The seminar includes breakout sessions which allow attendees to focus on technologically specific issues in the areas of biotechnological/pharmaceutical inventions and electrical/computer-related inventions. For more information, visit our website at http://www.bskb.com/semsapls.htm or contact Andrew D. Meikle at +1-703-205-8000 or adm@bskb.com.

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BSKB 2006 Trademark Practice Seminar

BSKB is pleased to announce that the annual U.S. Trademark Practice Seminar ("TPS") will be held from Sunday, 2 April 2006, to Friday, 7 April 2006.  More information about the Seminar will be posted on our website at a later date.

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BSKB 2006 Summer Training Program

BSKB is pleased to announce that the annual Summer Training Program ("STP") will be held from Saturday, 17 June 2006, to Friday, 14 July 2006. 

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Upcoming Federal Government Holidays

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Electronic Version Requested

This is a reminder that in view of the requirements set by the USPTO, we request that you forward an electronic version of all new applications (specification, claims and abstract) at your earliest convenience, preferably together with your new application order letter. This can be done by either secure e-mail or diskette in Microsoft Word®-compatible format. Since it is necessary to provide substitute paragraphs when making amendments to both the specification and claims, it is of great assistance to us to have an electronic version available. The availability of an electronic version not only assists in accuracy, but also reduces the attorney time/cost involved in reviewing the amendments. We appreciate your cooperation in this regard.

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Communicating With BSKB Via E-Mail

When communicating with members of BSKB via e-mail concerning business matters, please "cc" mailroom@bskb.com. This will ensure that your communication will be seen by our staff in the event that the BSKB member to whom you sent the message is out of the office. Please also feel free to contact BSKB regarding encryption of confidential communications before sending any e-mails.

When forwarding new U.S. Patent and Design applications to us for filing in the USPTO through our firm, please be sure to use our most current Combined Declaration and Power of Attorney and Assignment Forms. Current versions of these forms are available on our web page in both "fillable" and "downloadable" format. Word processing versions are also available upon request. Please go to http://www.bskb.com/ and click on "Download Forms".

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