BSKB IP Updates

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

Vol. 3, No. 3 (15 November 2005)

In this Issue:

:: USPTO Now Permits Interviews Before First Action

:: New Procedure for Submitting Translations of Provisional Applications

:: USPTO Clarifies Procedures for Filing Assignment Documents That Contain Both Patent and Trademark Matters

:: Assignees Must Record Documents Filed to Establish the Right to Take Action in Patent Matters

:: Reciprocal Access to and Usage of Documents in Application Files of JPO/EPO and USPTO

:: USPTO Outsources Some PCT Searching

:: BSKB 2006 Trademark Practice Seminar

:: BSKB 2006 Summer Training Program

:: Upcoming Federal Government and BSKB Holidays

:: Electronic Version Requested

:: Communicating with BSKB via E-Mail

USPTO Now Permits Interviews Before First Action

BSKB In the Federal Register notice of 26 September 2005, the United States Patent and Trademark Office ("USPTO") announced that 37 C.F.R. sec. 1.133(a)(2) has been amended to lift the prohibition on interviews before first action. After conducting a pilot program to evaluate their effectiveness, the USPTO will now allow interviews before first action when the examiner determines that such an interview would advance prosecution of the application. During the pilot the Office admits receiving few requests for such interviews, but the feedback from examiners was that when such interviews were conducted they were usually beneficial and often assisted in focusing the issues for examination. The granting of these interviews will be discretionary with the examiner.

To view this notice see:
http://www.uspto.gov/web/offices/com/

sol/notices/70fr56119.pdf.

Summary supplied by Nicholas P. Godici.

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New Procedure for Submitting Translations of Provisional Applications

Effective 25 November 2005, the USPTO now requires that translations of non-English provisional applications, and the accompanying translation statement, must be filed in the provisional application if a nonprovisional application claims the benefit of the filing date of the provisional application under 35 U.S.C. sec. 119(e). In the Federal Register notice of 26 September 2005, the USPTO amended 37 C.F.R. sec. 1.78 (a)(5)(iv) by now requiring that translations of non-English provisional applications, along with a statement that the translation is accurate, must be filed in the provisional application. Previously, the USPTO rules allowed the translation and statement to be filed in either the provisional or nonprovisional application. By requiring that the translation and statement be consistently located in the provisional application, there will be less burden on the public and the examiner, since one would only need to check in a single place to find the translation. Additionally, when multiple nonprovisional applications claim the benefit of a provisional application, only a single copy of the translation needs to be stored in the USPTO files. To view this notice see:

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

notices/70fr56119.pdf

Summary supplied by Nicholas P. Godici.

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USPTO Clarifies Procedures for Filing Assignment Documents That Contain Both Patent and Trademark Matters

The Federal Register notice of 26 September 2005, amended 37 C.F.R. sec. 3.28 to clarify procedures for filing assignment documents that involve both patent and trademark matters. In the past, it was possible to submit a single copy of an assignment document that contained both patent and trademark matters along with a patent cover sheet and a trademark cover sheet. To reduce confusion and possible recordation errors, the USPTO now requires a separate copy of the assignment documents to be submitted with each cover sheet. Thus, if an assignment includes interests in, or transactions involving both patents and trademarks, two copies of the document (each with its own cover sheet) must be submitted.  To view this notice see:

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

sol/notices/70fr56119.pdf.

Summary supplied by Nicholas P. Godici.

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Assignees Must Record Documents Filed to Establish the Right to Take Action in Patent Matters

The Federal Register notice of 26 September 2005, amended 37 C.F.R. sec. 3.73 to state that, for patent matters, documentary evidence submitted to establish the chain of title from the original owner for purposes of establishing the right of the assignee to take action, must be recorded. In order to take action in a patent or a patent application, the assignee is required to submit a signed statement identifying the assignee and either: (1) documentary evidence of a chain of title from the original owner, or (2) a statement specifying where such evidence is recorded in the USPTO records. Previously, when the assignee chose the first option, there was no requirement that the documents submitted must be recorded in the USPTO. It is now required that the documents submitted to establish the right to take action by the assignee must be recorded. This change pertains to patent matters only and the procedures for taking action in trademark matters remains unchanged.

To view this notice see:

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

sol/notices/70fr56119.pdf.

Summary supplied by Nicholas P. Godici.

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Reciprocal Access to and Usage of Documents in Application Files of JPO/EPO and USPTO

USPTO Outsources Some PCT Searching

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.  The program brochure and registration form is posted on our website.

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BSKB 2006 Summer Training Program

Upcoming Federal Government and BSKB Holidays

Electronic Version Requested

Communicating With BSKB Via E-Mail