| Publications
> BSKB IP Updates > Vol. 4, No. 2 (17
May 2006) BSKB IP Updates
Editors: Marc
S. Weiner, Esq. and Joe McKinney ("Ken") Muncy, Jr.,
Esq.
Vol. 4, No. 2 (17 May
2006)
In this Issue:
::
Refund of Search/Excess Claim Fees
if Application Is Expressly Abandoned
::
Korean
Intellectual Property Office Now an Additional International Searching
Authority and International Preliminary Examining Authority for the
USPTO
::
Proposed Changes to U.S.
Reexamination Practice
::
Elimination of the
USPTO Disclosure Document Program
::
USPTO Grants 7 Millionth Patent
::
BSKB 2006 Advanced Patent & Licensing
Seminar
::
BSKB 2007 Trademark Practice Seminar
::
Unscheduled Closing
of Federal Government
::
Upcoming Federal Government
and BSKB Holidays
:: Electronic Version
Requested
:: Communicating with BSKB via
E-Mail
Refund of Search/Excess Claim Fees if
Application Is Expressly Abandoned
The April 4, 2006 Official Gazette relates
the final rule to implement the provisions for refunding the search fee
for applicants who file a written declaration of express abandonment
before an examination has been made of the application. The relevant
portion of Title 37 of the Code of Federal Regulations, Part 1, is
amended as follows:
Section 1.138 is amended to include a new paragraph
(d), which implements the provision in 35 U.S.C. 41(d)(1)(D) that the
Office may provide for a refund of any part of the search fee "for any
applicant who files a written declaration of express abandonment as
prescribed by the Director before an examination has been made of the
application under [35 U.S.C.] 131" (and in part the provision in 35
U.S.C. 41(a)(2) that the Office may provide for a refund of any part of
the excess claims fee "for any claim that is canceled before an
examination on the merits, as prescribed by the Director, has been made
of the application under [35 U.S.C.] 131"). Section 1.138(d)
specifically provides that an applicant seeking to abandon an
application filed under 35 U.S.C. 111(a) and Sec. 1.53(b) on or after
December 8, 2004, to obtain a refund of the search fee and excess claims
fee paid in the application, must submit a petition and declaration of
express abandonment before an examination has been made of the
application.
An "examination has been made of the application" for purposes of Sec.
1.138(d) once an action (e.g., restriction or election of species
requirement, requirement for information under Sec. 1.105, first Office
action on the merits, notice of Allowability or allowance, or action
under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)) is shown in PALM
as having been counted.
A full copy of the final rule can be found at
http://www.uspto.gov/web/offices/com/sol/og/2006
/week17/patrevi.htm
Summary
supplied by Joe M.
(Ken) Muncy, Esq.
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Korean Intellectual Property Office
Now an Additional International Searching Authority and International
Preliminary Examining Authority for the USPTO
Announced in the January 17, 2006 Official Gazette (OG), the Korean
Patent Office (KIPO) will act as an International Searching Authority
(ISA) and International Preliminary Examining Authority (IPEA) under the
Patent Cooperation Treaty (PCT) for international applications filed
with the United States Patent and Trademark Office (USPTO) as a
Receiving Office provided that the applications are submitted in the
English language and KIPO is chosen as a competent authority by the
applicants of said applications. U.S. applicant can have the
search/examination done by the USPTO, the European Patent Office (EPO) or KIPO.
A copy of the complete announcement can be found at
http://www.uspto.gov/web/offices/com/sol/og/2006/
week03/patkipo.htm
Summary
supplied by
Joe M.
(Ken) Muncy, Esq.
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USPTO Proposed Rule Change for
Reexaminations
On March 30, 2006, the U.S. Patent and Trademark Office
(USPTO) published proposed rule changes relating to ex parte and
inter partes reexamination. Substantively, the USPTO is proposing two
rule changes. The first substantive proposed rule change is to provide
for a patent owner reply to a request for an ex parte or an
inter partes reexamination prior to the examiner’s decision on the
request. The second substantive proposed change is to prohibit
supplemental patent owner responses to an office action in an inter
partes reexamination without a showing of sufficient cause.
Recently, the USPTO has initiated a program to process and
examine all new reexamination proceedings in a Central Reexamination Unit (CRU).
The USPTO expects the CRU to increase efficiency in
deciding new requests for reexamination to the point where a patent
owner response to a request could be accommodated while still meeting
the three month statutory deadline for acting on the request.
In addition, the USPTO believes that allowing a
patent owner reply to the request will reduce improper/unnecessary
orders and provide more timely patent owner responses on the record to
third party allegations.
The USPTO’s rationale for requiring a showing
of sufficient cause for supplemental responses to be entered in inter
partes reexaminations is based on the fact that under the current
rules a patent owner can, in effect, file an unlimited number of
supplemental responses to an Office action for an inter partes
reexamination thereby delaying prosecution. Accordingly, the PTO’s is
proposing to prohibit supplemental responses without a showing of
sufficient cause in order to expedite prosecution and to prevent
unnecessary delay in the reexamination proceedings. This proposed
change to supplemental response practice is similar to the PTO’s
practice with regard to after final amendments.
Written comment must be received on or before
May 30, 2006.
Full text of the proposed rule changes can be found at:
http://www.uspto.gov/web/offices/com/sol/notices/
71fr16072.pdf
Summary
supplied by
Penny L. Caudle, Esq.
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In the May 2, 2006 Official Gazette (OG),
the United States Patent and Trademark Office (USPTO) proposes to do
away with the Disclosure Document Program. Surprisingly, they only gave
six (6) days for public comment. A summary of the Disclosure Document
follows:
"The United
States Patent and Trademark Office (Office) implemented the Disclosure
Document Program in 1969 in order to provide an alternative form of
evidence of conception of an invention to, for example, a
"self-addressed envelope" containing a disclosure of an invention. It
appears, however, that few, if any, inventors obtain any actual benefit
from a disclosure document, and some inventors who use the Disclosure
Document Program believe that they are actually filing an application
for a patent. In addition, a provisional application for patent affords
better benefits and protection to inventors than a disclosure document.
Therefore, the Office is proposing to eliminate the Disclosure Document
Program. Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before May 8, 2006."
The
full OG notice can be found at
http://www.uspto.gov/web/offices/com/sol/og/2006/
week18/patrule.htm
Summary
supplied by
Joe M.
(Ken) Muncy, Esq.
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USPTO Grants 7 Millionth Patent
On February 14, 2006, the United States
Patent and Trademark Office (USPTO) granted the 7 millionth patent to
DuPont and Co. for "polysaccharide fibers." The invention was made by
John P. O'Brien, a senior researcher at DuPont. The USPTO press
statement observed that "it took 75 years to get from patent No. 1 to
patent 1 million. It has taken less than one tenth of that time to go
from 6 million to 7 million patents."
The first U.S. patent was issued in 1790
although patents were not numbered until 1836. About 10,000 patents were
issued between 1790 and 1836.
Summary
supplied by Craig M. Schultz.
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BSKB
2006 Advanced Patent & Licensing Seminar
BSKB is pleased to announce that the annual
Advanced Patent & Licensing Seminar (APLS) will be held from Monday,
18 September 2006, to Friday, 29 September 2006. The
program brochure and
registration form are posted on our website
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BSKB is pleased to announce that the annual
U.S. Trademark Practice Seminar (TPS) will be held from Sunday, 1 April
2007, to Friday, 6 April 2007. The 2006 program brochure and
registration form are posted on our website.
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top
When the Washington, D.C. area experiences severe weather, power
outages, etc., the Federal Government (including the U.S. Patent and
Trademark Office (USPTO)) sometimes does not open for business that
day. When this occurs, our firm's Falls Church office will also
be closed for business. However, all USPTO filings due on a day where the
Federal Government has closed for the day will be considered as being
timely filed on the next business day that the USPTO is
open.
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Upcoming Federal Government
and BSKB Holidays
| Monday, 29 May
2006 |
Memorial Day |
| Tuesday, 4 July
2006 |
Independence
Day |
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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 us 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" formats. Word processing
versions are also available upon request. Please go to http://www.bskb.com/ and click on
"Download Forms".
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