In this Issue:

:: Closing of the United States Patent and Trademark Office on January 2, 2007

:: Electronic Notification of Outgoing Correspondence (e-Office Action)

:: USPTO and EPO Launch Electronic Priority Document Exchange  

:: USPTO Now Accepting Electronic Petitions to Revive Patents Expired for Failure to Pay Maintenance Fees

:: Historic Memorandum of Understanding on Intellectual Property Issues Signed by U.S. and India

:: USPTO Eliminates Disclosure Document Program

:: USPTO Complies with the 9th Edition of the Nice Agreement

:: USPTO Revises E-filing Forms to Clarify and Confirm Signatory Authority 

:: Claims Reviewed in a Re-Examination

:: BSKB Represented at the 2007 Corporate Patent Congress

:: BSKB Represented at the 2007 Patent Law Institute Conference

:: BSKB 2007 Trademark Practice Seminar

:: BSKB 2007 Summer Training Program

:: BSKB 2007 Advanced Patent and Licensing Seminar

:: Unscheduled Closing of Federal Government

:: Upcoming Federal Government and BSKB Holidays

:: Electronic Version Requested

:: Communicating With BSKB Via E-Mail

Closing of the United States Patent and Trademark Office on January 2, 2007

Tuesday, January 2, 2007, was proclaimed by President Bush as a National Day of Mourning following the death of former President Gerald R. Ford. The USPTO was closed on that day (as well as January 1, for the New Year holiday).  Anything due in the USPTO from Saturday December 30 until Wednesday, January 3 which was filed on Wednesday, January 3, 2007 is considered timely according to U.S. federal statute. Visit the USPTO for more information.

Summary supplied by Joe M. (Ken) Muncy.

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Electronic Notification of Outgoing Correspondence (e-Office Action)

Effective December 16, 2006, the United States Patent and Trademark Office (USPTO) began a pilot program to provide a limited number of Private PAIR users with the option of receiving electronic notification of some outgoing correspondence related to their US patents and US national patent applications retrievable through Private PAIR instead of paper mailing of the correspondence. Patent Cooperation Treaty (PCT) applications will not be included in this pilot. Birch, Stewart, Kolasch & Birch, LLP is participating in this pilot program.

Summary supplied by Craig M. Schultz.

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USPTO and EPO Launch Electronic Priority Document Exchange

The United States Patent & Trademark Office (USPTO) and the European Patent Office (EPO) will launch a new electronic service this month that will facilitate the transfer of patent application priority documents between the two offices.  The service, which was announced in November of 2006, is based on a 2005 agreement between the USPTO and EPO, and will be free of charge to applicants.  Priority documents must be filed in order for an applicant to claim an earlier filing date based on prior filing at one of the patent offices, and this service will increase efficiency of processing these documents. More information the service can be found at the USPTO website.

Summary supplied by Elizabeth P. Richards.

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USPTO Now Accepting Electronic Petitions to Revive Patents Expired for Failure to Pay Maintenance Fees

The USPTO has recently launched a new service as part of their paperless office initiative. The E-petition permits, under certain circumstances, the electronic filing of petitions to reinstate patents that have expired for unintentional failure to pay the required maintenance fees at 3.5, 7.5, or 11.5 years. The new electronic "Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent" will allow petitioners to pay the delayed maintenance fee and surcharge on their expired patent and have the petition automatically granted by the USPTO.

More information on this new e-petition can be found at Instructions for EFS-web form SB66.

Summary supplied by Craig M. Schultz.

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Historic Memorandum of Understanding on Intellectual Property Issues Signed by U.S. and India

The United States Patent & Trademark Office (USPTO) announced that an historic Memorandum of Understanding (MOU) on Bilateral Cooperation was recently signed by under secretary of the USPTO Jon Dudas and secretary of the Indian Ministry of Commerce and Industry (IMCI) Ajay Dua.  Included in the MOU are plans for the USPTO to aid in the training of Indian patent and trademark examiners.  Other proposed activities include the development of education material and a manual on patent practice.  Action plans, establishing specific areas for cooperation, will be carried forward over a renewable two-year period.

Summary supplied by Elizabeth P. Richards.

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USPTO Eliminates Disclosure Document Program

The USPTO announced on November 16 that they will eliminate the Disclosure Document Program on February 1, 2007. The USPTO implemented the Disclosure Document Program in 1969 to provide inventors not ready to file for a patent with an alternative method of establishing the date of conception of an invention. Applicants can now have the ability to file Provisional Applications.

Summary supplied by Joe M. (Ken) Muncy.

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USPTO Complies with the 9^th Edition of the Nice Agreement 

The USPTO complies with the 9th edition of the Nice Agreement as of January 1, 2007.

Summary supplied by Astrid Wyckoff.

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USPTO Revises E-filing Forms to Clarify and Confirm Signatory Authority 

In trademark matters, the USPTO will, in February 2007, modify the Response to Office Action form and the Petition to Revive Abandoned Application form (Failure to Respond Timely to Office Action) to help ensure conformance with Examination Guide 03-6 (Representing an Applicant/Registrant before the USPTO, issued November 13, 2006).  Visit the USPTO website for more information.

Summary supplied by Astrid Wyckoff.

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Claims Reviewed in a Re-examination

On October 31, 2006 the Official Gazette had a Notice of Clarification of USPTO Policy To Exercise Discretion in Reexamining Fewer Than All the Patent Claims. Basically the USPTO plans to reexamine only the claims which are requested to be re-examined, not all of the claims in the patent. However, the USPTO may (in its sole discretion) decide to examine some or all of the non-requested claims. 

Summary supplied by Joe M. (Ken) Muncy.

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BSKB Represented at the 2007 Corporate Patent Congress

Nicholas P. Godici, former Commissioner of Patents, USPTO and Executive Advisor, Birch, Stewart, Kolasch & Birch, LLP (BSKB) will be delivering a keynote address and Gerald M. Murphy, Jr., Partner, Birch, Stewart, Kolasch & Birch, LLP (BSKB) will appear as a panelist on preparing your business and legal practices for patent reform legislation drafted by the 109^th United States Congress (The Patent Reform Act of 2006) at the 2007 Annual Corporate Patent Congress being held in New York, NY on January 22-23, 2007.

Summary supplied by Craig M. Schultz.

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BSKB Represented at the 2007 Patent Law Institute Conference

Leonard R. Svensson, Partner, Birch, Stewart, Kolasch & Birch, LLP (BSKB) will be speaking on a panel addressing issues related to the BSKB’s experience piloting many on the U.S. Patent and Trademark Office’s (USPTO) programs to move to a paperless environment and its impact on patent law practice. The Patent Law Institute 2007 Conference, The Impact of Recent Developments on Your Practice will be held January 29-30, 2007 in San Francisco, CA. This conference will be webcast.

Summary supplied by Craig M. Schultz.

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BSKB 2007 Trademark Practice Seminar

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 2007 program brochure and registration form are posted on our website.

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BSKB 2007 Summer Training Program

BSKB is pleased to announce that the annual Summer Training Program ("STP") will be held from Saturday, 16 June 2007, to Friday, 13 July 2007. The 2007 program brochure and registration form are posted on our website.

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BSKB 2007 Advanced Patent and Licensing Seminar

BSKB is pleased to announce that the annual Advanced Patent and Licensing Seminar ("APLS") will be held from Monday, 10 September 2007, to Friday, 21 September 2007. The 2007 program brochure and registration form are posted on our website.

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Unscheduled Closing of Federal Government

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

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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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