In this Issue:

»  Proposed New Rules for the Board of Patent Appeals and Interferences in Ex Parte Appeals

»  Miscellaneous Changes to Trademark Trial and Appeals Board Rules

»  Examination of Patent Applications that Include Claims Containing Alternative Language

»  Electronic Transfer of Priority Documents to the International Bureau

»  Board of Patent Appeals and Interferences Final Decisions Now Text Searchable

»  New Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103

»  Revision of Patent Cooperation Treaty Protection

»  Sweden is Performing Some USPTO Search Work

»  Patent Prosecution Highway Pilot Program between the USPTO and the United Kingdom Intellectual Property Office

»  Changes in the Requirement for a Description of the Mark in Trademark Applications

»  BSKB Attorneys to Moderate Panels on Patent Prosecution at the Second Annual Patent Law Institute

»  BSKB 2008 Advanced Patent and Licensing Seminar

»  BSKB 2008 Trademark Practice Seminar

»  BSKB 2008 Summer Training Program

»  Unscheduled Closing of Federal Government

»  Upcoming Federal Government and BSKB Holidays

»  Electronic Version Requested

»  Communicating With BSKB Via E-Mail

Proposed New Rules for the Board of Patent Appeals and Interferences in Ex Parte Appeals

On 21 August 2007, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte patent appeals. The changes were deemed needed to permit the Board to handle the increasing number of ex parte appeals received by the BPAI.

The proposed rules seek to provide examiners and BPAI reviewers with a clear and complete statement of an appellant's position at the time of filing an appeal brief so as to enhance the likelihood that appealed claims will be allowed without the necessity of further proceeding with the appeal, minimize the pendency of appeals before the BPAI, minimize the need for lengthy patent term adjustments in cases where claims become allowable as a result of an action by the Board in an appeal, provide uniform treatment of requests for an extension of time filed after an appeal brief is filed, and make the decision-making process more efficient.

Details regarding the new rules can be found at http://www.uspto.gov/web/offices/com/sol/og/2007/

week34/patexap.htm. Comments, mostly negative, on the proposed rule changes can be found at http://www.uspto.gov/web/offices/pac/dapp/opla/

comments/bpai/bpai1.html.

Summary supplied by Craig M. Schultz

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Miscellaneous Changes to Trademark Trial and Appeals Board Rules

The USPTO is amending the Trademark Rules of Practice (trademark rules) to require plaintiffs in Trademark Trial and Appeal Board (TTAB) inter partes proceedings to serve on defendants their complaints or claims; to utilize in TTAB inter partes proceedings a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and to delete the option of making submissions to the Board in CD-ROM form. In addition, certain amendments are being made to clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology.

More information can be found at http://www.uspto.gov/web/offices/com/sol/og/2007/

week35/patchtm.htm.

Summary supplied by Craig M. Schultz

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Examination of Patent Applications that Include Claims Containing Alternative Language

The USPTO is proposing to revise the rules of practice pertaining to any claim using alternative language to claim one or more species. The search and examination of such claims often consume a disproportionate amount of USPTO resources as compared to other types of claims, because determining the patentability of these claims often requires a separate examination of each of the alternatives within the claims. The USPTO expects that requiring applicants who choose to draft claims that read on multiple species using alternative language to maintain a certain degree of relatedness among the alternatives will enable the USPTO to do a more thorough and more reliable examination of such claims. The Final Rule has not yet been announced.

The full notice of the proposed revision can be found at http://www.uspto.gov/web/offices/com/sol/og/2007/

week36/patapps.htm

Summary supplied by Craig M. Schultz

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Electronic Transfer of Priority Documents to the International Bureau

On 31 August 2007, the USPTO deployed an update to their electronic system that supports administrative processing of international applications. The update includes an enhancement that will enable the USPTO to electronically transfer certified copies of US priority applications to the International Bureau (IB) of the World Intellectual Property Organization (WIPO). Accordingly, as of 31 August 2007, the USPTO will begin electronically transferring certified copies of US priority applications to the IB for PCT applications filed in the US Receiving Office (RO/US) where the applicant has made a request in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b).

Please note that the USPTO will not transmit a copy of a US priority application until the priority application receives both a filing date and a foreign filing license. Applicants will continue to receive acknowledgement of receipt of priority documents from the IB via Form PCT IB/304.

More details on the system update can be found at http://www.uspto.gov/web/offices/com/sol/og/2007/

week36/pattran.htm.

Summary supplied by Craig M. Schultz

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Board of Patent Appeals and Interferences Final Decisions Now Text Searchable

Text searching capability is now available for searching publicly available final decisions of the BPAI that are posted on the BPAI’s Final Decision FOIA web page. This web page is also accessible via the BPAI’s web page on the USPTO’s web site.

Specifically, the database of final Board decisions that are posted on the Final Decision FOIA web page will be searched for a text string entered into a text search field and the identity of any decision(s) containing the string will be returned.

Summary supplied by Craig M. Schultz

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New Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103

In view of the Supreme Court decision in KSR International Co. v. Teleflex Inc, the USPTO has published examination guidelines for determining obviousness under 35 U.S.C. 103. These guidelines will assist USPTO personnel to make a proper determination of obviousness under 35 U.S.C. 103 and to provide an appropriate supporting rationale. DATES: These guidelines were effective 10 October 2007.

For more information, visit http://www.uspto.gov/web/offices/com/sol/og/2007/

week45/patgide.htm

Summary supplied by Craig M. Schultz

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Revision of Patent Cooperation Treaty Protection

The October 2, 2007 Official Gazette had a Notice about the revision of the rules of practice to conform them to certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT) that took effect on April 1, 2007. These amendments result in the addition of a mechanism to the PCT system whereby applicants may request that the right to claim priority be restored in applications that meet certain requirements. In addition, these amendments provide a means for applicants to insert a missing portion of an international application without the loss of the international filing date. These amendments also clarify the circumstances and procedures under which the correction of an obvious mistake may be made in an international application. Finally, the Office is revising the search fee for international applications.

The various changes were implemented between 10 September 2007 and 9 November 2007.

Summary supplied by Craig M. Schultz

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Sweden is Performing Some USPTO Search Work

The Swedish Patent and Registration Office (PRV) is processing about 50 PCT Chapter 1 test cases for the USPTO. The Notice is at http://www.uspto.gov/web/offices/com/speeches/07-40.htm.

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

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Patent Prosecution Highway Pilot Program between the USPTO and the United Kingdom Intellectual Property Office

The 25 September 2007 Official Gazette (OG) contained details about the Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the United Kingdom Intellectual Property Office that will last for a one year trial basis (until 4 September 2008). The link to this OG Notice is http://www.uspto.gov/web/offices/com/sol/og/2007

/week39/patpros.htm

If you get an allowed claim in the UK application and you have the same claim in the US case, your US case can be made "special" and can receive accelerated examination. If prosecution has begun in the US case, the procedure would not be available. The same is true for a US case with an allowed claim speeding up the UK case.

The USPTO is also participating in a Patent Prosecution Highway Pilot Program with the JPO. This pilot, mentioned in the Vol. 5, No. 3 (20 August 2007) IP Update, is now permanent.

Summary supplied by Craig M. Schultz

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Changes in the Requirement for a Description of the Mark in Trademark Applications

On 20 November 2007, the USPTO proposed to amend the Rules of Practice in Trademark Cases to require that a description of the mark be provided in all applications in order to register a mark that is not in “standard” characters. A copy of this notice can be obtained from the Official Gazette.

Summary supplied by Craig M. Schultz

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BSKB Attorneys to Moderate Panels on Patent Prosecution at the Second Annual Patent Law Institute

Gerald M. Murphy and Leonard R. Svensson, partners at Birch, Stewart, Kolasch & Birch, LLP (BSKB), will moderate a panel on patent prosecution at the second annual Patent Law Institute.  The panel, entitled “PTO – The Eventual Paperless Tiger?  A Walk Through the Most Recent Version of EFSWeb, and PTO Web FORMS,” will discuss complete paperlessness, habits that need to be changed, and a day-in-the-life of a 21^st-century e-office.  The Patent Law Institute will take place in New York and San Francisco, as well as via a live webcast, in January 2008.  Mr. Murphy, a partner at BSKB’s Falls Church office, will moderate at the New York program, and Mr. Svensson, a partner at BSKB’s San Diego office, will moderate at the San Francisco program.  The Patent Law Institute, sponsored by the Practising Law Institute, is designed to relay information regarding new developments in patent law to patent prosecutors, litigators and transactional lawyers.  More information is available at www.pli.edu.

Summary supplied by Elizabeth P. Richards

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BSKB 2008 Advanced Patent and Licensing Seminar

BSKB is pleased to announce that the annual Advanced Patent and Licensing Seminar (APLS) will be held from Monday, 22 September 2008, to Friday, 3 October 2008. The 2008 program brochure and registration form are posted on our website.
 

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BSKB 2008 Trademark Practice Seminar

BSKB is pleased to announce that the annual U.S. Trademark Practice Seminar (TPS) will be held from Sunday, 6 April 2008, to Friday, 11 April 2008. The 2008 program brochure and registration form are posted on our website.

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BSKB 2008 Summer Training Program

BSKB is pleased to announce that the annual Summer Training Program (STP) will be held from Saturday, 14 June 2008, to Friday, 11 July 2008. The 2008 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 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, applicants are requested to supply BSKB with a copy of the entire application text (specification, claims and abstract) in Microsoft Word® format preferably at the time the application is filed, via e-mail to mailroom@bskb.com. 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 www.bskb.com and click on "Download Forms".

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