USPTO Notice and Comments

The USPTO currently has nine published notices and proposed rule changes that are open for comment. Most of these involve changes to USPTO procedure that implement aspects of the Leahy-Smith America Invents Act (AIA). Under the AIA, the USPTO has been granted broader authority through this notice-and-comment period.

  • Proposed Rule: Eliciting More Complete Patent Assignment Information – Comments Due January 23, 2012. The USPTO is proposing a rule that would require the timely recordation of patent and application ownership and changes to ownership. [DDC: This appears to be a straw-man proposal and will likely be significantly changed or dropped based upon public input.]
  • Proposed RuleRevision of Patent Term Adjustment Provisions Relating to Appellate Review – Comments Due January 27, 2012. [DDC: The new rule would largely lengthen PTA, but in some circumstances would reduce PTA depending upon the results of your appeal to the BPAI.]
  • Notice: Request for Comments on Additional USPTO Satellite Offices for the Nationwide Workforce Program – Comments Due January 30, 2012. The USPTO is planning to open additional satellite offices in 2012-2013 and is seeking input on the proper location.
  • Proposed Rule: Changes to Implement the Pre-issuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act – Comments Due March 5, 2012. Third party submissions will be allowed beginning in September 2012. The proposed rules sets up requirements that such a submission must include "a concise description of the asserted relevance of each document submitted." The proposed rule suggests that a fee of $180 for the submission of up to ten documents. In order to promote submissions, the Office has proposed a fee exemption for the first submission by each third-party for each application (with a limit of three documents in that submission). Under the new rules, submissions must be filed by the later of: (i) Six months after the date on which the application is first published by the Office or (ii) The date the first office action.
  • Proposed Rule: Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings – Comments Due March 5, 2012. The AIA sets a new statute of limitations for USPTO disciplinary proceedings at the earlier of (i) 10 years after the date on of the alleged misconduct; or (ii) one year from the date on which the misconduct was made known to an officer or employee of the USPTO. The rule proposed by the PTO would further define the one-year deadline as being triggered only once the USPTO has completed a preliminary review of the case and received a "complete, written response" from the accused practitioner. Depending upon the circumstances, the one-year deadline may otherwise be triggered by the OED's receipt of a certified copy of a record of censure from another Bar or conviction of a serious crime. [DDC: The USPTO's interpretation of the one-year deadline appears to be in tension to the text of the new statute, but the PTO may be fine because of the deference for OED matters under Lavacara v. Dudas.]
  • Proposed Rule: Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act – Comments Due March 5, 2012.
  • Proposed Rule: Changes to Implement the Inventors Oath or Declaration Provisions of the Leahy-Smith America Invents Act – Comments Due March 6, 2012.
  • Notice: Changing the USPTO's Collection of Information in Matters Related to National Medal of Technology and Innovation Nomination Application – Comments Due February 6, 2012.
  • Notice: Changing the USPTO's Collection of Information in Matters Related to Patent Appeals – Comments Due March 5, 2012.

13 thoughts on “USPTO Notice and Comments

  1. Can’t help you with that, Secret, but what you write does not conflict with my limited experience of recent prosecution at the Patent Office in China.

  2. > Not only does the EPO do the best search but (these days) it is also the quickest off the mark, and the search report comes with an opinion on patentability.

    The EPO usually does a solid job in searching prior art. However the last few years I have notices the Chinese Patent Office has killed several patent applications I have been involved in by citing some really obscure but spot on documents. And the command of English was solid in the analysis of these documents.

    China used to be a straightforward place to file an application, these days it is a different story. My guess was that these Examiners were Chinese having returned from many years abroad. I discussed the matter with some Chinese collagues at a conference recently and it appears the quality varies between the art units. My experience here is mainly in electronics and offshore technology.

    I would be interested to hear if others here have similar experiences.

  3. Indeed. Not only does the EPO do the best search but (these days) it is also the quickest off the mark, and the search report comes with an opinion on patentability. I too see other Patent Offices (China, USPTO) later coming up with objections founded on art used in the EPO opinion.

    Under the rubric of “raising the bar” EPO Examining Divisions are holding applicants ever more tightly to a scope commensurate to what is justified by the content of the app as filed. You are not suffering bad luck: it’s the same for everybody. And it’s a world-wide phenomenon.

  4. That goes without saying, I had hoped. Or did we need a Patently-O test for obviousness? Anyway, if the invention is important it is likely foreign patent filings have been made, and with EPO covering more than 400 million people it is likely that EP filings are high up on the list of where to file abroad.

    As for “devastating” it is obviously within the EP prosecution. When I prosecute large patent families I see Examiners all over the world “discovering” new documents immediately after these have been cited by the EPO. Perhaps I have had just plain bad luck but recently my experience with the EPO has been rather painful with several interviews and Oral Proceedings being required to get a grant. All Examiners insist strongly on their independence, from my files I see they do look at what happens at the EPO.

  5. link to patft.uspto.gov

    7,693,780
    Assignee: MF Global

    1. A trading system display, comprising a dynamic display including a computer having a graphical user interface responsive to input from a user input device, said display including an area displaying a plurality of axes, said plurality of axes comprising a price axis adapted to display a plurality of prices for at least one trading vehicle, a bid axis adapted to display a range of bids and showing at least one bid for said at least one trading vehicle, said at least one bid being associated with a first price of said prices on said price axis, and an ask axis adapted to display a range of asks and showing at least one ask for said at least one trading vehicle, said at least one ask being associated with a second price of said prices on said price axis, with the lowest price associated with an ask and the highest price associated with a bid defining a region of said price axis representative of the inside market of said at least one trading vehicle; a convergence point positionable, adjacent said plurality of axes, by a user of said trading system display, wherein the computer automatically moves said price axis in the direction of said convergence point in response to a change in the inside market of said at least one trading vehicle until said region is centered on said convergence point.

    Wow, a computer that displays a graph! So cool. Thanks, Mr. Kappos.

    But wait, there’s innovation even after bankruptcy!

    link to online.wsj.com

    Stanley Haar says he knew how much money MF Global Holdings Ltd. owed him after about five minutes reviewing old account statements. But completing a claim form, he said, took more than two days.

    “That’s nuts,” said Mr. Haar, a Boca Raton, Fla. commodity-fund manager, who had about $10 million in customer money—about 10% of the total fund—with MF Global when the firm sought bankruptcy protection on Oct. 31.

    Oh, it’s surely not “nuts”, Mr. Haar. Instead, it’s a useful tool for the bank to protect itself. Promote the Progress! Why does Mr. Haar hxte America?

  6. I too baulked at “devastating”. In my experience, EPO communications seldom raise even a flutter in the USA. The law is so different, I find.

    Imagine it the other way round: does anybody in Europe ever come across a “devastating Office Action” in a USPTO file wrapper?

  7. “and also get a devastating official communication from EPO to add.”

    Or not. Especially depending on whether or not the “special technical feature” went bye bye and the Euro man just said f it after the ind’s.

  8. There are several more notice and comment periods open; the PTO does not publicize these well.

    The best place to get current Federal Register notices is from a site maintained by the Environmental Protection Agency that gives a much more useful search function than either the PTO or Government Printing Office. I run this search a couple times a week –

    link to regulations.gov!searchResults;a=PTO;rpp=30

  9. > The proposed rule suggests that a fee of $180 for the submission of up to ten documents.

    In that case it would seem easier and simpler to file an anonymous observation with EPO using their web system and wait for an IDS from the applicant to show up on PAIR. That way you can file as many documents as you feel necessary and also get a devastating official communication from EPO to add.

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