Specifically, the Office has consistently taken [and continues to take] the position that if an application is entitled to an adjustment under the three-year pendency provision of 35 U.S.C. 154(b)(1)(B), the entire period during which the application was pending before the Office (except for periods excluded under 35 U.S.C. 154(b)(1)(B)(i)-(iii)), and not just the period beginning three years after the actual filing date of the application, is the relevant period under 35 U.S.C. 154(b)(1)(B) in determining whether periods of delay ‘‘overlap’’ under 35 U.S.C. 154(b)(2)(A).

When a maintenance fee is paid using the USPTO Internet Web site, a Web page becomes available that provides a Maintenance Fee Statement. That Web page displays the official USPTO Maintenance Fee Statement and must be printed in order to obtain a paper copy. The USPTO will only mail Maintenance Fee Statements for payments made by mail, facsimile or hand-delivery; and will not mail Maintenance Fee Statements for payments made over the Internet. Questions regarding patent maintenance fees should be directed to the Maintenance Fee Branch at (703) 308-5068.

Nipper has further information.

According to the USPTO Press Release:

“This is a wonderful step for all three offices, but its greatest significance is that it benefits users of our trademark registration systems,” noted Acting Under Secretary for Intellectual Property Jon Dudas. “Knowing that a given trademark identification will be accepted by the European Union, Japan and the United States provides the type of certainty that facilitates business and encourages American entrepreneurs to obtain intellectual property protection in global markets.”

Contact:
Ruth Nyblod
703-305-8341
ruth.nyblod@uspto.gov

The USPTO has asked applicants to ensure that they place proper postage on return receipt postcards. An inordinate number have been recently returned to the Patent Office for inadequate postage. Here are post card postage rules:

1. In order to be eligible for the First-Class Mail card rates (currently $0.23 per card, domestic delivery), cards must be of uniform thickness and made of unfolded and uncreased paper or card stock of approximately the quality and weight of a Postal Service stamped card. Cards claimed at the First-Class postcard rate must be:

(a) Rectangular;
(b) No less than 3-1/2 inches high, 5 inches long, and 0.007 inch thick; and
(c) No more than 4-1/4 inches high, 6 inches long, and 0.016 inch thick.

2. Cards that measure more than 4-1/4 inches high, 6 inches long, or 0.016 inch thick are charged postage at the First-Class Mail letter rates.

3. Cards that measure less than 3-1/2 inches high, 5 inches long, and 0.007 inch thick are nonmailable. Any return receipt postcard that does not contain sufficient postage or is not acceptable may not be delivered by the United States Postal Service (USPS) to the address provided on the postcard, and, if returned to the Office, may be discarded.

Link.

Some Highlights:

UTILITY APPLICATIONS FILED AFTER MAY 29, 2000:

If a petition is not filed within 2-months from the mailing date of the notice of abandonment, any patent term adjustment will be reduced under 37 CFR 1.704(c)(4).

If applicant does not receive the notice of abandonment, any patent term adjustment may be reduced under 37 CFR(a) by a period equal to the time the applicant 'failed to engage in reasonable efforts to conclude prosecution' ... any period of adjustment shall be reduced by the number of days, if any, beginning on the day after the date that is twelve months from the date of applicant’s filing or submission of correspondence with the USPTO for which further action by the USPTO can reasonably be expected and ending on the filing date of a grantable petition to withdraw the holding of abandonment.

UTILITY APPLICATIONS FILED BETWEEN (INCLUSIVE) JUNE 8, 1995 AND MAY 29, 2000:

The USPTO has no authority to grant patent term extension after withdrawing a holding of abandonment unless the application is held abandoned during 1) an interference proceeding; 2) after imposition of s secrecy order; or 3) during a successful appellate review.

...
The clarifications will be added to the MPEP in due course.
For specifics, see the link.

Use this address instead (with appropriate mail stops):

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Link.

1) Customer number practice must be used if more than ten practitioners are to be made of record.

2) Certain mail stops are being eliminated: CPA, Provisional Patent Application.

3) A new mail stop is being created: Licensing and Review ("L&R").

4) Only copies of assignment documents should be submitted. Submitted documents will not be returned or retained by the USPTO.

Link.

U.S. Patent and Trademark Office
220 20th Street S.
Customer Window, Mail Stop ________
Crystal Plaza Two, Lobby, Room 1B03
Arlington, VA 22202

The Customer Window is the delivery location for patent-related correspondence to be hand or courier delivered to the USPTO by delivery services such as FedEx, UPS, DHL, Laser, Action, Purolator, etc. The customer window is not used for correspondence delivered by the United States Postal Service (USPS).

Link (PDF)

More PTO Address Info here.

Two notes:

1) These fees may be superseded by the patent office funding bill currently in Congress. (If it passes and is signed into law).
2) Comments on the new fees must be submitted by June 9, 2004

Link (PDF)

Patent and trademark applicants can now file on line for assignments. The new USPTO system allows the agency’s customers to create and submit a patent or trademark assignment recordation coversheet by completing on-line web forms and attaching the supporting legal documentation as TIFF images.

Verizon Press Release
Official Gazette
Nipper’s Scoop

Many major corporations have been Katz licensees including American Express, AT&T, Microsoft, and others. (Katz Press Release)

Xenia P. Kobylarz is following this story in detail at the Daily Journal. According to Xenia:

The patent office has re-examined 6,300 patents since 1981, according to agency spokeswoman Brigid Quinn. Of that total, only 165 - 2.6 percent - were instigated by the patent office itself. The office is permitted to launch these probes only upon strong evidence of invalidity, she noted. Consequently, when the patent office orders a re-examination, Quinn said, there is a higher chance the patent will be invalidated.

I have a hunch that there will be more to this story.

*NOTE: 37 CFR 1.138 delineates what must be included in a proper express abandonment petition.
**NOTE: The petition needs to be at the PTO at least four weeks prior to the projected pubilcation date.

"It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication." MPEP 711.01.

Remember the Disclaimer

The email should be sent to: petitions@uspto.gov
The email should include: Application number; Date of petition; and CFR code under which the petition was filed.

A single email may be used for all of your petitions. Other information in the email will not be considered. A sample email is shown in the notice. (PDF); EFS Help Desk: (703) 305-3028

Note: There are at least three types of petitions 1002.02(b), (c), and (r).

(b) petitions are decided by the office of the deputy commisioner for examination policy.
(c) petitions are decided by the technology centers.
(r) petitions are decided by the office of publications.

Some examples of 1002.02(b) petitions include: petitions to revive, petitions for express abandonment, etc. (a total of 32 types are listed in the MPEP).

The mail stops that should no longer be used are: Mail Stop Application Number, Mail Stop CPA, Mail Stop Design, Mail Stop Non-Fee Amendment, Mail Stop PGPUB-ABD, Mail Stop Patent Application, and Mail Stop Provisional Patent Application. Mail Stop Non-Fee Amendment has been changed to Mail Stop Amendment.

In addition, Mail Stop PGPUB-ABD has been changed to Mail Stop Express Abandonment and all requests and petitions for an express abandonment under 37 CFR 1.138 should be directed to Mail Stop Express Abandonment or transmitted by facsimile to (703) 305-8568. Lastly, Mail Stop L&R and Mail Stop Post Issue have been established.

Additionally, a new mail stop has been established: Mail Stop Post Issue. (PDF)

Correspondence that should be directed to Mail Stop Post Issue includes correspondence in applications that have issued as a patent, such as requests for changes of address (other than a fee address, which should be addressed to Mail Stop M Correspondence), powers of attorney, revocations of powers of attorney, withdrawal of attorney, and submissions under 37 CFR 1.501.

More Patent Office Address Info Here.

Schedule
June 2004 TCs 1600, 1700, 2800 and 2900
July 2004 TCs 3600 and 3700
August 2004 TCs 2100 and 2600