Incorporation by Reference: A claim for priority or benefit will now be considered an incorporation by reference of the prior-filed application as to an inadvertently omitted portion of the specification or drawings.

Newly added Sec. 1.57(a) now allows for all or a portion of the specification or drawings that is inadvertently omitted from an application containing a priority claim for a prior-filed foreign application, or a benefit claim for a prior-filed provisional, nonprovisional, or international application, to be added to the application by way of a later filed amendment if the inadvertently omitted portion of the specification or drawings is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application. The phrase "completely contained'' requires that the material to be added to the application must be expressly (as opposed to implicitly) disclosed in the prior application.

Information Disclosure Statements: The format of the IDS has been codified -- however, PTO Form 1449 is still accurate.  The Office has also announced that "it will no longer be necessary to require a copy of each cited U.S. patent or U.S. patent application publication in an IDS regardless of the filing date of the application or the national stage entry date under 35 U.S.C. 371, unless it is [explicitly] required by the Office."

Signatures: 37 CFR 1.4 has been amended to allow for "S-signatures" made by electronic means for many types of submissions to the PTO.  An S-signature is a signature inserted between forward slash marks.

Fees: The Office has determined the fees for many petitions do not "recover the Office's costs of treating many of these types of petitions."  Thus, fees have been increased.

Small-Entity Status: The Code has been amended to clarify that the fact that a large entity holds a security interest in a patent application does not bar the assignee to small entity status (unless the security interest is defaulted upon).  The notice also points out that a foreign owned and operated business can still qualify for small entity fee reductions.

69 FR 56482

NOTE: LINK to PDF Rule Change.

Update: Be Spacific and PHOSITA have more information on the /s/ signatures.

LINKS:
FAQ Page.
Read more about the changes here.
Read more about publication of BPAI opinions here.

The opinion in support of the decision being entered today is not written for publication and is not binding as precedent of the Board. (Emphasis in original).

In fact, there appear to be no "published" BPAI opinions issued within the last twelve months. (Ex Parte Eggert from May 2003 being the most recently published opinion).  IP-Updates recently uncovered a 2003 article on point: Binding Precedent in the Trial Section of the BPAI.  In the article, attorney Charles Gholz notes the "stunning fact about binding precedent in the Trial Section of the BPAI is that there is very little of it."  Gholz provides a listing of seventeen binding cases for the period of 1999-2003 -- in contrast with thirty-one unpublished cases.  According to law professor Carl Moy commented that "[a]t its root, the Board’s position seems to be at odds with the basic ways in which common-law adjudication works."

The BPAI is in the process of revamping the appeals procedure.  Perhaps the changes will also result in a greater proportion of precedential opinions.

Now, unless otherwise requested, certified copies of patent application records provided pursuant to 37 CFR 1.19 (b) will be produced with a paper certification statement, continuing the practice in effect prior to July 30, 2004. The certification statement will include an embossed seal and original signature.

USPTO Notice
Earlier Notice

In response, the USPTO's public advisory committee (the PPAC) has announced a new e-filing committee chaired by Andy Gibbs, CEO of PatentCafe.com to focus on the e-filing system and possible improvements. According to their press release:

This new E-Filing and E-Government Subcommittee will be responsible for working closely with the Patent Office to provide feedback and recommendations regarding current technologies and processes that the PTO is considering to improve its electronic filing process.

The PTO's newly updated electronic filing software is freely available here.

As an aside, the membership on the PPAC is via a three-year appointment. Nominees have been requested by the USPTO and are due by September 3, 2004. [PDF Notice] Membership on the PPAC is accompanied by a fairly good government pay rate (for level III of the Executive Schedule).

As a note, legislation is still pending that would dramatically alter fee amounts and procedures (H.R. 1561 and S. 1760).  If the legislation is enacted into law, the Office would likely make a mid-year shift in in assessed fees.

The existing VRS hardware and software have become increasingly obsolete and subject to downtime. As the same information provided on the VRS can now be obtained at the Office of Finance website, the USPTO will be disconnecting the VRS phone numbers (703-306-4227 and 4228, 703-308-5036 and 5037, 703-308-5392 and 5393) effective September 24, 2004.

Link.

USPTO Announcement.
Software Download (free).

PatentIn is a computer program designed to expedite the preparation of United States Patent and Trademark Office (USPTO) patent applications containing nucleic acid and polypeptide sequences.  The program is designed to facilitate the creation of sequence listings for inclusion in patent applications sequences. It accepts data about the sequences, validates the data, creates a sequence listing file and a mechanism for printing out and saving to removable medium for submission.

(Mark Chael provided the link).

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency’s estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, including through the use of automated collection techniques or other forms of information technology.

The comments must be submitted by October 18, 2004 to Susan.Brown@USPTO.gov (include "0651-0030 comment" in the subject line).

Source:

Under the new contract, the company will convert scientific and technical information into searchable Extensible Markup Language and image databases.... RTIS will scan and index more than 75 million pages of information in 2005 alone, company officials said. The contract supports USPTO's 21st Century Strategic Plan, which is intended to bring new technologies to bear on the agency's operations.

RTIS is a unit of LexisNexis, which is a unit of Reed Elsevier.

Link to the 62 page final order.

Update: A reader pointed out that that the the final order has some discrepencies and deserves "very close reading." For example, the description of the new Section 41.37 does not match up with the language of the new Section 41.37.

Description of the Text (p. 49963, middle column): "Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable."

Actual Text (p. 50006, right column): "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."

Although these two statements are similar -- they have key differences. The description of the rule seems to expand much further than the rule itself.

Update: More info about Deputy Director Pinkos is available from the USPTO Press Release.

Link: Public Pair Website

Commentary: hmmm ... don't you think they need a media savvy member with technical skills from the burgeoning blog community?

-- Dennis Crouch

What is a Recess Appointment?

Under Article II of the Constitution, the President has the "Power to fill up all Vacancies that may happen during the Recess of the Senate, by granting Commissions which shall expire at the end of their next Session." Essentially, any fight over Senate confirmation is pushed to the next session of Congress.

The delay in Dudas' appointment appears to be purely political and not related to his qualifications or background.

Link: Biography of Jon Dudas.

Link: Patent Office OED.