Please use your
key to return to the previous page.
| Patent Cooperation Treaty (PCT) Information |
Patent Cooperation Treaty (PCT) Information
For information concerning PCT member countries, see the notice
appearing in the Official Gazette at 1369 O.G. 5, on August 2, 2011.
For information on subject matter under Rule 39 that a particular
International Searching Authority will not search, see Annex D of the PCT
Applicants' Guide.
European Patent Office as Searching and Examining Authority
The European Patent Office (EPO) may act as the International Searching
Authority (ISA) for an international application filed with the United
States Receiving Office or the International Bureau (IB) as Receiving
Office where at least one of the applicants is either a national or
resident of the United States of America. However, the EPO is no longer
a competent ISA, within the meaning of PCT Article 16(3), for
international applications filed by U.S. residents or nationals on or
after March 1, 2002, in the USPTO or IB as a Receiving Office, and where
the application contains one or more claims directed to the field of
business methods. For the definition of what the EPO considers to be
precluded subject matter in the field of business methods, applicants
should see the "Notice from the President of the European Patent
Office", dated November 26, 2001, and which was published as Annex A in
the "Notice Concerning EPO Competence to Act as PCT Authority" in the
Official Gazette at 1255 O.G. 878, on February 19, 2002.
The European Patent Office may act as the International Preliminary
Examining Authority (IPEA) for an international application filed in the
United States Receiving Office or the International Bureau as Receiving
Office where at least one of the applicants is either a national or
resident of the United States of America, provided that the European
Patent Office acted as the International Searching Authority. However,
the EPO is no longer a competent IPEA, within the meaning of PCT Article
32(3), for international applications filed by U.S. residents or nationals
in the USPTO or IB as a Receiving Office where the corresponding demand is
filed with the EPO on or after March 1, 2002, and where the application
contains one or more claims directed to the field of business methods.
The search fee of the European Patent Office was decreased, effective
January 1, 2012, and was announced in the Official Gazette at 1373 O.G.
177, on December 27, 2011.
Korean Intellectual Property Office as Searching and Examining Authority
For use of the Korean Intellectual Property Office as an International
Searching Authority and International Preliminary Examining Authority for
international applications filed in the United States Receiving Office,
see the notice appearing in the Official Gazette at 1302 O.G. 1261 on
January 17, 2006.
The search fee of the Korean Intellectual Property Office was decreased,
effective January 1, 2012, and was announced in the Official Gazette at
1373 O.G. 177, on December 27, 2011.
Australian Patent Office as Searching and Examining Authority
The Australian Patent Office (IP Australia) may act as the International
Searching Authority (ISA) for an international application filed with the
United States Receiving Office or the International Bureau (IB) as
Receiving Office where at least one of the applicants is either a national
or resident of the United States of America. However, IP Australia is not a
competent ISA, within the meaning of PCT Artical 16(3), for international
applications filed by U.S. residents or nationals in the USPTO or IB as a
Receiving Office, and where the application contains one or more claims
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 263 |
directed to the field of business methods or mechanical inventions.
IP Australia may act as the International Preliminary Examining
Authority (IPEA) for an international application filed in the United
States Receiving Office or the International Bureau as Receiving Office
where at least one of the applicants is either a national or resident of
the United States of America, provided that IP Australia acted as the
International Searching Authority. However, IP Australia is not a competent
IPEA, within the meaning of PCT Article 32(3), for international
applications filed by U.S. residents or nationals in the USPTO or IB as a
Receiving Office where the corresponding demand is filed with IP Australia
and where the application contains one or more claims directed to the
fields of business methods or mechanical engineering or analogous fields of
technology as defined by specified areas of the International Patent
Classification System, as indicated in Annex A to the agreement between the
USPTO and IP Australia. See the notice appearing in the Official Gazette
at 1337 O.G. 261 on December 23, 2008.
For use of IP Australia as an International Searching Authority and
International Preliminary Examining Authority for international
applications filed in the United States Receiving Office, see the notice
appearing in the Official Gazette at 1337 O.G. 265 on December 23, 2008.
The search fee of IP Australia was increased, effective January 1, 2012,
and was announced in the Official Gazette at 1373 O.G. 177, on December 27,
2011.
Fees
The transmittal fee for the USPTO was changed to include a basic portion
and a non-electronic filing fee portion, effective November 15, 2011, and
was announced in the Federal Register on November 15, 2011. Search fees for
the USPTO were changed, effective January 12, 2009, and were announced in
the Federal Register on November 12, 2008. The fee for filing a request for
the restoration of the right of priority was established, effective
November 9, 2007, and was announced in the Federal Register on September 10,
2007.
International filing fees were increased, effective January 1, 2012,
and were announced in the Official Gazette at 1373 O.G. 177, on December
27, 2011.
The schedule of PCT fees (in U.S. dollars), as of January 1, 2012, is as
follows:
International Application (PCT Chapter I) fees:
Transmittal fee
Basic Portion $240.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (other than a
small entity) $400.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (small entity) $200.00
Search fee
U.S. Patent and Trademark Office (USPTO) as
International Searching Authority (ISA)
- Search fee $2,080.00
- Supplemental search fee, per additional
invention (payable only upon invitation) $2,080.00
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 264 |
European Patent Office as ISA $2,370.00
Korean Intellectual Property Office as ISA
- for international applications filed in English $1,101.00
IP Australia as ISA $1,833.00
International fees
International filing fee $1,453.00
International filing fee-filed in paper
with PCT EASY zip file or
electronically without PCT EASY zip file $1,344.00
International filing fee-filed
electronically with PCT EASY zip files $1,494.00
Supplemental fee for each page over 30 $1,234.00
Restoration of Priority
Filing a request for the restoration of the
right of priority under § 1.452 $1,410.00
International Application (PCT Chapter II) fees associated
with filing a Demand for Preliminary Examination:
Handling fee $219.00
Handling fee-90% reduction, if applicants meet criteria
specified at:
http://www.wipo.int/pct/en/fees/fee_reduction.pdf $21.90
Preliminary Examination Fee
USPTO as International Preliminary
Examining Authority (IPEA)
- USPTO was ISA in PCT Chapter I $600.00
- USPTO was not ISA in PCT Chapter I $750.00
- Additional preliminary examination fee,
per additional invention
(payable only upon invitation) $600.00
U.S. National Stage fees (for international applications entering
the U.S. national phase under 35 U.S.C. 371) can be found on the USPTO's
Web site (www.uspto.gov).
January 9, 2012 ANDREW H. HIRSHFELD
Associate Commissioner for
Patent Examination Policy
United States Patent and Trademark Office
| Notice of Maintenance Fees Payable |
Notice of Maintenance Fees Payable
Title 37 Code of Federal Regulations (CFR), Section 1.362(d) provides
that maintenance fees may be paid without surcharge for the six-month
period beginning 3, 7, and 11 years after the date of issue of patents
based on applications filed on or after Dec. 12, 1980. An additional
six-month grace period is provided by 35 U.S.C. 41(b) and 37 CFR 1.362(e)
for payment of the maintenance fee with the surcharge set forth in 37 CFR
1.20(h), as amended effective Dec. 16, 1991. If the maintenance fee is
not paid in the patent requiring such payment the patent will expire on
the 4th, 8th, or 12th anniversary of the grant.
Attention is drawn to the patents that were issued on January 20, 2009
for which maintenance fees due at 3 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 7,478,438 through 7,480,942
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on January 18, 2005
for which maintenance fees due at 7 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 6,842,908 through 6,845,512
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on January 16, 2001
for which maintenance fees due at 11 years and six months may now be paid.
The patents have patent numbers within the following ranges:
Utility Patents 6,173,447 through 6,175,957
Reissue Patents based on the above identified patents.
No maintenance fees are required for design or plant patents.
Payments of maintenance fees in patents may be submitted electronically
over the Internet at www.uspto.gov. Click on the "Site Index" link at the
top of the homepage (www.uspto.gov), and then scroll down and click on the
"Maintenance Fees" link for more information.
Payments of maintenance fees in patents not submitted electronically
over the Internet should be mailed to "United States Patent and Trademark
Office, P.O. Box 979070, St. Louis, MO 63197-9000".
Correspondence related to maintenance fees other than payments of
maintenance fees in patents is not to be mailed to P.O. Box 979070,
St. Louis, MO 63197-9000, but must be mailed to "Mail Stop M
Correspondence, Director of the U.S. Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450".
Patent owners must establish small entity status according to 37 CFR
1.27 if they have not done so and if they wish to pay the small entity
amount.
The current amounts of the maintenance fees due at 3 years and six
months, 7 years and six months, and 11 years and six months are set forth
in the most recently amended provisions in 37 CFR 1.20(e)-(g). To obtain
the current maintenance fee amounts, please call the USPTO Contact Center
at (800)-786-9199 or see the current USPTO fee schedule posted on the USPTO
Internet web site. At the top of the USPTO homepage at www.uspto.gov, click
on the "Site Index" link and then scroll down and click on the "Fees,
USPTO" link to find the current USPTO fee schedule.
| Notice of Expiration of Patents Due to Failure to Pay Maintenance Fee |
Notice of Expiration of Patents
Due to Failure to Pay Maintenance Fee
35 U.S.C. 41 and 37 CFR 1.362(g) provide that if the required
maintenance fee and any applicable surcharge are not paid in a patent
requiring such payment, the patent will expire at the end of the 4th, 8th
or 12th anniversary of the grant of the patent depending on the first
maintenance fee which was not paid.
According to the records of the Office, the patents listed below have
expired due to failure to pay the required maintenance fee and any
applicable surcharge.
PATENTS WHICH EXPIRED ON December 14, 2011
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,000,061 09/195,247 12/14/99
6,000,068 09/151,124 12/14/99
6,000,072 09/149,301 12/14/99
6,000,073 09/165,529 12/14/99
6,000,078 08/933,720 12/14/99
6,000,080 08/785,525 12/14/99
6,000,089 09/042,299 12/14/99
6,000,112 09/282,404 12/14/99
6,000,113 08/787,574 12/14/99
6,000,114 09/001,903 12/14/99
6,000,121 08/446,375 12/14/99
6,000,126 08/627,909 12/14/99
6,000,129 09/041,845 12/14/99
6,000,130 09/062,816 12/14/99
6,000,131 08/948,188 12/14/99
6,000,133 09/092,062 12/14/99
6,000,138 08/211,545 12/14/99
6,000,141 08/995,053 12/14/99
6,000,144 08/973,187 12/14/99
6,000,145 09/105,808 12/14/99
6,000,147 09/118,402 12/14/99
6,000,148 09/104,178 12/14/99
6,000,149 09/183,777 12/14/99
6,000,177 08/944,171 12/14/99
6,000,179 08/970,248 12/14/99
6,000,180 09/005,428 12/14/99
6,000,183 08/796,976 12/14/99
6,000,184 08/638,902 12/14/99
6,000,187 09/065,260 12/14/99
6,000,188 09/001,290 12/14/99
6,000,196 09/110,775 12/14/99
6,000,205 09/013,232 12/14/99
6,000,210 08/983,033 12/14/99
6,000,226 09/126,479 12/14/99
6,000,231 09/006,081 12/14/99
6,000,243 09/067,022 12/14/99
6,000,248 09/135,388 12/14/99
6,000,249 09/104,018 12/14/99
6,000,250 09/106,929 12/14/99
6,000,253 09/107,220 12/14/99
6,000,254 09/052,622 12/14/99
6,000,257 09/042,194 12/14/99
6,000,285 09/083,484 12/14/99
6,000,290 08/968,205 12/14/99
6,000,298 08/840,863 12/14/99
6,000,314 09/149,811 12/14/99
6,000,330 09/161,208 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 267 |
6,000,333 09/125,842 12/14/99
6,000,357 09/057,098 12/14/99
6,000,358 09/079,058 12/14/99
6,000,370 08/974,771 12/14/99
6,000,377 09/044,094 12/14/99
6,000,378 09/144,257 12/14/99
6,000,381 08/961,710 12/14/99
6,000,382 09/101,161 12/14/99
6,000,383 08/968,594 12/14/99
6,000,385 08/999,634 12/14/99
6,000,398 09/186,797 12/14/99
6,000,399 09/090,697 12/14/99
6,000,400 08/741,348 12/14/99
6,000,401 08/951,694 12/14/99
6,000,403 09/000,318 12/14/99
6,000,405 09/274,381 12/14/99
6,000,410 09/262,935 12/14/99
6,000,411 09/133,697 12/14/99
6,000,415 08/855,827 12/14/99
6,000,417 09/001,098 12/14/99
6,000,420 09/116,206 12/14/99
6,000,429 08/805,293 12/14/99
6,000,439 09/029,940 12/14/99
6,000,442 08/930,844 12/14/99
6,000,448 09/145,081 12/14/99
6,000,449 09/115,482 12/14/99
6,000,454 08/569,337 12/14/99
6,000,455 08/919,811 12/14/99
6,000,467 09/087,016 12/14/99
6,000,477 08/578,524 12/14/99
6,000,479 09/014,349 12/14/99
6,000,484 08/719,993 12/14/99
6,000,491 09/036,840 12/14/99
6,000,498 09/208,391 12/14/99
6,000,501 08/903,057 12/14/99
6,000,503 08/990,243 12/14/99
6,000,515 08/211,020 12/14/99
6,000,522 08/881,021 12/14/99
6,000,523 08/976,428 12/14/99
6,000,529 08/982,557 12/14/99
6,000,531 08/886,835 12/14/99
6,000,533 09/013,022 12/14/99
6,000,544 09/083,688 12/14/99
6,000,552 09/242,991 12/14/99
6,000,578 08/875,588 12/14/99
6,000,581 08/941,456 12/14/99
6,000,597 09/014,878 12/14/99
6,000,598 08/960,062 12/14/99
6,000,601 08/735,031 12/14/99
6,000,618 09/000,793 12/14/99
6,000,626 09/005,570 12/14/99
6,000,629 09/032,835 12/14/99
6,000,636 09/162,900 12/14/99
6,000,647 09/120,221 12/14/99
6,000,654 09/028,557 12/14/99
6,000,655 09/182,913 12/14/99
6,000,663 09/085,466 12/14/99
6,000,671 08/792,024 12/14/99
6,000,678 09/170,134 12/14/99
6,000,680 08/917,192 12/14/99
6,000,681 08/904,343 12/14/99
6,000,687 09/196,095 12/14/99
6,000,694 08/847,892 12/14/99
6,000,695 08/583,065 12/14/99
6,000,697 09/136,600 12/14/99
6,000,722 08/799,082 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 268 |
6,000,723 08/952,213 12/14/99
6,000,724 08/927,369 12/14/99
6,000,725 09/066,521 12/14/99
6,000,733 08/936,757 12/14/99
6,000,739 09/079,951 12/14/99
6,000,744 09/282,784 12/14/99
6,000,747 09/131,518 12/14/99
6,000,759 09/234,443 12/14/99
6,000,761 09/148,227 12/14/99
6,000,767 09/015,668 12/14/99
6,000,769 09/177,663 12/14/99
6,000,776 09/015,054 12/14/99
6,000,778 08/762,240 12/14/99
6,000,779 08/924,027 12/14/99
6,000,783 08/127,480 12/14/99
6,000,785 09/199,035 12/14/99
6,000,789 08/838,925 12/14/99
6,000,790 08/291,554 12/14/99
6,000,800 09/102,699 12/14/99
6,000,803 08/914,546 12/14/99
6,000,816 08/904,183 12/14/99
6,000,823 09/169,862 12/14/99
6,000,829 08/925,437 12/14/99
6,000,833 08/785,744 12/14/99
6,000,836 09/047,565 12/14/99
6,000,837 08/894,891 12/14/99
6,000,841 09/144,173 12/14/99
6,000,849 09/105,616 12/14/99
6,000,861 09/051,503 12/14/99
6,000,863 09/038,223 12/14/99
6,000,864 09/149,970 12/14/99
6,000,867 08/931,834 12/14/99
6,000,874 08/877,943 12/14/99
6,000,880 08/997,412 12/14/99
6,000,882 08/984,227 12/14/99
6,000,885 09/120,696 12/14/99
6,000,892 09/208,988 12/14/99
6,000,895 08/904,620 12/14/99
6,000,896 09/100,724 12/14/99
6,000,905 09/041,635 12/14/99
6,000,907 09/139,076 12/14/99
6,000,913 09/139,100 12/14/99
6,000,915 09/005,170 12/14/99
6,000,925 08/996,177 12/14/99
6,000,929 08/545,867 12/14/99
6,000,932 09/290,084 12/14/99
6,000,939 09/246,588 12/14/99
6,000,944 09/169,469 12/14/99
6,000,949 08/859,691 12/14/99
6,000,953 09/058,417 12/14/99
6,000,954 09/060,628 12/14/99
6,000,959 08/599,096 12/14/99
6,000,961 08/936,420 12/14/99
6,000,962 09/103,326 12/14/99
6,000,963 09/121,609 12/14/99
6,000,964 09/030,969 12/14/99
6,000,972 08/997,059 12/14/99
6,000,981 08/955,506 12/14/99
6,000,986 09/149,780 12/14/99
6,000,989 08/549,061 12/14/99
6,000,994 09/003,232 12/14/99
6,000,997 09/113,450 12/14/99
6,000,999 09/267,630 12/14/99
6,001,006 08/963,708 12/14/99
6,001,008 09/293,459 12/14/99
6,001,009 09/063,670 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 269 |
6,001,027 08/697,647 12/14/99
6,001,034 08/965,503 12/14/99
6,001,040 09/030,168 12/14/99
6,001,042 09/018,606 12/14/99
6,001,048 09/186,019 12/14/99
6,001,054 09/081,954 12/14/99
6,001,064 08/929,957 12/14/99
6,001,066 09/089,417 12/14/99
6,001,070 09/240,561 12/14/99
6,001,071 09/024,970 12/14/99
6,001,083 09/187,600 12/14/99
6,001,096 09/003,564 12/14/99
6,001,102 08/970,382 12/14/99
6,001,103 09/044,257 12/14/99
6,001,114 09/072,027 12/14/99
6,001,132 07/504,881 12/14/99
6,001,141 08/748,234 12/14/99
6,001,145 08/961,737 12/14/99
6,001,148 08/852,296 12/14/99
6,001,150 08/937,398 12/14/99
6,001,153 09/041,783 12/14/99
6,001,178 08/854,930 12/14/99
6,001,181 08/905,101 12/14/99
6,001,184 08/767,792 12/14/99
6,001,187 08/805,994 12/14/99
6,001,191 08/760,801 12/14/99
6,001,195 08/768,467 12/14/99
6,001,211 09/062,900 12/14/99
6,001,219 08/852,345 12/14/99
6,001,223 09/037,522 12/14/99
6,001,226 08/883,933 12/14/99
6,001,232 08/707,794 12/14/99
6,001,237 08/982,892 12/14/99
6,001,238 08/941,045 12/14/99
6,001,239 09/164,405 12/14/99
6,001,241 09/131,448 12/14/99
6,001,250 08/928,938 12/14/99
6,001,251 09/179,151 12/14/99
6,001,254 08/930,803 12/14/99
6,001,258 08/952,453 12/14/99
6,001,263 09/209,056 12/14/99
6,001,264 09/015,808 12/14/99
6,001,266 09/083,571 12/14/99
6,001,284 08/688,876 12/14/99
6,001,285 08/907,144 12/14/99
6,001,287 09/097,595 12/14/99
6,001,288 08/997,825 12/14/99
6,001,291 08/791,236 12/14/99
6,001,296 08/824,943 12/14/99
6,001,299 08/910,879 12/14/99
6,001,301 08/648,652 12/14/99
6,001,318 08/996,215 12/14/99
6,001,319 08/821,642 12/14/99
6,001,323 09/139,204 12/14/99
6,001,330 08/928,246 12/14/99
6,001,333 08/928,331 12/14/99
6,001,338 08/930,835 12/14/99
6,001,350 08/488,420 12/14/99
6,001,351 08/896,498 12/14/99
6,001,355 07/890,335 12/14/99
6,001,357 09/143,467 12/14/99
6,001,358 08/554,840 12/14/99
6,001,364 08/105,904 12/14/99
6,001,382 08/674,813 12/14/99
6,001,387 08/886,266 12/14/99
6,001,395 08/983,156 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 270 |
6,001,397 08/997,277 12/14/99
6,001,399 08/820,585 12/14/99
6,001,403 09/091,705 12/14/99
6,001,412 08/734,424 12/14/99
6,001,416 09/189,932 12/14/99
6,001,421 08/984,141 12/14/99
6,001,422 09/058,162 12/14/99
6,001,430 09/166,896 12/14/99
6,001,437 08/895,918 12/14/99
6,001,444 08/989,643 12/14/99
6,001,446 08/884,266 12/14/99
6,001,447 09/004,318 12/14/99
6,001,456 08/979,615 12/14/99
6,001,457 08/963,088 12/14/99
6,001,459 08/259,891 12/14/99
6,001,468 08/992,380 12/14/99
6,001,469 08/623,446 12/14/99
6,001,470 08/979,856 12/14/99
6,001,473 09/309,237 12/14/99
6,001,479 08/656,873 12/14/99
6,001,484 09/005,328 12/14/99
6,001,485 08/970,671 12/14/99
6,001,498 08/949,934 12/14/99
6,001,513 09/097,801 12/14/99
6,001,517 08/960,320 12/14/99
6,001,531 09/188,042 12/14/99
6,001,532 08/936,905 12/14/99
6,001,534 09/050,071 12/14/99
6,001,543 09/128,421 12/14/99
6,001,544 09/162,162 12/14/99
6,001,551 08/342,025 12/14/99
6,001,555 08/379,420 12/14/99
6,001,556 08/592,724 12/14/99
6,001,561 08/437,347 12/14/99
6,001,572 08/899,786 12/14/99
6,001,577 09/093,293 12/14/99
6,001,581 08/367,264 12/14/99
6,001,583 08/472,595 12/14/99
6,001,584 09/150,201 12/14/99
6,001,589 08/489,072 12/14/99
6,001,597 09/211,631 12/14/99
6,001,600 08/771,098 12/14/99
6,001,601 08/844,059 12/14/99
6,001,603 08/906,136 12/14/99
6,001,615 08/981,731 12/14/99
6,001,623 09/126,646 12/14/99
6,001,625 08/446,100 12/14/99
6,001,627 08/526,521 12/14/99
6,001,636 09/107,755 12/14/99
6,001,647 08/547,746 12/14/99
6,001,648 08/574,396 12/14/99
6,001,654 08/846,028 12/14/99
6,001,657 08/729,598 12/14/99
6,001,659 08/437,342 12/14/99
6,001,661 09/055,206 12/14/99
6,001,670 08/959,384 12/14/99
6,001,677 09/065,334 12/14/99
6,001,679 09/010,853 12/14/99
6,001,682 09/059,319 12/14/99
6,001,692 08/926,027 12/14/99
6,001,702 09/014,934 12/14/99
6,001,707 09/241,760 12/14/99
6,001,708 09/164,288 12/14/99
6,001,714 08/938,314 12/14/99
6,001,718 08/941,253 12/14/99
6,001,722 08/879,379 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 271 |
6,001,726 08/822,670 12/14/99
6,001,729 09/134,372 12/14/99
6,001,742 09/074,639 12/14/99
6,001,759 09/144,116 12/14/99
6,001,761 08/858,561 12/14/99
6,001,762 09/018,822 12/14/99
6,001,767 08/905,593 12/14/99
6,001,768 08/627,221 12/14/99
6,001,769 08/937,938 12/14/99
6,001,775 09/235,184 12/14/99
6,001,778 09/229,396 12/14/99
6,001,783 08/823,467 12/14/99
6,001,786 08/877,533 12/14/99
6,001,790 08/992,156 12/14/99
6,001,792 08/090,073 12/14/99
6,001,794 08/981,950 12/14/99
6,001,798 09/029,247 12/14/99
6,001,801 09/006,348 12/14/99
6,001,803 08/325,240 12/14/99
6,001,813 09/090,046 12/14/99
6,001,820 08/870,528 12/14/99
6,001,823 08/462,436 12/14/99
6,001,828 08/956,277 12/14/99
6,001,842 09/004,938 12/14/99
6,001,846 09/024,986 12/14/99
6,001,851 09/041,391 12/14/99
6,001,853 09/117,068 12/14/99
6,001,854 08/865,919 12/14/99
6,001,855 09/218,200 12/14/99
6,001,867 09/307,921 12/14/99
6,001,870 08/940,730 12/14/99
6,001,892 08/999,685 12/14/99
6,001,898 09/036,704 12/14/99
6,001,911 08/860,445 12/14/99
6,001,917 09/109,967 12/14/99
6,001,920 09/008,860 12/14/99
6,001,922 08/911,702 12/14/99
6,001,928 09/027,157 12/14/99
6,001,933 08/991,536 12/14/99
6,001,946 08/933,122 12/14/99
6,001,947 08/973,060 12/14/99
6,001,949 08/571,736 12/14/99
6,001,958 08/557,168 12/14/99
6,001,962 08/751,512 12/14/99
6,001,972 09/178,637 12/14/99
6,001,979 08/774,299 12/14/99
6,001,986 08/916,443 12/14/99
6,001,988 08/472,256 12/14/99
6,001,989 08/218,656 12/14/99
6,001,990 08/474,700 12/14/99
6,002,001 08/969,344 12/14/99
6,002,002 08/914,115 12/14/99
6,002,005 09/072,469 12/14/99
6,002,019 08/975,269 12/14/99
6,002,021 09/106,278 12/14/99
6,002,025 09/256,920 12/14/99
6,002,034 09/172,367 12/14/99
6,002,043 08/971,406 12/14/99
6,002,051 07/962,382 12/14/99
6,002,053 09/156,988 12/14/99
6,002,061 08/714,028 12/14/99
6,002,065 08/820,126 12/14/99
6,002,075 09/287,694 12/14/99
6,002,079 09/005,270 12/14/99
6,002,083 08/970,373 12/14/99
6,002,087 09/154,509 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 272 |
6,002,088 09/231,457 12/14/99
6,002,092 09/081,584 12/14/99
6,002,095 08/646,186 12/14/99
6,002,098 08/875,676 12/14/99
6,002,100 09/089,800 12/14/99
6,002,102 08/806,094 12/14/99
6,002,116 09/305,307 12/14/99
6,002,117 09/038,359 12/14/99
6,002,119 09/013,289 12/14/99
6,002,126 08/964,294 12/14/99
6,002,130 09/015,322 12/14/99
6,002,134 08/955,474 12/14/99
6,002,139 08/977,833 12/14/99
6,002,145 09/028,375 12/14/99
6,002,146 08/818,738 12/14/99
6,002,148 08/497,569 12/14/99
6,002,149 08/554,546 12/14/99
6,002,153 08/760,806 12/14/99
6,002,156 08/931,594 12/14/99
6,002,161 08/756,536 12/14/99
6,002,181 08/551,917 12/14/99
6,002,185 09/200,859 12/14/99
6,002,189 09/103,302 12/14/99
6,002,191 09/102,123 12/14/99
6,002,200 09/007,553 12/14/99
6,002,202 08/684,166 12/14/99
6,002,203 08/863,889 12/14/99
6,002,209 08/922,759 12/14/99
6,002,215 09/079,194 12/14/99
6,002,216 09/105,325 12/14/99
6,002,229 08/784,136 12/14/99
6,002,231 08/909,916 12/14/99
6,002,255 08/974,477 12/14/99
6,002,258 09/059,456 12/14/99
6,002,259 09/008,969 12/14/99
6,002,266 08/448,290 12/14/99
6,002,270 08/723,272 12/14/99
6,002,290 08/997,270 12/14/99
6,002,298 09/096,412 12/14/99
6,002,300 09/138,047 12/14/99
6,002,301 08/970,645 12/14/99
6,002,303 09/027,270 12/14/99
6,002,317 09/059,451 12/14/99
6,002,335 09/026,251 12/14/99
6,002,337 09/016,554 12/14/99
6,002,338 08/929,514 12/14/99
6,002,352 08/881,690 12/14/99
6,002,353 08/978,724 12/14/99
6,002,354 09/166,571 12/14/99
6,002,360 08/813,127 12/14/99
6,002,362 09/062,976 12/14/99
6,002,366 08/727,703 12/14/99
6,002,368 08/896,317 12/14/99
6,002,369 08/977,322 12/14/99
6,002,384 08/671,514 12/14/99
6,002,395 08/742,004 12/14/99
6,002,413 08/996,481 12/14/99
6,002,418 09/060,819 12/14/99
6,002,419 08/785,101 12/14/99
6,002,430 08/863,584 12/14/99
6,002,434 08/783,214 12/14/99
6,002,437 08/893,063 12/14/99
6,002,443 08/742,983 12/14/99
6,002,451 09/215,168 12/14/99
6,002,471 08/964,295 12/14/99
6,002,475 09/014,558 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 273 |
6,002,491 08/881,260 12/14/99
6,002,496 09/013,816 12/14/99
6,002,500 08/855,643 12/14/99
6,002,501 08/885,972 12/14/99
6,002,509 08/817,618 12/14/99
6,002,510 09/061,170 12/14/99
6,002,518 09/042,970 12/14/99
6,002,520 08/843,101 12/14/99
6,002,524 08/939,842 12/14/99
6,002,533 09/121,986 12/14/99
6,002,537 08/823,251 12/14/99
6,002,542 08/904,599 12/14/99
6,002,549 08/866,984 12/14/99
6,002,550 08/896,435 12/14/99
6,002,553 08/202,991 12/14/99
6,002,556 09/009,326 12/14/99
6,002,558 08/696,294 12/14/99
6,002,564 08/982,429 12/14/99
6,002,565 09/033,454 12/14/99
6,002,566 09/116,224 12/14/99
6,002,569 09/106,520 12/14/99
6,002,571 09/176,583 12/14/99
6,002,572 09/046,536 12/14/99
6,002,583 09/016,687 12/14/99
6,002,586 09/172,736 12/14/99
6,002,588 08/984,813 12/14/99
6,002,601 09/114,556 12/14/99
6,002,605 09/030,856 12/14/99
6,002,606 09/203,121 12/14/99
6,002,609 09/111,484 12/14/99
6,002,614 08/975,919 12/14/99
6,002,618 09/190,040 12/14/99
6,002,620 09/005,098 12/14/99
6,002,628 09/170,816 12/14/99
6,002,631 08/982,534 12/14/99
6,002,640 09/075,968 12/14/99
6,002,644 09/063,019 12/14/99
6,002,653 09/034,200 12/14/99
6,002,659 08/891,219 12/14/99
6,002,661 08/991,660 12/14/99
6,002,662 08/875,104 12/14/99
6,002,664 08/806,507 12/14/99
6,002,666 08/888,692 12/14/99
6,002,686 08/736,044 12/14/99
6,002,697 09/139,214 12/14/99
6,002,701 08/771,150 12/14/99
6,002,703 09/015,488 12/14/99
6,002,704 09/008,333 12/14/99
6,002,706 09/001,231 12/14/99
6,002,719 08/577,797 12/14/99
6,002,720 08/630,590 12/14/99
6,002,727 08/951,539 12/14/99
6,002,730 08/744,458 12/14/99
6,002,734 08/898,139 12/14/99
6,002,739 09/067,663 12/14/99
6,002,752 08/786,137 12/14/99
6,002,755 09/021,111 12/14/99
6,002,756 08/844,424 12/14/99
6,002,758 08/631,387 12/14/99
6,002,761 08/277,907 12/14/99
6,002,762 08/722,709 12/14/99
6,002,765 08/988,503 12/14/99
6,002,773 09/220,227 12/14/99
6,002,783 08/998,277 12/14/99
6,002,791 08/907,736 12/14/99
6,002,799 08/377,298 12/14/99
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 274 |
6,002,802 08/736,240 12/14/99
6,002,807 08/583,923 12/14/99
6,002,816 08/977,494 12/14/99
6,002,822 09/088,512 12/14/99
6,002,825 08/983,095 12/14/99
6,002,836 08/710,974 12/14/99
6,002,856 09/203,618 12/14/99
6,002,862 08/540,625 12/14/99
6,002,868 08/775,778 12/14/99
6,002,878 08/886,505 12/14/99
6,002,881 08/932,053 12/14/99
6,002,891 09/115,512 12/14/99
6,002,901 09/110,029 12/14/99
6,002,904 08/976,249 12/14/99
6,002,919 08/875,041 12/14/99
6,002,920 09/081,155 12/14/99
6,002,924 08/778,381 12/14/99
6,002,926 08/936,650 12/14/99
6,002,928 08/812,166 12/14/99
6,002,931 08/689,662 12/14/99
6,002,935 08/862,095 12/14/99
6,002,938 08/720,312 12/14/99
6,002,946 08/843,198 12/14/99
6,002,950 08/958,678 12/14/99
6,002,962 09/059,819 12/14/99
6,002,967 08/824,563 12/14/99
6,002,969 09/129,400 12/14/99
6,002,972 09/055,834 12/14/99
6,002,986 07/792,404 12/14/99
6,002,987 08/824,467 12/14/99
6,002,990 08/951,934 12/14/99
6,003,054 09/025,258 12/14/99
6,003,055 08/865,807 12/14/99
6,003,058 08/924,288 12/14/99
6,003,063 08/654,515 12/14/99
6,003,064 08/603,913 12/14/99
6,003,067 08/880,539 12/14/99
6,003,068 08/800,673 12/14/99
6,003,086 08/863,572 12/14/99
6,003,087 08/939,724 12/14/99
6,003,096 08/950,100 12/14/99
6,003,104 09/002,014 12/14/99
6,003,105 08/963,536 12/14/99
6,003,124 08/436,769 12/14/99
6,003,134 09/000,872 12/14/99
6,003,140 08/913,406 12/14/99
6,003,142 08/988,475 12/14/99
6,003,143 08/807,347 12/14/99
6,003,147 09/109,968 12/14/99
6,003,152 08/885,107 12/14/99
PATENTS WHICH EXPIRED ON December 9, 2011
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,658,673 10/304,309 12/09/03
6,658,683 09/804,750 12/09/03
6,658,687 09/588,874 12/09/03
6,658,689 09/877,702 12/09/03
6,658,694 10/104,231 12/09/03
6,658,696 10/043,966 12/09/03
6,658,697 10/066,588 12/09/03
6,658,699 10/040,626 12/09/03
6,658,700 10/053,008 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 275 |
6,658,702 10/217,173 12/09/03
6,658,705 10/278,381 12/09/03
6,658,710 09/888,742 12/09/03
6,658,714 09/975,489 12/09/03
6,658,716 10/106,676 12/09/03
6,658,724 10/329,715 12/09/03
6,658,725 09/567,715 12/09/03
6,658,737 09/843,626 12/09/03
6,658,741 10/142,539 12/09/03
6,658,743 10/141,955 12/09/03
6,658,744 10/071,614 12/09/03
6,658,745 10/187,297 12/09/03
6,658,750 10/190,794 12/09/03
6,658,752 09/940,302 12/09/03
6,658,753 10/036,419 12/09/03
6,658,755 10/025,482 12/09/03
6,658,758 09/852,021 12/09/03
6,658,769 10/040,043 12/09/03
6,658,776 09/782,430 12/09/03
6,658,777 10/226,624 12/09/03
6,658,778 10/248,764 12/09/03
6,658,779 10/150,177 12/09/03
6,658,780 10/214,916 12/09/03
6,658,784 10/156,614 12/09/03
6,658,785 10/162,286 12/09/03
6,658,792 10/342,820 12/09/03
6,658,794 09/511,464 12/09/03
6,658,795 10/085,235 12/09/03
6,658,796 10/120,990 12/09/03
6,658,809 09/865,531 12/09/03
6,658,813 10/150,669 12/09/03
6,658,818 10/062,610 12/09/03
6,658,826 09/898,025 12/09/03
6,658,830 09/970,067 12/09/03
6,658,840 10/120,829 12/09/03
6,658,841 10/042,105 12/09/03
6,658,842 10/080,557 12/09/03
6,658,859 10/383,452 12/09/03
6,658,861 10/314,018 12/09/03
6,658,864 10/173,057 12/09/03
6,658,866 10/074,815 12/09/03
6,658,872 10/147,542 12/09/03
6,658,881 09/992,975 12/09/03
6,658,885 10/262,732 12/09/03
6,658,895 09/931,529 12/09/03
6,658,896 10/052,196 12/09/03
6,658,899 10/220,044 12/09/03
6,658,902 10/356,069 12/09/03
6,658,905 10/197,424 12/09/03
6,658,908 10/223,753 12/09/03
6,658,919 10/221,460 12/09/03
6,658,921 10/104,971 12/09/03
6,658,926 10/245,600 12/09/03
6,658,932 09/927,013 12/09/03
6,658,935 09/987,730 12/09/03
6,658,939 09/768,651 12/09/03
6,658,940 09/987,480 12/09/03
6,658,951 10/074,588 12/09/03
6,658,952 10/087,666 12/09/03
6,658,961 10/027,483 12/09/03
6,658,963 09/842,940 12/09/03
6,658,964 09/973,909 12/09/03
6,658,974 09/950,990 12/09/03
6,658,976 09/771,775 12/09/03
6,658,978 09/418,565 12/09/03
6,658,979 09/744,657 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 276 |
6,658,982 10/103,574 12/09/03
6,658,984 10/193,147 12/09/03
6,658,987 09/926,569 12/09/03
6,658,988 09/979,463 12/09/03
6,658,991 09/759,399 12/09/03
6,658,995 10/403,434 12/09/03
6,659,000 10/129,369 12/09/03
6,659,004 09/906,174 12/09/03
6,659,007 09/974,636 12/09/03
6,659,009 10/208,824 12/09/03
6,659,010 10/145,397 12/09/03
6,659,022 10/144,309 12/09/03
6,659,027 10/206,422 12/09/03
6,659,032 10/272,260 12/09/03
6,659,037 10/241,867 12/09/03
6,659,040 10/147,625 12/09/03
6,659,042 09/878,725 12/09/03
6,659,045 10/271,584 12/09/03
6,659,046 10/281,245 12/09/03
6,659,049 10/081,666 12/09/03
6,659,050 10/092,334 12/09/03
6,659,057 10/167,143 12/09/03
6,659,059 09/717,597 12/09/03
6,659,067 10/246,973 12/09/03
6,659,069 09/791,893 12/09/03
6,659,072 10/026,076 12/09/03
6,659,075 09/936,573 12/09/03
6,659,084 10/030,707 12/09/03
6,659,085 10/115,006 12/09/03
6,659,090 10/043,412 12/09/03
6,659,092 10/028,633 12/09/03
6,659,096 10/052,483 12/09/03
6,659,099 10/195,435 12/09/03
6,659,100 10/302,384 12/09/03
6,659,102 10/205,249 12/09/03
6,659,107 10/099,755 12/09/03
6,659,109 10/003,444 12/09/03
6,659,112 10/197,324 12/09/03
6,659,116 10/319,758 12/09/03
6,659,121 10/069,998 12/09/03
6,659,122 10/238,163 12/09/03
6,659,126 09/964,176 12/09/03
6,659,132 09/812,239 12/09/03
6,659,137 09/881,571 12/09/03
6,659,145 10/051,076 12/09/03
6,659,149 10/161,302 12/09/03
6,659,151 09/971,809 12/09/03
6,659,155 10/118,520 12/09/03
6,659,158 09/446,246 12/09/03
6,659,162 10/060,589 12/09/03
6,659,169 09/890,776 12/09/03
6,659,188 10/061,912 12/09/03
6,659,189 10/081,572 12/09/03
6,659,191 09/890,887 12/09/03
6,659,193 10/185,692 12/09/03
6,659,201 09/881,652 12/09/03
6,659,212 09/849,251 12/09/03
6,659,214 10/186,130 12/09/03
6,659,215 09/763,966 12/09/03
6,659,216 10/122,396 12/09/03
6,659,218 10/100,964 12/09/03
6,659,226 09/922,761 12/09/03
6,659,230 09/889,028 12/09/03
6,659,231 10/095,839 12/09/03
6,659,234 10/287,267 12/09/03
6,659,246 10/120,110 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 277 |
6,659,250 10/036,706 12/09/03
6,659,253 10/016,591 12/09/03
6,659,254 10/078,073 12/09/03
6,659,257 10/156,024 12/09/03
6,659,262 09/752,720 12/09/03
6,659,263 09/820,653 12/09/03
6,659,269 09/626,586 12/09/03
6,659,274 10/023,042 12/09/03
6,659,279 10/102,529 12/09/03
6,659,285 10/035,984 12/09/03
6,659,286 09/972,837 12/09/03
6,659,288 09/858,391 12/09/03
6,659,293 09/346,785 12/09/03
6,659,313 10/205,875 12/09/03
6,659,320 09/858,524 12/09/03
6,659,321 09/791,909 12/09/03
6,659,322 09/980,501 12/09/03
6,659,330 10/084,416 12/09/03
6,659,331 10/086,003 12/09/03
6,659,336 09/819,471 12/09/03
6,659,356 10/145,654 12/09/03
6,659,357 10/181,995 12/09/03
6,659,360 10/065,855 12/09/03
6,659,361 10/376,528 12/09/03
6,659,362 10/095,719 12/09/03
6,659,363 10/263,557 12/09/03
6,659,368 09/952,411 12/09/03
6,659,380 10/197,829 12/09/03
6,659,381 09/701,784 12/09/03
6,659,383 10/135,565 12/09/03
6,659,393 09/980,948 12/09/03
6,659,398 09/943,654 12/09/03
6,659,399 10/303,472 12/09/03
6,659,403 10/200,456 12/09/03
6,659,406 10/270,548 12/09/03
6,659,407 10/095,826 12/09/03
6,659,410 10/252,704 12/09/03
6,659,412 10/102,370 12/09/03
6,659,413 10/309,314 12/09/03
6,659,414 09/663,178 12/09/03
6,659,415 10/079,105 12/09/03
6,659,420 10/101,587 12/09/03
6,659,421 09/623,282 12/09/03
6,659,422 10/174,326 12/09/03
6,659,423 10/019,503 12/09/03
6,659,424 10/068,206 12/09/03
6,659,434 10/044,617 12/09/03
6,659,446 09/944,514 12/09/03
6,659,452 10/132,230 12/09/03
6,659,456 10/053,971 12/09/03
6,659,465 10/120,997 12/09/03
6,659,467 10/000,286 12/09/03
6,659,469 10/360,663 12/09/03
6,659,470 10/041,380 12/09/03
6,659,475 09/800,072 12/09/03
6,659,481 10/012,781 12/09/03
6,659,482 10/038,226 12/09/03
6,659,485 10/072,945 12/09/03
6,659,489 09/984,008 12/09/03
6,659,491 09/778,414 12/09/03
6,659,492 09/999,485 12/09/03
6,659,494 09/774,231 12/09/03
6,659,495 09/990,501 12/09/03
6,659,497 10/152,237 12/09/03
6,659,502 10/094,556 12/09/03
6,659,506 09/684,429 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 278 |
6,659,514 09/848,908 12/09/03
6,659,517 09/868,186 12/09/03
6,659,519 10/112,550 12/09/03
6,659,526 10/156,311 12/09/03
6,659,527 10/246,139 12/09/03
6,659,528 10/246,159 12/09/03
6,659,529 10/081,175 12/09/03
6,659,532 10/236,974 12/09/03
6,659,533 10/237,919 12/09/03
6,659,534 09/930,739 12/09/03
6,659,536 10/354,871 12/09/03
6,659,546 10/096,882 12/09/03
6,659,550 10/233,600 12/09/03
6,659,551 10/256,750 12/09/03
6,659,557 10/075,923 12/09/03
6,659,558 10/123,209 12/09/03
6,659,560 10/340,742 12/09/03
6,659,571 10/078,304 12/09/03
6,659,576 10/120,061 12/09/03
6,659,584 09/215,186 12/09/03
6,659,588 10/222,875 12/09/03
6,659,592 09/932,123 12/09/03
6,659,594 10/164,399 12/09/03
6,659,597 10/162,872 12/09/03
6,659,598 09/828,606 12/09/03
6,659,604 10/008,777 12/09/03
6,659,607 10/056,545 12/09/03
6,659,628 09/951,779 12/09/03
6,659,635 10/299,771 12/09/03
6,659,640 09/844,743 12/09/03
6,659,641 09/968,993 12/09/03
6,659,644 10/051,896 12/09/03
6,659,648 10/164,894 12/09/03
6,659,654 10/075,358 12/09/03
6,659,664 09/995,354 12/09/03
6,659,675 10/266,014 12/09/03
6,659,683 09/486,421 12/09/03
6,659,684 09/856,705 12/09/03
6,659,685 09/487,871 12/09/03
6,659,686 10/314,099 12/09/03
6,659,693 10/154,181 12/09/03
6,659,696 09/996,712 12/09/03
6,659,697 10/146,559 12/09/03
6,659,702 09/809,209 12/09/03
6,659,706 09/824,011 12/09/03
6,659,710 10/102,107 12/09/03
6,659,717 10/192,646 12/09/03
6,659,720 10/198,157 12/09/03
6,659,727 09/947,278 12/09/03
6,659,732 10/040,045 12/09/03
6,659,735 10/059,832 12/09/03
6,659,736 09/921,985 12/09/03
6,659,737 09/777,391 12/09/03
6,659,738 10/074,242 12/09/03
6,659,741 09/967,580 12/09/03
6,659,744 09/836,396 12/09/03
6,659,748 10/019,796 12/09/03
6,659,754 10/118,182 12/09/03
6,659,755 09/173,754 12/09/03
6,659,763 10/021,211 12/09/03
6,659,765 10/321,639 12/09/03
6,659,766 09/952,576 12/09/03
6,659,767 09/952,724 12/09/03
6,659,774 10/152,600 12/09/03
6,659,775 10/078,040 12/09/03
6,659,776 09/749,321 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 279 |
6,659,784 09/857,101 12/09/03
6,659,789 10/191,750 12/09/03
6,659,790 10/245,188 12/09/03
6,659,796 10/177,511 12/09/03
6,659,799 10/083,107 12/09/03
6,659,800 10/216,360 12/09/03
6,659,801 10/113,126 12/09/03
6,659,802 10/331,760 12/09/03
6,659,803 10/200,744 12/09/03
6,659,804 10/113,128 12/09/03
6,659,810 10/159,983 12/09/03
6,659,818 10/074,894 12/09/03
6,659,821 10/216,924 12/09/03
6,659,829 10/043,354 12/09/03
6,659,835 10/410,427 12/09/03
6,659,839 10/139,249 12/09/03
6,659,843 10/075,109 12/09/03
6,659,849 09/705,965 12/09/03
6,659,852 10/212,916 12/09/03
6,659,858 10/045,012 12/09/03
6,659,861 09/579,222 12/09/03
6,659,865 09/582,559 12/09/03
6,659,870 10/367,209 12/09/03
6,659,871 10/194,807 12/09/03
6,659,877 10/021,222 12/09/03
6,659,879 09/976,737 12/09/03
6,659,882 09/797,357 12/09/03
6,659,891 09/781,185 12/09/03
6,659,892 10/036,017 12/09/03
6,659,897 09/972,134 12/09/03
6,659,901 09/821,688 12/09/03
6,659,906 10/114,208 12/09/03
6,659,907 09/940,875 12/09/03
6,659,913 10/032,993 12/09/03
6,659,914 10/033,344 12/09/03
6,659,915 09/733,993 12/09/03
6,659,917 10/140,964 12/09/03
6,659,920 09/338,306 12/09/03
6,659,930 10/197,648 12/09/03
6,659,944 10/077,693 12/09/03
6,659,950 09/835,305 12/09/03
6,659,952 10/139,918 12/09/03
6,659,960 10/126,298 12/09/03
6,659,963 10/056,811 12/09/03
6,659,966 10/002,325 12/09/03
6,659,972 09/776,526 12/09/03
6,659,979 09/970,289 12/09/03
6,659,996 09/405,933 12/09/03
6,659,997 09/699,010 12/09/03
6,659,999 09/587,156 12/09/03
6,660,001 09/765,968 12/09/03
6,660,009 10/144,707 12/09/03
6,660,011 10/245,116 12/09/03
6,660,018 09/846,139 12/09/03
6,660,025 09/960,443 12/09/03
6,660,046 09/889,502 12/09/03
6,660,047 10/138,199 12/09/03
6,660,049 08/741,456 12/09/03
6,660,060 10/045,932 12/09/03
6,660,070 09/998,146 12/09/03
6,660,074 09/714,069 12/09/03
6,660,077 09/902,045 12/09/03
6,660,079 10/085,293 12/09/03
6,660,087 10/305,578 12/09/03
6,660,091 10/092,301 12/09/03
6,660,093 09/863,383 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 280 |
6,660,096 09/735,627 12/09/03
6,660,099 10/091,891 12/09/03
6,660,110 10/118,625 12/09/03
6,660,123 10/047,399 12/09/03
6,660,127 10/075,223 12/09/03
6,660,132 09/673,268 12/09/03
6,660,146 09/788,458 12/09/03
6,660,149 09/530,118 12/09/03
6,660,150 09/834,462 12/09/03
6,660,156 10/123,567 12/09/03
6,660,165 09/702,978 12/09/03
6,660,170 10/290,430 12/09/03
6,660,173 10/153,195 12/09/03
6,660,174 09/960,891 12/09/03
6,660,193 09/970,141 12/09/03
6,660,194 09/705,754 12/09/03
6,660,198 09/664,624 12/09/03
6,660,216 09/857,886 12/09/03
6,660,219 09/980,245 12/09/03
6,660,234 10/150,290 12/09/03
6,660,235 09/518,469 12/09/03
6,660,238 10/316,863 12/09/03
6,660,239 10/045,298 12/09/03
6,660,244 09/810,621 12/09/03
6,660,251 09/890,294 12/09/03
6,660,258 09/169,844 12/09/03
6,660,263 09/858,871 12/09/03
6,660,265 09/688,492 12/09/03
6,660,266 09/692,586 12/09/03
6,660,267 08/304,602 12/09/03
6,660,269 09/811,007 12/09/03
6,660,279 10/347,046 12/09/03
6,660,284 10/118,453 12/09/03
6,660,286 09/317,499 12/09/03
6,660,288 09/806,773 12/09/03
6,660,289 10/030,764 12/09/03
6,660,298 09/626,941 12/09/03
6,660,304 10/080,721 12/09/03
6,660,306 10/125,165 12/09/03
6,660,307 09/835,686 12/09/03
6,660,309 09/954,723 12/09/03
6,660,310 09/860,240 12/09/03
6,660,317 09/762,415 12/09/03
6,660,318 10/049,748 12/09/03
6,660,323 10/134,742 12/09/03
6,660,324 10/123,765 12/09/03
6,660,325 10/032,857 12/09/03
6,660,326 09/912,426 12/09/03
6,660,337 10/145,148 12/09/03
6,660,342 09/636,222 12/09/03
6,660,343 09/966,772 12/09/03
6,660,344 09/969,700 12/09/03
6,660,350 09/493,907 12/09/03
6,660,352 09/757,941 12/09/03
6,660,366 09/127,139 12/09/03
6,660,384 09/850,735 12/09/03
6,660,397 10/080,228 12/09/03
6,660,398 09/581,685 12/09/03
6,660,400 09/618,146 12/09/03
6,660,402 10/242,432 12/09/03
6,660,404 09/844,403 12/09/03
6,660,407 10/031,748 12/09/03
6,660,412 09/809,546 12/09/03
6,660,414 09/299,805 12/09/03
6,660,415 09/837,748 12/09/03
6,660,420 09/660,291 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 281 |
6,660,424 09/763,263 12/09/03
6,660,429 10/051,789 12/09/03
6,660,433 09/734,568 12/09/03
6,660,452 10/085,257 12/09/03
6,660,455 09/812,688 12/09/03
6,660,457 09/831,892 12/09/03
6,660,462 09/543,560 12/09/03
6,660,463 10/243,866 12/09/03
6,660,464 09/596,464 12/09/03
6,660,465 10/157,066 12/09/03
6,660,468 09/413,958 12/09/03
6,660,478 09/959,433 12/09/03
6,660,497 09/696,115 12/09/03
6,660,500 09/755,836 12/09/03
6,660,502 09/873,253 12/09/03
6,660,507 09/934,903 12/09/03
6,660,508 10/187,108 12/09/03
6,660,520 09/092,218 12/09/03
6,660,523 09/954,905 12/09/03
6,660,526 10/029,542 12/09/03
6,660,536 10/080,383 12/09/03
6,660,544 10/287,526 12/09/03
6,660,546 10/342,361 12/09/03
6,660,553 10/232,416 12/09/03
6,660,557 09/818,638 12/09/03
6,660,561 10/202,185 12/09/03
6,660,563 10/159,150 12/09/03
6,660,564 10/057,368 12/09/03
6,660,574 08/171,769 12/09/03
6,660,598 10/084,550 12/09/03
6,660,601 09/938,527 12/09/03
6,660,606 09/963,449 12/09/03
6,660,611 10/010,842 12/09/03
6,660,614 09/849,127 12/09/03
6,660,617 09/899,175 12/09/03
6,660,632 10/037,176 12/09/03
6,660,646 09/668,250 12/09/03
6,660,664 09/541,091 12/09/03
6,660,668 09/468,322 12/09/03
6,660,675 09/941,502 12/09/03
6,660,676 10/073,977 12/09/03
6,660,685 09/509,949 12/09/03
6,660,688 09/867,557 12/09/03
6,660,692 10/018,395 12/09/03
6,660,699 09/967,280 12/09/03
6,660,703 10/321,734 12/09/03
6,660,705 10/049,547 12/09/03
6,660,711 09/980,799 12/09/03
6,660,715 09/443,716 12/09/03
6,660,735 10/164,816 12/09/03
6,660,736 10/387,950 12/09/03
6,660,738 09/906,983 12/09/03
6,660,739 09/857,748 12/09/03
6,660,741 10/102,593 12/09/03
6,660,743 09/890,344 12/09/03
6,660,750 09/784,633 12/09/03
6,660,753 10/076,618 12/09/03
6,660,755 10/212,386 12/09/03
6,660,756 10/096,218 12/09/03
6,660,762 10/146,607 12/09/03
6,660,770 09/876,502 12/09/03
6,660,773 10/094,050 12/09/03
6,660,777 09/942,188 12/09/03
6,660,795 09/804,919 12/09/03
6,660,800 10/272,729 12/09/03
6,660,810 09/674,375 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 282 |
6,660,823 09/709,783 12/09/03
6,660,826 10/031,099 12/09/03
6,660,830 09/155,165 12/09/03
6,660,836 09/579,112 12/09/03
6,660,837 08/685,852 12/09/03
6,660,839 09/314,844 12/09/03
6,660,840 09/398,169 12/09/03
6,660,848 10/117,087 12/09/03
6,660,851 09/807,897 12/09/03
6,660,857 10/210,878 12/09/03
6,660,859 10/022,043 12/09/03
6,660,871 10/062,641 12/09/03
6,660,879 10/039,868 12/09/03
6,660,884 10/387,460 12/09/03
6,660,887 10/327,765 12/09/03
6,660,888 09/978,691 12/09/03
6,660,890 10/018,365 12/09/03
6,660,891 09/853,032 12/09/03
6,660,892 10/360,302 12/09/03
6,660,893 09/874,786 12/09/03
6,660,899 09/783,705 12/09/03
6,660,901 10/082,937 12/09/03
6,660,906 09/522,775 12/09/03
6,660,909 09/644,907 12/09/03
6,660,925 09/872,394 12/09/03
6,660,929 10/052,025 12/09/03
6,660,932 10/161,930 12/09/03
6,660,937 10/289,653 12/09/03
6,660,941 10/080,313 12/09/03
6,660,951 10/270,566 12/09/03
6,660,953 10/073,779 12/09/03
6,660,957 09/958,649 12/09/03
6,660,959 10/301,053 12/09/03
6,660,961 10/058,166 12/09/03
6,660,962 10/208,227 12/09/03
6,660,965 10/149,777 12/09/03
6,660,969 10/202,493 12/09/03
6,660,972 09/959,462 12/09/03
6,660,975 10/223,226 12/09/03
6,660,993 09/987,110 12/09/03
6,660,994 09/963,948 12/09/03
6,660,995 09/888,799 12/09/03
6,660,998 09/625,007 12/09/03
6,660,999 09/965,900 12/09/03
6,661,003 10/224,637 12/09/03
6,661,005 09/830,998 12/09/03
6,661,006 09/888,776 12/09/03
6,661,007 09/696,255 12/09/03
6,661,012 09/726,782 12/09/03
6,661,033 10/331,924 12/09/03
6,661,035 09/989,456 12/09/03
6,661,056 10/168,243 12/09/03
6,661,065 09/781,157 12/09/03
6,661,066 09/401,849 12/09/03
6,661,072 10/158,870 12/09/03
6,661,075 10/053,985 12/09/03
6,661,091 10/298,927 12/09/03
6,661,097 10/287,155 12/09/03
6,661,113 09/944,043 12/09/03
6,661,116 10/009,569 12/09/03
6,661,117 10/104,027 12/09/03
6,661,122 10/020,142 12/09/03
6,661,125 09/926,430 12/09/03
6,661,127 10/028,117 12/09/03
6,661,135 09/834,595 12/09/03
6,661,139 09/720,845 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 283 |
6,661,142 10/038,072 12/09/03
6,661,145 09/937,802 12/09/03
6,661,150 10/154,336 12/09/03
6,661,156 09/830,767 12/09/03
6,661,158 10/021,435 12/09/03
6,661,163 10/137,327 12/09/03
6,661,166 10/163,146 12/09/03
6,661,170 10/212,728 12/09/03
6,661,174 09/969,903 12/09/03
6,661,176 10/014,127 12/09/03
6,661,178 09/723,221 12/09/03
6,661,179 10/227,346 12/09/03
6,661,184 10/245,359 12/09/03
6,661,188 10/351,220 12/09/03
6,661,189 09/982,970 12/09/03
6,661,202 10/209,913 12/09/03
6,661,214 09/964,741 12/09/03
6,661,215 10/135,380 12/09/03
6,661,219 09/948,225 12/09/03
6,661,223 10/041,282 12/09/03
6,661,227 10/177,459 12/09/03
6,661,228 09/746,412 12/09/03
6,661,231 09/856,467 12/09/03
6,661,279 10/101,729 12/09/03
6,661,281 09/995,639 12/09/03
6,661,289 10/176,063 12/09/03
6,661,294 10/122,307 12/09/03
6,661,298 10/153,427 12/09/03
6,661,316 10/308,612 12/09/03
6,661,317 10/099,221 12/09/03
6,661,321 10/232,939 12/09/03
6,661,331 10/165,659 12/09/03
6,661,333 09/412,685 12/09/03
6,661,335 09/406,092 12/09/03
6,661,339 10/134,049 12/09/03
6,661,341 09/985,801 12/09/03
6,661,344 09/813,753 12/09/03
6,661,351 09/618,257 12/09/03
6,661,354 10/150,571 12/09/03
6,661,366 09/882,348 12/09/03
6,661,367 10/063,048 12/09/03
6,661,375 10/076,088 12/09/03
6,661,381 10/136,288 12/09/03
6,661,382 09/961,324 12/09/03
6,661,384 10/167,417 12/09/03
6,661,386 10/108,349 12/09/03
6,661,391 10/048,062 12/09/03
6,661,396 09/840,750 12/09/03
6,661,400 09/177,571 12/09/03
6,661,405 09/574,499 12/09/03
6,661,416 09/745,582 12/09/03
6,661,420 09/847,409 12/09/03
6,661,431 09/686,359 12/09/03
6,661,434 09/548,696 12/09/03
6,661,442 10/315,063 12/09/03
6,661,444 10/134,488 12/09/03
6,661,456 09/303,190 12/09/03
6,661,470 09/381,637 12/09/03
6,661,473 09/631,570 12/09/03
6,661,486 09/039,303 12/09/03
6,661,506 09/934,151 12/09/03
6,661,510 09/743,511 12/09/03
6,661,512 10/076,316 12/09/03
6,661,513 09/991,038 12/09/03
6,661,522 09/893,636 12/09/03
6,661,536 08/648,386 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 284 |
6,661,545 09/318,994 12/09/03
6,661,549 09/443,083 12/09/03
6,661,552 10/234,090 12/09/03
6,661,553 10/216,780 12/09/03
6,661,555 10/166,393 12/09/03
6,661,563 09/771,688 12/09/03
6,661,586 09/960,518 12/09/03
6,661,592 10/327,577 12/09/03
6,661,602 09/950,328 12/09/03
6,661,604 09/884,309 12/09/03
6,661,607 10/040,531 12/09/03
6,661,610 09/580,544 12/09/03
6,661,624 09/667,136 12/09/03
6,661,629 09/839,281 12/09/03
6,661,636 10/100,578 12/09/03
6,661,642 10/268,433 12/09/03
6,661,648 09/898,647 12/09/03
6,661,674 09/915,682 12/09/03
6,661,675 10/048,262 12/09/03
6,661,700 10/118,125 12/09/03
6,661,703 10/157,927 12/09/03
6,661,731 09/962,159 12/09/03
6,661,734 10/193,223 12/09/03
6,661,739 10/161,993 12/09/03
6,661,741 10/165,922 12/09/03
6,661,747 09/938,062 12/09/03
6,661,758 10/117,110 12/09/03
6,661,763 10/318,240 12/09/03
6,661,764 09/870,997 12/09/03
6,661,767 10/248,705 12/09/03
6,661,777 09/280,675 12/09/03
6,661,796 09/467,759 12/09/03
6,661,798 08/956,586 12/09/03
6,661,824 09/784,016 12/09/03
6,661,839 09/194,220 12/09/03
6,661,845 09/602,316 12/09/03
6,661,854 09/749,543 12/09/03
6,661,864 09/929,119 12/09/03
6,661,865 09/790,142 12/09/03
6,661,868 10/123,756 12/09/03
6,661,876 10/208,646 12/09/03
6,661,879 09/711,280 12/09/03
6,661,885 09/472,041 12/09/03
6,661,890 09/528,141 12/09/03
6,661,893 09/376,541 12/09/03
6,661,898 10/067,830 12/09/03
6,661,909 09/912,117 12/09/03
6,661,911 09/584,713 12/09/03
6,661,916 09/731,837 12/09/03
6,661,922 09/598,530 12/09/03
6,661,923 09/403,719 12/09/03
6,661,925 09/533,283 12/09/03
6,661,937 09/945,163 12/09/03
6,661,945 09/855,056 12/09/03
6,661,949 09/795,781 12/09/03
6,661,952 09/849,806 12/09/03
6,661,970 10/283,282 12/09/03
6,661,971 10/106,987 12/09/03
6,661,976 09/477,816 12/09/03
6,661,982 10/160,172 12/09/03
6,661,983 10/028,445 12/09/03
6,661,985 10/086,726 12/09/03
6,661,992 10/270,052 12/09/03
6,662,005 09/544,668 12/09/03
6,662,036 10/208,283 12/09/03
6,662,039 09/336,026 12/09/03
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 285 |
6,662,057 09/582,547 12/09/03
6,662,062 09/687,393 12/09/03
6,662,065 09/809,085 12/09/03
6,662,069 09/579,316 12/09/03
6,662,072 10/184,392 12/09/03
6,662,075 09/943,328 12/09/03
6,662,081 09/590,394 12/09/03
6,662,083 10/075,852 12/09/03
6,662,084 10/075,288 12/09/03
6,662,090 10/099,908 12/09/03
6,662,093 10/052,152 12/09/03
6,662,095 10/018,410 12/09/03
6,662,097 10/244,322 12/09/03
6,662,130 10/167,448 12/09/03
6,662,131 09/988,489 12/09/03
6,662,141 09/938,616 12/09/03
6,662,142 09/994,734 12/09/03
6,662,144 09/624,865 12/09/03
6,662,151 09/403,939 12/09/03
6,662,152 10/189,536 12/09/03
6,662,162 09/942,097 12/09/03
6,662,164 09/081,857 12/09/03
6,662,167 09/461,962 12/09/03
6,662,176 09/851,067 12/09/03
6,662,180 09/310,512 12/09/03
6,662,182 09/240,268 12/09/03
6,662,184 09/668,776 12/09/03
6,662,207 10/236,959 12/09/03
6,662,283 09/567,062 12/09/03
6,662,284 09/785,239 12/09/03
6,662,291 10/190,017 12/09/03
6,662,295 09/151,055 12/09/03
6,662,313 09/563,059 12/09/03
6,662,325 09/680,238 12/09/03
6,662,328 09/598,560 12/09/03
6,662,351 09/949,698 12/09/03
6,662,353 10/084,349 12/09/03
6,662,359 09/620,725 12/09/03
6,662,361 09/483,203 12/09/03
6,662,362 09/611,373 12/09/03
PATENTS WHICH EXPIRED ON December 11, 2011
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
7,305,716 11/213,452 12/11/07
7,305,717 11/255,662 12/11/07
7,305,720 11/044,215 12/11/07
7,305,723 11/210,356 12/11/07
7,305,741 11/308,047 12/11/07
7,305,749 10/911,043 12/11/07
7,305,758 11/080,637 12/11/07
7,305,782 11/376,037 12/11/07
7,305,783 11/075,933 12/11/07
7,305,791 11/347,938 12/11/07
7,305,793 11/415,503 12/11/07
7,305,800 10/823,028 12/11/07
7,305,802 11/033,239 12/11/07
7,305,803 10/629,151 12/11/07
7,305,804 10/573,102 12/11/07
7,305,809 11/106,647 12/11/07
7,305,812 11/043,435 12/11/07
7,305,834 11/040,671 12/11/07
7,305,835 10/500,786 12/11/07
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 286 |
7,305,838 11/098,950 12/11/07
7,305,839 10/880,807 12/11/07
7,305,846 10/551,428 12/11/07
7,305,848 11/243,577 12/11/07
7,305,864 10/595,531 12/11/07
7,305,867 11/369,249 12/11/07
7,305,887 11/474,815 12/11/07
7,305,901 10/499,494 12/11/07
7,305,907 11/451,837 12/11/07
7,305,909 11/406,102 12/11/07
7,305,911 10/968,267 12/11/07
7,305,918 10/920,711 12/11/07
7,305,924 10/960,323 12/11/07
7,305,931 11/149,619 12/11/07
7,305,932 10/761,523 12/11/07
7,305,937 11/260,953 12/11/07
7,305,946 11/248,150 12/11/07
7,305,956 11/405,785 12/11/07
7,305,957 11/272,750 12/11/07
7,305,962 11/091,594 12/11/07
7,305,971 11/334,748 12/11/07
7,305,978 11/518,308 12/11/07
7,305,982 10/871,859 12/11/07
7,305,990 11/014,848 12/11/07
7,305,994 10/773,140 12/11/07
7,305,998 11/639,671 12/11/07
7,306,003 10/872,927 12/11/07
7,306,005 11/300,656 12/11/07
7,306,036 10/865,650 12/11/07
7,306,050 11/442,360 12/11/07
7,306,055 11/069,783 12/11/07
7,306,072 10/519,830 12/11/07
7,306,074 10/262,373 12/11/07
7,306,075 11/104,584 12/11/07
7,306,086 10/711,588 12/11/07
7,306,094 11/119,674 12/11/07
7,306,097 11/094,058 12/11/07
7,306,098 11/005,372 12/11/07
7,306,099 10/930,670 12/11/07
7,306,100 10/743,528 12/11/07
7,306,101 10/938,655 12/11/07
7,306,102 11/076,508 12/11/07
7,306,103 10/931,448 12/11/07
7,306,109 10/090,574 12/11/07
7,306,127 10/920,941 12/11/07
7,306,128 11/062,192 12/11/07
7,306,146 11/236,083 12/11/07
7,306,180 11/006,647 12/11/07
7,306,182 11/039,957 12/11/07
7,306,185 11/170,680 12/11/07
7,306,188 10/715,243 12/11/07
7,306,193 11/171,883 12/11/07
7,306,196 11/442,338 12/11/07
7,306,209 11/169,067 12/11/07
7,306,218 10/798,300 12/11/07
7,306,223 11/476,168 12/11/07
7,306,224 10/882,161 12/11/07
7,306,231 10/991,006 12/11/07
7,306,242 10/379,405 12/11/07
7,306,244 11/153,568 12/11/07
7,306,246 11/335,896 12/11/07
7,306,249 11/223,995 12/11/07
7,306,254 11/195,507 12/11/07
7,306,258 11/015,026 12/11/07
7,306,268 10/960,217 12/11/07
7,306,289 10/998,241 12/11/07
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 287 |
7,306,335 10/809,412 12/11/07
7,306,344 10/458,390 12/11/07
7,306,349 11/077,682 12/11/07
7,306,350 11/125,091 12/11/07
7,306,351 11/304,949 12/11/07
7,306,354 11/133,192 12/11/07
7,306,358 11/344,588 12/11/07
7,306,363 10/768,846 12/11/07
7,306,367 10/052,351 12/11/07
7,306,368 11/480,837 12/11/07
7,306,382 11/329,413 12/11/07
7,306,391 10/952,617 12/11/07
7,306,398 11/029,468 12/11/07
7,306,399 11/441,664 12/11/07
7,306,401 11/352,130 12/11/07
7,306,403 11/406,785 12/11/07
7,306,406 11/358,471 12/11/07
7,306,416 11/494,152 12/11/07
7,306,417 11/527,177 12/11/07
7,306,421 10/712,016 12/11/07
7,306,426 10/783,147 12/11/07
7,306,443 10/541,023 12/11/07
7,306,469 11/695,184 12/11/07
7,306,470 11/532,614 12/11/07
7,306,473 11/142,016 12/11/07
7,306,480 11/309,268 12/11/07
7,306,487 11/594,243 12/11/07
7,306,488 11/247,082 12/11/07
7,306,494 10/566,865 12/11/07
7,306,500 11/000,669 12/11/07
7,306,515 10/270,621 12/11/07
7,306,516 10/810,255 12/11/07
7,306,523 10/941,086 12/11/07
7,306,530 11/183,424 12/11/07
7,306,544 11/016,772 12/11/07
7,306,550 11/415,499 12/11/07
7,306,562 10/831,481 12/11/07
7,306,563 10/375,686 12/11/07
7,306,569 11/169,963 12/11/07
7,306,570 10/799,806 12/11/07
7,306,580 10/414,939 12/11/07
7,306,612 10/683,638 12/11/07
7,306,615 10/451,019 12/11/07
7,306,627 10/052,889 12/11/07
7,306,634 10/440,996 12/11/07
7,306,635 09/733,602 12/11/07
7,306,638 10/931,846 12/11/07
7,306,642 10/783,497 12/11/07
7,306,643 11/491,443 12/11/07
7,306,651 10/504,501 12/11/07
7,306,657 10/973,286 12/11/07
7,306,669 11/621,661 12/11/07
7,306,671 10/784,915 12/11/07
7,306,673 10/971,315 12/11/07
7,306,674 10/864,768 12/11/07
7,306,680 10/658,800 12/11/07
7,306,685 11/467,253 12/11/07
7,306,689 10/994,146 12/11/07
7,306,712 10/144,835 12/11/07
7,306,726 11/064,902 12/11/07
7,306,728 10/806,335 12/11/07
7,306,738 10/477,092 12/11/07
7,306,741 11/003,681 12/11/07
7,306,747 10/355,072 12/11/07
7,306,759 10/279,411 12/11/07
7,306,761 10/492,115 12/11/07
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 288 |
7,306,763 10/928,629 12/11/07
7,306,766 10/849,141 12/11/07
7,306,768 10/783,988 12/11/07
7,306,769 10/964,248 12/11/07
7,306,771 10/660,707 12/11/07
7,306,782 10/366,569 12/11/07
7,306,789 10/699,895 12/11/07
7,306,791 10/317,011 12/11/07
7,306,797 10/416,203 12/11/07
7,306,798 10/504,802 12/11/07
7,306,804 10/673,671 12/11/07
7,306,816 11/090,508 12/11/07
7,306,834 10/258,522 12/11/07
7,306,840 10/484,019 12/11/07
7,306,842 10/542,305 12/11/07
7,306,846 11/207,209 12/11/07
7,306,851 10/739,361 12/11/07
7,306,853 11/314,307 12/11/07
7,306,855 10/801,169 12/11/07
7,306,862 10/704,394 12/11/07
7,306,867 10/616,537 12/11/07
7,306,869 10/726,162 12/11/07
7,306,885 11/505,372 12/11/07
7,306,892 10/718,487 12/11/07
7,306,895 10/828,472 12/11/07
7,306,897 11/049,349 12/11/07
7,306,900 11/529,522 12/11/07
7,306,903 09/613,177 12/11/07
7,306,913 10/741,601 12/11/07
7,306,922 10/380,492 12/11/07
7,306,938 10/683,482 12/11/07
7,306,990 10/535,941 12/11/07
7,307,016 11/448,034 12/11/07
7,307,028 10/821,843 12/11/07
7,307,034 11/550,823 12/11/07
7,307,054 11/039,625 12/11/07
7,307,058 10/715,895 12/11/07
7,307,072 11/533,535 12/11/07
7,307,078 11/523,701 12/11/07
7,307,080 10/772,235 12/11/07
7,307,082 10/839,323 12/11/07
7,307,083 11/759,704 12/11/07
7,307,084 10/551,049 12/11/07
7,307,085 10/567,314 12/11/07
7,307,089 11/493,461 12/11/07
7,307,096 10/146,747 12/11/07
7,307,097 10/490,921 12/11/07
7,307,102 10/390,032 12/11/07
7,307,103 10/641,687 12/11/07
7,307,113 10/477,341 12/11/07
7,307,130 11/081,428 12/11/07
7,307,138 11/036,635 12/11/07
7,307,143 09/587,574 12/11/07
7,307,158 10/508,694 12/11/07
7,307,167 10/509,802 12/11/07
7,307,170 10/467,041 12/11/07
7,307,174 10/528,612 12/11/07
7,307,186 10/917,463 12/11/07
7,307,203 11/235,518 12/11/07
7,307,207 11/548,221 12/11/07
7,307,230 11/397,761 12/11/07
7,307,244 11/356,541 12/11/07
7,307,248 10/707,376 12/11/07
7,307,249 11/238,410 12/11/07
7,307,257 10/499,794 12/11/07
7,307,264 10/513,544 12/11/07
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 289 |
7,307,276 10/641,524 12/11/07
7,307,289 11/212,562 12/11/07
7,307,339 10/960,099 12/11/07
7,307,359 10/949,804 12/11/07
7,307,369 11/212,504 12/11/07
7,307,378 11/046,399 12/11/07
7,307,383 10/952,524 12/11/07
7,307,384 10/517,455 12/11/07
7,307,393 11/244,816 12/11/07
7,307,411 11/642,479 12/11/07
7,307,413 10/826,263 12/11/07
7,307,415 10/367,459 12/11/07
7,307,422 10/595,739 12/11/07
7,307,426 11/179,978 12/11/07
7,307,427 11/188,080 12/11/07
7,307,429 11/489,036 12/11/07
7,307,474 11/316,469 12/11/07
7,307,482 11/136,584 12/11/07
7,307,493 11/261,690 12/11/07
7,307,505 11/185,455 12/11/07
7,307,510 11/217,393 12/11/07
7,307,511 11/134,377 12/11/07
7,307,512 11/117,498 12/11/07
7,307,516 11/208,051 12/11/07
7,307,518 11/134,732 12/11/07
7,307,519 11/178,289 12/11/07
7,307,525 10/563,625 12/11/07
7,307,538 11/100,219 12/11/07
7,307,541 10/506,886 12/11/07
7,307,555 11/490,694 12/11/07
7,307,556 11/280,417 12/11/07
7,307,564 10/973,741 12/11/07
7,307,578 10/907,428 12/11/07
7,307,579 11/266,031 12/11/07
7,307,581 10/871,054 12/11/07
7,307,598 11/361,529 12/11/07
7,307,609 11/199,874 12/11/07
7,307,618 11/269,135 12/11/07
7,307,620 11/051,849 12/11/07
7,307,661 10/481,932 12/11/07
7,307,706 10/512,446 12/11/07
7,307,714 11/133,889 12/11/07
7,307,727 11/521,532 12/11/07
7,307,770 11/609,241 12/11/07
7,307,772 11/518,802 12/11/07
7,307,782 10/208,198 12/11/07
7,307,804 11/333,046 12/11/07
7,307,822 11/020,069 12/11/07
7,307,845 11/228,874 12/11/07
7,307,849 11/438,429 12/11/07
7,307,854 10/778,167 12/11/07
7,307,914 11/296,712 12/11/07
7,307,918 11/024,139 12/11/07
7,307,921 10/929,695 12/11/07
7,307,936 10/492,286 12/11/07
7,307,942 10/413,999 12/11/07
7,307,944 10/486,114 12/11/07
7,307,955 10/749,874 12/11/07
7,307,960 10/239,319 12/11/07
7,307,964 10/274,913 12/11/07
7,307,967 10/749,398 12/11/07
7,307,977 10/262,691 12/11/07
7,308,018 10/473,468 12/11/07
7,308,026 10/468,787 12/11/07
7,308,030 11/103,588 12/11/07
7,308,031 10/703,667 12/11/07
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 290 |
7,308,032 10/749,575 12/11/07
7,308,036 10/701,602 12/11/07
7,308,045 10/413,134 12/11/07
7,308,049 10/772,962 12/11/07
7,308,055 10/337,736 12/11/07
7,308,063 10/396,118 12/11/07
7,308,078 11/344,790 12/11/07
7,308,080 09/610,613 12/11/07
7,308,088 11/134,669 12/11/07
7,308,091 10/236,524 12/11/07
7,308,103 10/434,024 12/11/07
7,308,108 10/907,670 12/11/07
7,308,117 09/771,214 12/11/07
7,308,133 09/966,408 12/11/07
7,308,138 10/432,543 12/11/07
7,308,139 10/308,928 12/11/07
7,308,172 10/571,831 12/11/07
7,308,210 10/407,520 12/11/07
7,308,211 10/726,330 12/11/07
7,308,243 10/633,696 12/11/07
7,308,254 09/461,353 12/11/07
7,308,262 10/804,075 12/11/07
7,308,273 10/867,071 12/11/07
7,308,315 10/467,916 12/11/07
7,308,324 09/957,259 12/11/07
7,308,329 11/318,423 12/11/07
7,308,331 11/137,914 12/11/07
7,308,340 11/208,286 12/11/07
7,308,349 11/145,708 12/11/07
7,308,351 10/875,472 12/11/07
7,308,415 10/000,149 12/11/07
7,308,436 10/616,718 12/11/07
7,308,452 10/689,395 12/11/07
7,308,461 10/817,637 12/11/07
7,308,478 10/254,017 12/11/07
7,308,495 10/323,992 12/11/07
7,308,505 10/737,989 12/11/07
7,308,507 10/717,289 12/11/07
7,308,536 11/041,711 12/11/07
7,308,551 11/066,590 12/11/07
7,308,559 10/456,793 12/11/07
7,308,569 10/632,648 12/11/07
7,308,575 10/010,894 12/11/07
7,308,580 10/131,008 12/11/07
7,308,582 10/398,518 12/11/07
7,308,584 10/641,342 12/11/07
7,308,595 10/920,070 12/11/07
7,308,614 10/412,229 12/11/07
7,308,630 10/906,467 12/11/07
7,308,637 10/920,583 12/11/07
7,308,661 11/008,812 12/11/07
7,308,685 10/439,053 12/11/07
7,308,687 10/357,352 12/11/07
7,308,692 10/995,582 12/11/07
7,308,693 11/713,674 12/11/07
7,308,696 11/484,012 12/11/07
7,308,708 10/210,912 12/11/07
7,308,717 09/792,154 12/11/07
| Patents Reinstated Due to the Acceptance of a Late Maintenance Fee from 01/02/2012 |
Patents Reinstated Due to the Acceptance of a
Late Maintenance Fee from 01/02/2012
Patent Application Filing Issue Granted
Number Number Date Date Date
5,697,965 08/625,872 04/01/96 12/16/97 01/05/12
5,706,289 08/564,996 11/30/95 01/06/98 01/06/12
5,991,374 08/694,854 08/08/96 11/23/99 01/06/12
6,001,340 08/039,843 03/30/93 12/14/99 01/04/12
6,004,186 08/884,609 06/30/97 12/21/99 01/03/12
6,516,967 09/879,685 06/12/01 02/11/03 01/04/12
6,607,500 09/853,440 05/10/01 08/19/03 01/05/12
6,634,274 09/734,279 12/11/00 10/21/03 01/04/12
7,179,167 10/175,598 06/18/02 02/20/07 01/05/12
7,275,089 09/814,154 03/21/01 09/25/07 01/04/12
7,277,744 10/445,997 05/27/03 10/02/07 01/05/12
7,278,189 11/001,825 12/02/04 10/09/07 01/03/12
7,285,915 09/995,077 11/26/01 10/23/07 01/04/12
| Reissue Applications Filed |
Reissue Applications Filed
Notice under 37 CFR 1.11(b). The reissue applications listed below
are open to public inspection by the general public through the Image
File Wrapper (IFW) system (http://portal.uspto.gov/external/portal/pair)
on the USPTO internet web site (www.uspto.gov), and copies may be obtained
by paying the fee therefor (37 CFR 1.19).
D. 487,709, Re. S.N. 29/407,021, Nov. 22, 2011, Cl. D11/000, EXPANDABLE
WIRE BANGLE BRACELET, Carolyn Rafaelian Ferlian, Owner of Record: ALEX AND
ANI, INC., Attorney or Agent: Mary K. Nicholes, Ex. Gp.: 2913
D. 639,323, Re. S.N. 29/409,392, Dec. 22, 2011, Cl. D15/199, VACUUM
TRANSFER ROBOT, Takahiro Yoshino, Owner of Record: Ulvac, Inc.,
Chigasaki-shi, Kanagawa, JP, Attorney or Agent: Robert M. Siminski, Ex.
Gp.: 2913
6,510,524, Re. S.N. 13/008,002, Jan. 17, 2011, Cl. 710/001, SYSTEM FOR
MANAGING POWER OF PERIPHERAL COMMUNICATIONS BY AUTOMATICALLY CLOSING
COMMUNICATIONS CHANNEL IMMEDIATELY AFTER FINISHING A COMMUNICATION WITH A
PERIPHERAL DEVICE, Neal A. Osborn, et al., Owner of Record: Access Systems
Americas, Inc., Sunnyvale, CA, Attorney or Agent: Shawn Diedtrich, Ex. Gp.:
2182
6,587,101, Re. S.N. 13,337,237, Dec. 26, 2011, Cl. 345, POWER-SAVING
CIRCUIT AND METHOD FOR A DIGITAL VIDEO DISPLAY DEVICE, Sun-Il Yoo,
Suwon-shi, Korea, Owner of Record: Samsung Electronics Co., Ltd., Attorney
or Agent: Wonki Park, Ex. Gp.: 2629
6,621,918, Re. S.N. 13/301,600, Nov. 21, 2011, Cl. 345/424,
TELERADIOLOGY SYSTEMS FOR RENDERING AND VISUALIZING REMOTELY-LOCATED VOLUME
DATA SETS, Hui Hu et. al., Owner of Record: VITAL IMAGES, INC., Attorney or
Agent: John I Fisher, Ex. Gp.: 2628
6,659,460, Re. S.N. 13/300,733, Nov. 21, 2011, Cl. 273/149, CARD
SHUFFLING DEVICES AND RELATED METHODS, Ernst Blaha, et al., Owner of
Record: SHUFFLE MASTER GMBH & CO KG., Attorney or Agent: James C. Watson,
Ex. Gp.: 3711
6,755,841, Re. S.N. 13/331,675, Dec. 20, 2011, Cl. 606/099, MEDICAL
INSTALLATION TOOL, Robert D. Fraser, et al., Owner of Record: DePuy Spine,
Inc., Raynham, MA, Attorney or Agent: Lisa Adams, Ex. Gp.: 3775
7,174,596, Re. S.N. 13/317,652, Oct. 25, 2011, Cl. 015/110, TOOTHBRUSH
AND PROCESS FOR PRODUCING SUCH A TOOTHBRUSH, Franz Fischer, et al., Owner
of Record: Trisa Holding AG, Triengen, CH, Attorney or Agent: James Oliff,
Ex. Gp.: 3723
7,292,561, Re. S.N. 13/300,799, Nov. 21, 2011, Cl. 370/338, SIP-BASED
USER MOBILITY PROVIDING APPARATUS AND METHOD, Eun-Hee Hyun, et al., Owner
of Record: PANTECH CO., LTD., Attorney or Agent: Hae-Chan Park, Ex. Gp.:
2617
7,400,682, Re. S.N. 13/301,502, Nov. 21, 2011, Cl. 382/232, SYSTEMS AND
METHODS FOR REDUCED BIT-DEPTH PROCESSING IN VIDEO-RELATED DATA WITH
FREQUENCY WEIGHTING MATRICES, Louis Joseph Kerofsky, Owner of Record: SHARP
KABUSHIKI KAISHA, Attorney or Agent: Michael R. Cammarata, Ex. Gp.: 2624
7,400,682, Re. S.N. 13/301,526, Nov. 21, 2011, Cl. 382/239, SYSTEMS AND
METHODS FOR REDUCED BIT-DEPTH PROCESSING IN VIDEO-RELATED DATA WITH
FREQUENCY WEIGHTING MATRICES, Louis Joseph Kerofsky, Owner of Record: SHARP
KABUSHIKI KAISHA, Attorney or Agent: Michael R. Cammarata, Ex. Gp.: 2624
7,606,687, Re. S.N. 13,277,008, Oct/19/2011, Cl. 703, PROXIMITY SEARCH
METHODS USING TILES TO REPRESENT GEOGRAPHICAL ZONES, Nicholas Galbreath, et
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 293 |
al, Owner of Record: Facebook, Inc., Attorney or Agent: Mark Spolyar, Ex.
Gp.: 2123
7,638,783, Re. S.N. 13,332,667, Dec. 21, 2011, Cl. 250, LEAD FREE BARIUM
SULFATE ELECTRICAL INSULATOR AND METHOD OF MANUFACTURE, Stuart J. McCord,
Westford, MA, Owner of Record: Resin Systems Corporaiton, Attorney or
Agent: Marian J. Furst, Ex. Gp.: 2881
7,640,209, Re. S.N. 13,338,229, Dec. 27, 2011, Cl. 705, PROCESS FOR AN
INCLUSIVE AUTOMATED CONSUMER CONTROLLED MORTGAGE SYSTEM (ACCMS) CONTAINING
AND AUTOMATED MORTGAGE MONITORING AND GOVERNMENT COMPLIANCE AUDITING
SYSTEM, Ronald L. Brooks, et al, Owner of Record: Peter Gootos. Attorney or
Agent: Barry Dove, Ex. Gp.: 3693
7,640,304, Re. S.N. 13,337,633, Dec. 27, 2011, Cl. 709, SYSTEM AND
METHOD FOR DETECTING AND MEASURING EMOTIONAL INDICIA, Daniel Goldscheider,
Lachen, Switzerland, Owner of Record: YES International AG, Attorney or
Agent: Robert S. Mallin, Ex. Gp.: 2447
7,758,071, Re. S.N. 13/233,492, Sept. 15, 2011, Cl. 164/079, CONTINUOUS
CASTING OF FOAMED BULK AMORPHOUS ALLOYS, James Kang, Owner of Record:
CRUCIBLE INTELLECTUAL PROPERTY, Attorney or Agent: Raj S. Dave, Ex. Gp.:
1735
| Requests for Ex Parte Reexamination Filed |
Requests for Ex Parte Reexamination Filed
5,351,285, Reexam. C.N. 90/012,064, Requested Date: December 19, 2011,
Cl. 379/094, Title: MULTIPLE FORMAT TELEPHONIC INTERFACE CONTROL SYSTEM,
Inventor: Ronald A. Katz, Owners of Record: Ronald A. Katz Technology
Licensing, LP., Beverly Hills, CA, Attorney or Agent: Reena Kuyper, Esq.,
Los Angeles, CA, Ex. Gp.: 3992, Requester: James Brooks, Orrick Herrington
& Sutcliffe, LLP., Irvine, CA
7,323,847 Reexam. C.N. 90/012,041, Requested Date: December 9, 2011, Cl.
320/110, Title: METHOD AND SYSTEM OF CHARGING MULTI-CELL LITHIUM -BASED
BATTERIES, Inventor: Gary D. Meyer et al., Owners of Record: Milwaukee
Electric Tool Corporation, Brookfield, WI, Attorney or Agent: Michael Best
& Friedrich, LLP., Milwaukee, WI, Ex. Gp.: 3992, Requester: Paul Devinsky,
McDermott Will & Emery, LLP., Washington, DC
7,804,954, Reexam. C.N. 90/012,025, Requested Date: November 23, 2011,
Cl. 379/352, Title: INFRASTRUCTURE FOR ENABLING HIGH QUALITY REAL-TIME
AUDIO, Inventor: Mu Han et al., Owners of Record: Microsoft Corporation,
Redmond, WA, Attorney or Agent: Microsoft Corporation, Redmond, WA, Ex.
Gp.: 3992, Requester: PATENT OWNER
| Requests for Inter Partes Reexamination Filed |
Requests for Inter Partes Reexamination Filed
7,441,211, Reexam. C.N.: 95/001,832, Requested Date: December 8, 2011,
Cl.: Title: GATE-LENGTH BIASING FOR DIGITAL CIRCUIT OPTIMIZATON, Inventor:
Puneet Gupta et al., Owners of Record: Tela Innovations, Inc., Campbell,
CA, Attorney or Agent: Martine Penilla Group, LLP., Sunnyvale, CA, Ex. Gp.:
3992, Requester: Third Party Requester: Taiwan Semiconductor Manufacturing,
Co., LTD., (Att'y Is: David M. O'Dell, Haynes & Boone, LLP., Dallas, TX),
Real Party in Interest: Same As Third Party Requester
7,678,843, Reexam. C.N.: 95/001,837, Requested Date: November 30, 2011,
Cl.: 522/074, Title: DENTAL RESTORATIVE MATERIAL COMPOSITION, Inventor:
Futoshi Fusejima et al., Owners of Record: GC Corporation, Japan, Attorney
or Agent: Oblon Spivak McClelland Maier & Neustadt, LLP., Alexandria, VA,
Ex. Gp.: 3991, Requester: Third Party Requester: Tokuyama Dental Corp.;
(Att'y Is: Robert C. Faber, Ostrolenk Faber, LLP. New York, NY), Real Party
in Interest: Same As Third Party Requester
7,702,669, Reexam. C.N.: 95/001,844, Requested Date: December 8, 2011,
Cl.: 707/620, Title: SYNCHRONIZATION IN UNIFIED MESSAGING SYSTEMS Inventor:
Vlad Vendrow et al., Owners of Record: RingCentral, Inc., San Mateo, CA,
Attorney or Agent: Fish & Richardson, PC., Minneapolis, MN, Ex. Gp.: 3992,
Requester: Third Party Requester: j2 Global Communications, Inc.; (Att'y
Is: Michelle N. McLeod, Kenyon & Kenyon, LLP., Palo Alto, CA), Real Party
in Interest: Same As Third Party Requester
7,849,579, Reexam. C.N.: 95/001,843, Requested Date: December 8, 2011,
Cl.: 029/525, Title: METHOD FOR DELIVERING FASTENERS TO A TOOL, Inventor:
Rupert Andrew Craythorn et al., Owners of Record: Henrob Limited, United
Kingdom, Attorney or Agent: DLA Piper US, LLP., Chicago, IL, Ex. Gp.: 3993,
Requester: Third Party Requester: Emhart Teknologies, LLC.; (Att'y Is: Jack
S. Barufka, Pillsbury Winthrop Shaw Pittman, LLP., McLean, VA), Real Party
in Interest: Same As Third Party Requester
7,999,510, Reexam. C.N.: 95/001,846, Requested Date: December 9, 2011,
Cl.: 320/116, Title: LITHIUM-BASED BATTERY PACK FOR A HIGH CURRENT DRAW,
HAND HELD POWER TOOL, Inventor: Todd W. Johnson et al., Owners of Record:
Milwaukee Electric Tool Corporation, Brookfield, WI, Attorney or Agent:
Michael Best & Friedrich, LLP., Milwaukee, WI, Ex. Gp.: 3992, Requester:
Third Party Requester: Hitachi Koki, Co., LTD.; (Att'y Is: Paul Devinsky,
McDermott Will & Emery, LLP., Washington, DC), Real Party in Interest: Same
As Third Party Requester
8,009,042, Reexam. C.N.: 95/001,821, Requested Date: December 2, 2011,
Cl.: 340/541, Title: RADIO-FREQUENCY LIGHTING CONTROL SYSTEM WITH OCCUPANCY
SENSING, Inventor: James P. Steiner et al., Owners of Record: Lutron
Electronics, Co., Inc., Coopersburg, PA, Attorney or Agent: Ostrolenk
Faber, LLP., New York, NY, Ex. Gp.: 3992, Requester: Third Party Requester:
Crestron Electronics, Inc.; (Att'y Is: Philip Kirkpatrick, Rockleigh, NJ),
Real Party in Interest: Same As Third Party Requester
| Notice of Expiration of Trademark Registrations Due to Failure to Renew |
Notice of Expiration of Trademark Registrations
Due to Failure to Renew
15 U.S.C. 1059 provides that each trademark registration may be
renewed for periods of ten years from the end of the expiring period
upon payment of the prescribed fee and the filing of an acceptable
application for renewal. This may be done at any time within one year
before the expiration of the period for which the registration was
issued or renewed, or it may be done within six months after such
expiration on payment of an additional fee.
According to the records of the Office, the trademark registrations
listed below are expired due to failure to renew in accordance with 15
U.S.C. 1059.
TRADEMARK REGISTRATIONS WHICH EXPIRED
January 6, 2012
DUE TO FAILURE TO RENEW
Reg. Number Serial Number Reg. Date
1,647,014 74/012,780 06/04/1991
2,957,368 79/000,065 05/31/2005
2,957,370 79/000,486 05/31/2005
2,957,373 79/000,562 05/31/2005
2,957,378 79/001,407 05/31/2005
2,957,379 79/001,611 05/31/2005
2,955,181 79/001,721 05/24/2005
2,940,257 79/001,839 04/12/2005
2,938,378 79/001,900 04/05/2005
2,938,380 79/001,923 04/05/2005
2,955,182 79/001,931 05/24/2005
2,938,381 79/001,938 04/05/2005
1,156,698 73/187,303 06/02/1981
1,646,624 74/009,105 06/04/1991
2,457,480 75/001,371 06/05/2001
2,457,500 75/103,977 06/05/2001
2,457,521 75/210,882 06/05/2001
2,457,527 75/216,760 06/05/2001
2,457,531 75/222,195 06/05/2001
2,457,535 75/238,635 06/05/2001
2,457,538 75/240,148 06/05/2001
2,457,551 75/271,395 06/05/2001
2,457,556 75/282,513 06/05/2001
2,457,559 75/283,783 06/05/2001
2,456,573 75/291,179 06/05/2001
2,457,567 75/294,665 06/05/2001
2,457,576 75/310,758 06/05/2001
2,457,579 75/318,800 06/05/2001
2,457,589 75/329,925 06/05/2001
2,456,575 75/336,420 06/05/2001
2,457,591 75/338,130 06/05/2001
2,457,596 75/346,135 06/05/2001
2,457,598 75/346,847 06/05/2001
2,457,607 75/355,708 06/05/2001
2,457,611 75/360,490 06/05/2001
2,457,612 75/360,972 06/05/2001
2,457,621 75/377,596 06/05/2001
2,458,701 75/398,887 06/05/2001
2,458,702 75/404,152 06/05/2001
2,457,646 75/409,713 06/05/2001
2,457,658 75/426,583 06/05/2001
2,457,662 75/428,647 06/05/2001
2,457,667 75/432,063 06/05/2001
2,457,668 75/432,829 06/05/2001
2,457,669 75/432,890 06/05/2001
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 297 |
2,457,670 75/433,285 06/05/2001
2,456,585 75/434,691 06/05/2001
2,457,674 75/440,105 06/05/2001
2,457,683 75/448,352 06/05/2001
2,456,590 75/451,434 06/05/2001
2,458,705 75/452,605 06/05/2001
2,457,690 75/457,427 06/05/2001
2,457,698 75/461,030 06/05/2001
2,457,699 75/461,350 06/05/2001
2,457,714 75/467,865 06/05/2001
2,457,723 75/476,130 06/05/2001
2,457,724 75/476,743 06/05/2001
2,457,728 75/480,030 06/05/2001
2,458,712 75/487,720 06/05/2001
2,456,605 75/494,291 06/05/2001
2,457,742 75/494,432 06/05/2001
2,457,757 75/505,649 06/05/2001
2,457,769 75/512,963 06/05/2001
2,457,771 75/513,212 06/05/2001
2,457,774 75/515,902 06/05/2001
2,457,776 75/516,832 06/05/2001
2,457,777 75/516,958 06/05/2001
2,457,807 75/529,690 06/05/2001
2,457,808 75/530,500 06/05/2001
2,457,810 75/532,017 06/05/2001
2,457,812 75/534,206 06/05/2001
2,457,822 75/537,140 06/05/2001
2,457,825 75/540,309 06/05/2001
2,456,623 75/542,906 06/05/2001
2,457,858 75/555,639 06/05/2001
2,458,730 75/555,838 06/05/2001
2,457,866 75/559,292 06/05/2001
2,457,869 75/559,872 06/05/2001
2,457,870 75/559,874 06/05/2001
2,457,876 75/562,411 06/05/2001
2,457,877 75/562,584 06/05/2001
2,456,630 75/566,698 06/05/2001
2,457,891 75/570,423 06/05/2001
2,457,904 75/574,917 06/05/2001
2,457,918 75/580,606 06/05/2001
2,457,920 75/581,019 06/05/2001
2,458,735 75/585,547 06/05/2001
2,457,936 75/589,445 06/05/2001
2,457,940 75/590,464 06/05/2001
2,457,941 75/590,780 06/05/2001
2,457,958 75/602,226 06/05/2001
2,457,960 75/602,710 06/05/2001
2,457,969 75/605,271 06/05/2001
2,457,988 75/613,325 06/05/2001
2,457,992 75/614,264 06/05/2001
2,456,645 75/621,407 06/05/2001
2,458,009 75/622,692 06/05/2001
2,458,015 75/624,459 06/05/2001
2,456,650 75/625,745 06/05/2001
2,458,031 75/633,434 06/05/2001
2,458,032 75/634,516 06/05/2001
2,458,041 75/636,936 06/05/2001
2,456,654 75/637,481 06/05/2001
2,458,054 75/642,369 06/05/2001
2,456,665 75/648,155 06/05/2001
2,458,746 75/652,148 06/05/2001
2,456,670 75/653,324 06/05/2001
2,458,080 75/653,370 06/05/2001
2,458,747 75/653,699 06/05/2001
2,458,090 75/656,830 06/05/2001
2,456,671 75/657,551 06/05/2001
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 298 |
2,458,106 75/661,889 06/05/2001
2,458,107 75/662,003 06/05/2001
2,458,116 75/664,891 06/05/2001
2,458,122 75/666,859 06/05/2001
2,456,684 75/668,749 06/05/2001
2,458,131 75/671,907 06/05/2001
2,456,686 75/672,205 06/05/2001
2,456,687 75/673,311 06/05/2001
2,458,150 75/679,609 06/05/2001
2,456,690 75/679,712 06/05/2001
2,458,151 75/679,713 06/05/2001
2,458,154 75/680,710 06/05/2001
2,458,156 75/681,068 06/05/2001
2,458,167 75/685,630 06/05/2001
2,458,172 75/688,299 06/05/2001
2,456,697 75/688,582 06/05/2001
2,456,699 75/691,654 06/05/2001
2,458,191 75/698,455 06/05/2001
2,458,202 75/699,588 06/05/2001
2,456,708 75/699,646 06/05/2001
2,458,209 75/703,923 06/05/2001
2,456,715 75/708,596 06/05/2001
2,458,226 75/709,577 06/05/2001
2,458,228 75/709,810 06/05/2001
2,458,229 75/709,823 06/05/2001
2,458,241 75/715,019 06/05/2001
2,458,249 75/717,178 06/05/2001
2,458,755 75/717,651 06/05/2001
2,458,262 75/721,516 06/05/2001
2,456,719 75/721,870 06/05/2001
2,458,267 75/722,978 06/05/2001
2,458,277 75/724,532 06/05/2001
2,458,761 75/726,920 06/05/2001
2,456,723 75/729,753 06/05/2001
2,458,296 75/731,153 06/05/2001
2,458,301 75/732,898 06/05/2001
2,456,726 75/736,075 06/05/2001
2,458,310 75/736,565 06/05/2001
2,458,311 75/736,566 06/05/2001
2,458,319 75/737,439 06/05/2001
2,458,321 75/737,925 06/05/2001
2,456,730 75/739,939 06/05/2001
2,456,735 75/743,282 06/05/2001
2,456,737 75/744,520 06/05/2001
2,456,738 75/744,597 06/05/2001
2,458,339 75/745,698 06/05/2001
2,458,346 75/747,061 06/05/2001
2,456,746 75/753,231 06/05/2001
2,456,752 75/758,253 06/05/2001
2,458,370 75/758,556 06/05/2001
2,458,372 75/758,918 06/05/2001
2,458,377 75/761,016 06/05/2001
2,456,764 75/765,633 06/05/2001
2,458,393 75/767,966 06/05/2001
2,458,394 75/768,417 06/05/2001
2,456,767 75/768,981 06/05/2001
2,458,402 75/769,918 06/05/2001
2,458,412 75/774,402 06/05/2001
2,456,770 75/774,636 06/05/2001
2,456,772 75/776,087 06/05/2001
2,458,418 75/776,416 06/05/2001
2,458,422 75/777,850 06/05/2001
2,458,443 75/786,797 06/05/2001
2,458,453 75/789,436 06/05/2001
2,458,457 75/790,954 06/05/2001
2,458,459 75/792,482 06/05/2001
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 299 |
2,458,462 75/793,812 06/05/2001
2,458,778 75/793,897 06/05/2001
2,458,468 75/796,674 06/05/2001
2,456,795 75/796,939 06/05/2001
2,458,471 75/798,146 06/05/2001
2,456,802 75/800,683 06/05/2001
2,458,485 75/802,631 06/05/2001
2,458,486 75/802,634 06/05/2001
2,458,496 75/805,838 06/05/2001
2,456,812 75/807,722 06/05/2001
2,456,813 75/808,140 06/05/2001
2,458,505 75/808,612 06/05/2001
2,458,510 75/809,743 06/05/2001
2,456,821 75/811,466 06/05/2001
2,456,828 75/816,870 06/05/2001
2,458,784 75/817,110 06/05/2001
2,456,829 75/817,482 06/05/2001
2,458,530 75/817,761 06/05/2001
2,458,533 75/819,127 06/05/2001
2,456,839 75/822,616 06/05/2001
2,458,548 75/824,946 06/05/2001
2,456,846 75/828,542 06/05/2001
2,456,855 75/832,766 06/05/2001
2,456,859 75/834,793 06/05/2001
2,458,568 75/835,746 06/05/2001
2,456,866 75/836,994 06/05/2001
2,458,795 75/837,048 06/05/2001
2,456,868 75/837,472 06/05/2001
2,456,872 75/838,475 06/05/2001
2,456,873 75/838,498 06/05/2001
2,456,876 75/839,643 06/05/2001
2,456,880 75/841,525 06/05/2001
2,458,580 75/841,922 06/05/2001
2,456,890 75/843,571 06/05/2001
2,458,586 75/844,255 06/05/2001
2,456,894 75/844,914 06/05/2001
2,458,590 75/846,419 06/05/2001
2,456,897 75/846,479 06/05/2001
2,456,903 75/848,558 06/05/2001
2,458,601 75/851,065 06/05/2001
2,456,909 75/852,281 06/05/2001
2,456,922 75/854,382 06/05/2001
2,458,605 75/854,844 06/05/2001
2,458,609 75/858,379 06/05/2001
2,456,944 75/863,504 06/05/2001
2,458,613 75/864,134 06/05/2001
2,456,949 75/865,914 06/05/2001
2,456,962 75/872,089 06/05/2001
2,458,623 75/874,048 06/05/2001
2,458,626 75/877,186 06/05/2001
2,458,816 75/879,798 06/05/2001
2,458,817 75/879,896 06/05/2001
2,458,631 75/879,972 06/05/2001
2,458,632 75/880,466 06/05/2001
2,456,988 75/881,356 06/05/2001
2,458,819 75/882,134 06/05/2001
2,458,636 75/884,014 06/05/2001
2,458,637 75/885,027 06/05/2001
2,456,996 75/886,091 06/05/2001
2,456,997 75/886,324 06/05/2001
2,458,639 75/886,883 06/05/2001
2,458,640 75/886,884 06/05/2001
2,458,641 75/886,934 06/05/2001
2,458,643 75/888,190 06/05/2001
2,457,015 75/896,207 06/05/2001
2,458,652 75/896,468 06/05/2001
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 300 |
2,458,830 75/896,882 06/05/2001
2,457,021 75/897,177 06/05/2001
2,457,026 75/900,687 06/05/2001
2,457,028 75/902,674 06/05/2001
2,457,032 75/903,389 06/05/2001
2,458,656 75/903,714 06/05/2001
2,458,658 75/904,578 06/05/2001
2,458,835 75/905,762 06/05/2001
2,458,838 75/910,630 06/05/2001
2,458,661 75/910,907 06/05/2001
2,457,051 75/915,915 06/05/2001
2,458,840 75/917,286 06/05/2001
2,458,841 75/920,948 06/05/2001
2,457,085 75/932,267 06/05/2001
2,457,096 75/937,362 06/05/2001
2,458,847 75/940,690 06/05/2001
2,457,104 75/942,041 06/05/2001
2,457,105 75/942,042 06/05/2001
2,457,111 75/950,625 06/05/2001
2,458,666 75/978,458 06/05/2001
2,458,667 75/978,479 06/05/2001
2,458,668 75/979,627 06/05/2001
2,458,669 75/979,870 06/05/2001
2,458,670 75/979,987 06/05/2001
2,457,117 76/002,882 06/05/2001
2,457,130 76/009,872 06/05/2001
2,457,139 76/014,747 06/05/2001
2,457,144 76/015,650 06/05/2001
2,458,851 76/015,685 06/05/2001
2,457,148 76/016,822 06/05/2001
2,457,152 76/018,114 06/05/2001
2,457,153 76/018,437 06/05/2001
2,457,169 76/023,438 06/05/2001
2,458,853 76/025,951 06/05/2001
2,457,184 76/028,291 06/05/2001
2,457,194 76/032,142 06/05/2001
2,457,196 76/032,366 06/05/2001
2,457,212 76/039,176 06/05/2001
2,457,217 76/039,773 06/05/2001
2,457,221 76/041,409 06/05/2001
2,457,227 76/042,997 06/05/2001
2,457,234 76/045,488 06/05/2001
2,457,245 76/048,976 06/05/2001
2,457,250 76/050,947 06/05/2001
2,457,252 76/051,549 06/05/2001
2,458,857 76/051,653 06/05/2001
2,458,859 76/053,738 06/05/2001
2,457,260 76/054,163 06/05/2001
2,457,278 76/062,119 06/05/2001
2,457,282 76/062,695 06/05/2001
2,457,298 76/065,240 06/05/2001
2,457,321 76/069,549 06/05/2001
2,457,323 76/069,940 06/05/2001
2,457,344 76/074,061 06/05/2001
2,457,359 76/077,499 06/05/2001
2,457,373 76/082,929 06/05/2001
2,457,379 76/084,270 06/05/2001
2,457,380 76/084,537 06/05/2001
2,458,688 78/002,033 06/05/2001
2,458,870 78/003,530 06/05/2001
2,457,439 78/008,873 06/05/2001
2,457,441 78/009,945 06/05/2001
2,457,452 78/014,929 06/05/2001
2,457,459 78/018,608 06/05/2001
1,593,395 73/786,627 04/24/1990
| 37 CFR 1.47 Notice by Publication |
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of a national stage application
with a petition under 37 CFR 1.47 requesting acceptance of the application
without the signature of all of the inventors. The petition has been
granted. A notice has been sent to the last known address of the
non-signing inventor, You Liang Wang. The inventor whose signature is
missing may join in the application by promptly filing an appropriate oath
or declaration complying with 37 CFR 1.63. The international application
number is PCT/SG2008/000271 and was filed on 25 July 2008 in the names of
Onn Chee Wong, Slew Keng Loh, Hui Yang and You Liang Wang for the invention
entitled Method and System for Securing Against Leakage of Source Code. The
national stage application is assigned number 13/055,905 and has a 35
U.S.C. 371(c)(1), (c)(2) and (c)(4) date of 21 November 2011.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of a national stage application
with a petition under 37 CFR 1.47 requesting acceptance of the application
without the signature of all inventors. The petition has been granted. A
notice has been sent to the last known address of the non-signing inventor.
The inventor whose signature is missing (Matthew James) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is PCT/GB06/04835
and was filed on 21 December 2006 in the name of Matthew James entitled A
BURNER ASSEMBLY. The national stage application is assigned number
12/097,833 and has a 35 U.S.C. 371(c) date of 03 November 2008.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of a national stage application
with a petition under 37 CFR 1.47 requesting acceptance of the application
without the signature of all inventors. The petition has been granted. A
notice has been sent to the last known address of the non-signing inventor.
The inventor whose signature is missing (Brian Martin Reeder) may join in
the application by promptly filing an appropriate oath or declaration
complying with 37 CFR 1.63. The international application number is
PCT/GB09/01910 and was filed on 04 August 2009 in the names of Brian Martin
Reeder, Sean Christopher Ganley, Carl Justin Lewis and Mark David Crosier
entitled OVERLOAD RELAY. The national stage application is assigned number
13/057,323 and has a 35 U.S.C. 371(c) date of 12 July 2011.
37 CFR 1.47 Notice of Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all the inventors. The petition has been granted. A notice has
been sent to the last known addresses of the non-signing inventors. The
inventors whose signatures are missing (Jong-Sung Kim, Chul Youm and
Jung-Min Han) may join in the application by promptly filing an appropriate
oath or declaration complying with 37 CFR 1.63. The international
application number is PCT/KR2009/002205 and was filed 28 April 2009 in the
names of HAN, Jung-Min; OH, Jeong-Hun; KIM, Jong-Sung; YOUM, Chul; HAN,
Kyung-Hee; TAKEUCHI, Masataka,; SUDOH,Takeuchi; and SOTOWA, Chiaki for the
invention entitled NEGATIVE ELECTRODE ACTIVE MATERIAL FOR LITHIUM SECONDARY
BATTERY, PREPARATION METHOD OF THE SAME, AND LITHIUM SECONDARY BATTERY
CONTAINING THE SAME. The national stage number is 12/990,177 and has a 35
U.S.C. 371(c) date of 08 June 2011.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all inventors. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor. The
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 302 |
inventor whose signature is missing (Martin Brodt) may join in the
application by promptly filing an appropriate oath or Declaration complying
with 37 CFR 1.63. The international application number is PCT/EP2008/009959
and was filed on 25 November 2008 in the name of Michael Fuetterer et al
for the invention entitled VEHICLE BODY COMPONENTS WITH A METAL HYBRID
CONSTRUCTION AND PRODUCTION METHOD. The national stage application number
is 12/866,459 and has a 35 U.S.C. 371(c)(1), (c)(2) and (c)(4) date of 04
March 2011.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all inventors. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor. The
inventor who signature is missing (Chee House Khong) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is PCT/SG2008/000194
and was filed on 28 May 2008 in the names of Navas Khan ORATTIKALANDAR,
Vaidyanathan KRIPESH, Xiaowu ZHANG, and Chee Houe KHONG for the invention
entitled A SEMICONDUCTOR STRUCTURE AND A METHOD OF MANUFACTURING A
SEMICONDUCTOR STRUCTURE. The national stage application number is
12/994,431.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all inventors. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor. The
inventor whose signature is missing (Shyi-Herng Kan) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is PCT/SG08/00264
and was filed on 21 July 2008 in the name of Shyi-Herng KAN, Tseng-Ming
HSIEH, and Jackie Y. YING for the invention entitled TWO-PHOTON
STEREOLITHOGARPHY USING PHOTOCURABLE COMPOSITIONS. The national stage
application number is 12/669,461.
| 37 CFR § 1.47 Notice by Publication |
37 CFR § 1.47 Notice by Publication
Notice is hereby given of the filing of the following applications with
a petition under 37 CFR § 1.47 requesting the acceptance of the application
without the signature of all inventors or, if the inventor is deceased, the
legal representative of the deceased inventor. The petition in each
application has been granted. A notice has been sent to the last known
address of the non-signing inventor or legal representative. The inventors
or legal representatives whose signatures are missing may join in the
application by promptly filing an oath or declaration complying with 37 CFR
§ 1.63.
Non-Signing
Inventor(s)
Application or Legal
No. Filing Date Representative(s) Title of Invention
29/397,660 Jul. 19, 2011 Mark D. Duennes Applicator For
Dispensing
Self-Adhesive Products
11/194,878 Aug. 1, 2005 Anindya Majumder Methods For Assessing
A Condition By
Analyzing Blood In
Cerebrospinal Fluid
12/184,308 Aug. 1, 2008 William A. Mowers Functionalization Of
Paper Components
12/255,990 Oct. 22, 2008 Dr. James F. McGuckin, Jr. Hollow Curved
Superelastic Medical
Needle And Method
12/536,181 Aug. 5, 2009 Liming Xiu Digital To Frequency
Synthesis Using
Flying-Adder With
Dithered Command Input
12/549,908 Aug. 28, 2009 Xin Wang Novel Method To
Zhiqiang Wu Improve Performance By
Enhancing Poly Gate
Doping Concentration
In An Embedded SIGE
PMOS Process
12/575,648 Oct. 8, 2009 Henk Keers Migration Velocity
Analysis Using Seismic
Data
12/641,117 Dec. 17, 2009 Dr. James F. McGuckin, Jr. Hollow Curved
Superelastic Medical
Needle And Method
12/730,417 Mar. 24, 2010 Hsiao-Fung Chou Method, System, And
Integrated Chip For
Serial Data
Transmission
12/748,060 Mar. 26, 2010 Albert Donnenberg Methods And
Compositions For
Improved Diagnostic
Assays
12/769,318 Apr. 28, 2010 Tim Wilkinson Techniques To Provide
Integrated Voice
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 304 |
Service Management
12/780,566 May 14, 2010 Sathyaharish Jeedigunta Integration Of ZNO
Manoj Kumar Singh Nanowires With
Nanocrystalline
Diamond Fibers
12/822,973 Jun. 24, 2010 Todd Earl Gregg Article Transport
Vance Vernon Kinchen Vehicles And Methods
Of Transporting
Articles
12/833,516 Jul. 9, 2010 Eugene R. Cooper Ophthalmic
David Kleinman, MD, MBA Formulations Of
Reversed Liquid
Crystalline Phase
Materials And Methods
Of Using
12/840,117 Jul. 20, 2010 Michael Scott Martin Systems And Methods
Jeremy Soller For Collection,
For Collection,
Organization And
Display Of EMS
Information
12/840,129 Jul. 20, 2010 Michael Scott Martin USPA: Systems And
Jeremy Ryan Soller Methods For EMS Device
Communication
Interface
12/853,467 Aug. 10, 2010 Roch Guerin Route Aware Network
Michael Kouts Link Acceleration
Marc Plumb
Rajendran Rajan
Mark Vange
Glenn Sydeny Wilson
12/859,017 Aug 18, 2010 Nishant Koti Cutting Tool
12/887,476 Sep. 21, 2010 Lorenzo Vicisano Enhanced Block-Request
Streaming System Using
Signaling Or Block
Creation
12/887,483 Sep. 21, 2010 Lorenzo Vicisano Enhanced Block-Request
Streaming Using Block
Partitioning Or
Request Controls For
Improved Client-Side
Handling
12/887,492 Sep. 21, 2010 Lorenzo Vicisano Enhanced Block-Request
Streaming Using URL
Templates And
Construction Rules
12/887,495 Sep. 21, 2010 Lorenzo Vicisano Enhanced Block-Request
Streaming Using
Cooperative Parallel
HTTP And Forward Error
Correction
12/892,881 Sep. 28, 2010 Guoqing Chen Surrounding Stacked
Roger Lee Gate Multi-Gate Fet
Su Xing Structure Nonvolatile
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 305 |
Memory Device
12/896,211 Oct. 1, 2010 Balthazar J. Valez Systems And Methods
For Archiving Business
Objects
12/905,010 Oct. 14, 2010 Marc Bertsch Two Layer Pavement
Preservation System
12/907,520 Oct. 19, 2010 Nicolas Renard Concentric Slave
Cylinders To Actuate
Clutches On A Dual
Clutch Transmission
12/926,268 Nov. 5, 2010 Cyril Hue Method And Device For
Resource Management
And Recording Medium
For Said Method
12/926,664 Dec. 2, 2010 Alexander Bilchinsky Ferrite-Induced
Eran Ben Shmuel Spatial Modification
Of EM Field Patterns
12/932,299 Feb. 23, 2011 Marty Buchanan Wireway For Conveyor
12/941,970 Nov. 8, 2010 Guy Pagan Child Support Payment
Contingency Plans
12/942,369 Nov. 9, 2010 Dr. Melissa A. Brown Alpha-Melanocyte
Stimulating Hormone As
Topical
Anti-Inflammatory
Agent For The
Treatment Of Allergic
Contact Dermatitis And
Eczema
12/952,271 Nov. 23, 2010 Robert Heilman Gutter-Locking Gutter
Hal Klaus Protection
David Skelton
Russell Verbrugge
12/952,729 Nov. 23, 2010 Lorenzo Vicisano Object-Based Transport
Protocol
12/968,453 Dec. 15, 2010 Daniel Arnold System And Method For
Hypertext Transfer
Protocol Layered
Reconstruction
12/969,808 Dec. 16, 2010 Chris Braunsdorf Methods And Systems
Mark Smith For Designing Photo
Books
12/974,428 Dec. 21, 2010 Samira H. Skeiky Vaccines Against
Chlamydial Infection
12/977,327 Dec. 23, 2010 Russell Reed Goggles With
Interchangeable Lens
12/978,715 Dec. 27, 2010 Fumihito Akiyama Image Formation
Apparatus, Printing
Data Generation
Apparatus,
Computer-Readable
Recording Medium, And
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 306 |
Printing Data
Generation Method
12/981,092 Dec. 29, 2010 Ivan Vladimirovich Nikolin Method For
Determination Of Fluid
Properties In A Porous
Medium
12/983,882 Jan. 3, 2011 John E. Bales Self-Starting
Edward Failing Ritz, Jr. Electromotor
13/004,794 Jan. 11, 2011 Jeffrey Huang Analyzing Navigation
With A Webpage
13/006,298 Jan. 13, 2011 Zuchun Zhao Aryl GPR119 Agonists
And Uses Thereof
13/010,406 Jan. 20, 2011 Nathaniel Morgan Versatile Unfolding
Solar Deployment
System
13/017,773 Jan. 31, 2011 Kenneth Barclay Method And Apparatus
Timothy J. Mattison For Determining Energy
Paul MacGregor Savings By Using A
Baseline Energy Use
Model That
Incorporates An
Artificial
Intelligence Algorithm
13/023,901 Feb. 9, 2011 Avraham Cohen Device And Method For
Hella Frenkel Purifying A Liquid
13/025,391 Feb. 11, 2011 Stephen D. Ambrose Receiver Assembly For
Samuel P.Gido An Inflatable Ear
Robert B. Schulein Device
13/025,934 Feb. 11, 2011 Lorenzo Vicisano Forward Error
Correction Scheduling
For An Improved Radio
Link Protocol
13/039,089 Feb. 2, 2011 Yuming Bai Structures And Methods
Of Fabricating Dual
Gate Devices
13/044,170 Mar. 9, 2011 Wendong Hu Discovery Of Safety
And Non-Safety Capable
Single-Radio Devices
In Wireless
Environments
13/044,205 Mar. 9, 2011 Wendong Hu Operation Procedures
For Interoperable
Safety And Non-Safety
Communications In
Wireless Environments
13/044,227 Mar. 9, 2011 Wendong Hu Channel Switching For
Interoperable Safety
And Non-Safety
Communications In
Wireless Environments
13/044,514 Mar. 9, 2011 James Cleland Temperature-Controlled
Beverage Dispenser
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 307 |
13/044,887 May 10, 2011 Hiroshi Kamei Secondary Battery
13/049,406 Mar. 16, 2011 Eduard Hilberer Parking Brake System
13/052,708 Mar. 21, 2011 Sivakumar Thivakaram Techniques For
Automatically
Discovering A Database
Device On A Network
13/071,557 Mar. 25, 2011 Brian G. Nadeau Write Spike
Enhancement In Hybrid
Storage Systems
13/088,358 Apr. 16, 2011 Roderick D. Lee Plants And Seeds Of
Hybrid Corn Variety
CH034531
13/088,401 Apr. 17, 2011 Roderick D. Lee Plants And Seeds Of
Hybrid Corn Variety
CH804791
13/088,402 Apr. 17, 2011 Roderick D. Lee Plants And Seeds Of
Hybrid Corn Variety
CH948307
13/088,405 Apr. 17, 2011 Roderick D. Lee Plants And Seeds Of
Hybrid Corn Variety
CH934907
13/094,413 Apr. 26, 2011 Bob Fritz Trash Compactor Bin
Components And Methods
13/096,534 Apr. 28, 2011 Matthew Nicholls Circular Saw Blade
Protector
13/097,597 Apr. 29, 2011 Estafania Erro Merchandising Platform
And Handle Apparatus
For A Merchandiser
13/100,288 May 3, 2011 Roderick Lee Plants And Seeds Of
Hybrid Corn Variety
CH237197
13/101,194 May 5, 2011 Gaston De Los Reyes Porous
Interpenetrating
Polymer Network
13/101,476 May 5, 2011 Ernest Comerford Reinforcing
13/101,986 May 5, 2011 Roderick D. Lee Plants And Seeds Of
Hybrid Corn Variety
CH291635
13/101,988 May 5, 2011 Roderick Lee Plants And Seeds Of
Hybrid Corn Variety
CH397792
13/107,088 May 13, 2011 Christopher Batey Generating User Help
Information For
Customized User
Interfaces
13/110, 59 May 18, 2011 Mikhail Malamud Managing Services In A
Cloud Computing
Environment
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 308 |
13/113,417 May 23, 2011 John A. Piazza Consumer Textile Soft
Goods Product For
Retail Sale
Incorporating
Vacuum-Sealable Bag
Reusable By Consumers
13/135,059 Jun. 24, 2011 Dale Ryan Method Of Fabricating
Insulated Panels
13/155,522 Jun. 8, 2011 Dr. Carmen N. DiMario Vibration Dampening
Dr. Thomas Falone Material
13/162,001 Jun. 16, 2011 Kenneth Mages Apparatus And Method
For Commercial
Transactions Using A
Communication Device
13/169,943 Jun. 27, 2011 Michael J. Lasinski Intellectual Property
Trading Exchange
13/176,477 Jul. 5, 2011 Tirunelveli R. Vishwanath Conversion Of
Hierarchical Infoset
Type Data To Binary
Data
13/189,467 Jul. 22, 2011 Mahito Ando Energy-Efficient
Wireless Communication
Scheme For Wind
Turbines
Registration to Practice
The following list contains the names of persons seeking for
registration to practice before the United States Patent and Trademark
Office. Final approval for registration is subject to establishing
to the satisfaction of the Director of the Office of Enrollment and
Discipline that the person seeking registration is of good moral character
and repute. 37 CFR § 11.7 Accordingly, any information tending to affect
the eligibility of any of the following persons on moral ethical or other
grounds should be furnished to the Director of Enrollment and Discipline on
or before February 19, 2012 at the following address, Mail Stop OED United
States Patent and Trademark Office P.O. Box 1450 Alexandria VA 22314
Arita, Shinsuke, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 901
New York Avenue NW, Washington, DC 20001-4413
Attle, Stephen John, Cuyamaca College, 782 Granite Hills Circle, El Cajon,
CA 92019
Butler, Tiffany Nichole, 357 Dogwood Ridge Road, Summerville, SC 29485
Chang, Audrey BingYu, 287 Harvard Street, Apartment 71, Cambridge, MA 02139
Cho, Stephanie, 851 North Glebe Road, Unit #1818, Arlington, VA 22203
Fraser, Eric Michael, Osborn Maledon, P.A., 2929 N. Central Avenue, Suite
2100, Phoenix, AZ 85012-2793
Gerdzhikov, Angel Nikolaev, Dunlap Codding P.C., 1601 NW Expressway,
Oklahoma City, OK 73118
Gilles, Emily Jean, Mayo Clinic, 1205 34th Street NW, Rochester, MN 55901
Haynes, Donna Michelle Dupree, 2619 Hopkins Street, Houston, TX 77006
Izzat, Izzat Hekmat, 3D Media Corp., 423 Halls Mill Drive, Cary, NC 27519
Jarvholm, Erik Jonas, 1276 Everwood Drive, Marietta, GA 30008
Kim, Hwa Joong, Hershkovitz & Associates, LLC, 114 W. Taylor Run Parkway,
Alexandria, VA 22314
Kim, Jane Nary, 566 Arguello Way, #217, Stanford, CA 94305
Kim, Jeong Hun, Echelon Law Group PC, 7021 Evergreen Court, Suite 8B,
Annandale, VA 22003
Lipman, Bernard, 1205 Ballard Street, Silver Spring, MD 20910
Liu, Dan, 6855 Oriole Avenue, La Verne, CA 91750
Liu, Jason Junjiang, 12710 Brookfield Park, Houston, TX 77041-7261
Mills, Chad William, 1035 156th Avenue NE, Unit 15, Bellevue, WA 98007
Nelms, David Clyde, 6299 Enon School Road, Marshall, VA 20115
Ng, Jin Fay, 7005 Vantage Drive, Alexandria, VA 22306
Oropollo, Lisa Rose, 104 Castle Ridge Drive, East Hanover, NJ 07936
Perumal, Karthika, 413 Drake Lane, League City, TX 77573
Plavsic, Dragan, 1912 Columbia Pike, Apartment 11, Arlington, VA 22204
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 310 |
Raymond, Daniel Robert, G. Ronald Bell & Associates Inc., 50 O'Connor
Street, Suite 1305, Ottawa, Ont., K1P 5W6 Canada
Sittnick, Karla Elizabeth, 41 Chidsey Avenue, East Haven, CT 06512
Slavin, Elina, McCarter & English LLP, 100 Mulberry Street, Four Gateway
Center, Newark, NJ 07102
Stoll, Robert Louis, 2153 California Street, N.W., #504, Washington, DC
20008
January 5, 2012 WILLIAM R. COVEY
Deputy General Counsel for
Enrollment and Discipline and
Director of Enrollment and Discipline
Notice of Reprimand
This notice concerns Junwei Wayne Hou of Gaithersburg, Maryland, an
attorney licensed in Maryland and authorized to represent others before the
United States Patent and Trademark Office ("USPTO") in trademark and
non-patent matters. In a reciprocal disciplinary proceeding, the USPTO
Director ordered that Mr. Hou be reprimanded for violating 37 C.F.R. §
10.23(b)(6) by being reprimanded on ethical grounds in the State of
Maryland. Mr. Hou is not a registered patent practitioner and is not
authorized to practice patent law before the USPTO.
On December 2, 2009, the Attorney Grievance Commission of Maryland
issued a Letter of Reprimand publicly reprimanding Mr. Hou for violating
Maryland Lawyers' Rules of Professional Conduct 1.4 and 1.7.
This action is taken pursuant to the provisions of 35 U.S.C. §
2(b)(2)(D) and 37 C.F.R. §§ 11.24 and 11.59. Disciplinary decisions
involving practitioners are posted for public reading at the Office of
Enrollment and Discipline's Reading Room located at:
http://des.uspto.gov/Foia/OEDReadingRoom.jsp.
January 10, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID KAPPOS
Under Secretary of Commerce For
Intellectual Property and Director of the
United States Patent and Trademark Office
| Status of Public Records Division |
Status of Public Records Division
The Public Records Division (PRD) processes and fills orders for both
certified and uncertified copies of Patent and Trademark Office documents
and records assignments and other documents related to title. This is an
update of actual processing times for orders filled during the month of
December 2011:
DOCUMENT SERVICES Goal Actual
Processing
Time
Certified Documents
Patent Applications-As-Filed 7 days 6 days
Patent Related File Wrappers 25 days 21 days
Patent Copies 10 days 5 days
Patent Assignments 10 days 9 days
Trademark Applications-As-Filed 7 days 6 days
Trademark Related File Wrappers 25 days 18 days
Trademark Assignments 10 days 11 days
Trademark Registrations, Expedited 5 days 3 days
Trademark Registrations, Regular 14 days 11 days
Uncertified Documents
Patent Copies 5 day 1 day
Plant Patents 5 days 0 days
Patent Assignments 10 days 2 days
Patent Related File Wrappers 25 days 8 days
Trademark Copies 5 days 1 day
Trademark Assignments 10 days 1 day
Trademark Related File Wrappers 25 days 4 days
Customers should use the above actual processing time for each product as
a guide as to when they can expect their orders to be completed. In cases
where an urgent deadline is approaching, contact Patent and Trademark Copy
Fulfillment Branch at (571) 272-3150 or 1 (800) 972-6382 for assistance
with a particular order.
Customers are encouraged to place orders through the Internet at
http://ebiz1.uspto.gov/oems25p
Orders may also be faxed to the Patent and Trademark Copy Fulfillment
Branch at (571) 273-3250. Information on the status of pending orders may
be obtained by calling (571) 272-3150 or 1 (800) 972-6382 (outside the
Washington, DC Metro area), or via E-mail to dsd@uspto.gov.
ASSIGNMENT SERVICES
Goal Actual
Processing
Time
Submission Method
Internet (EFS, ePAS or eTAS) 2 days 1 day
Fax 10 days 5 days
Paper 14 days 5 days
The Assignment Services Branch is currently mailing recordation notices for
paper documents received in the Public Records Division on December 27,
2011.
Customers should use the above actual processing times as a guide as to
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 313 |
when they can expect their assignment submissions to be processed. For
fastest service customers are encouraged to file assignments via the
Internet.
Assignment submissions may be made via the Internet at
http://epas.uspto.gov/ for patent assignments and http://etas.uspto.gov for
trademark assignments. Patent assignment submissions may also be made by
selecting the "Electronic Filing (EFS)" option at http://www.uspto.gov/ebc.
Assignment submissions may also be faxed to the Assignment Services Branch
at (571) 273-0140. Trademark assignment recordations may be reviewed online
at http://assignments.uspto.gov/assignments. Information on the status of
pending assignment recordations may be obtained by calling (571) 272-3350
or 1 (800) 972-6382 (outside the Washington, DC Metro area).
January 6, 2012 DONNA J. COOPER
Manager, Public Records Division
| Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act |
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2011-0072]
RIN 0651-AC66
Changes To Implement Miscellaneous
Post Patent Provisions of the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The Leahy-Smith America Invents Act expands the scope of
information that any party may cite in a patent file, to include written
statements made by a patent owner before a Federal court or the United
States Patent and Trademark Office (Office) regarding the scope of any
claim of the patent, and it provides for how such information may be
considered in ex parte reexamination, inter partes review, and post grant
review. The Leahy-Smith America Invents Act also provides for an estoppel
that may attach with respect to ex parte reexamination based on an inter
partes review or post grant review proceeding. The Office is revising the
rules of practice to implement these post-patent provisions, as well as
other miscellaneous provisions of the Leahy-Smith America Invents Act.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before March 5, 2012.
ADDRESSES: Comments should be sent by electronic mail addressed to:
post_patent_provisions@uspto.gov. Comments may also be submitted by mail
addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O.
Box 1450, Alexandria, VA, 22313-1450, marked to the attention of Kenneth M.
Schor, Senior Legal Advisor, Office of Patent Legal Administration, Office
of the Associate Commissioner for Patent Examination Policy.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office prefers to
receive comments by electronic mail message over the Internet because
sharing comments with the public is more easily accomplished. Electronic
comments are preferred to be submitted in plain text, but also may be
submitted in ADOBE[reg] portable document format or MICROSOFT WORD[reg]
format. Comments not submitted electronically should be submitted on paper
in a format that facilitates convenient digital scanning into ADOBE[reg]
portable document format.
The comments will be available for public inspection at the Office of
the Commissioner for Patents, currently located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be
available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for public
inspection, information that the submitter does not desire to make public,
such as an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor, Senior Legal Advisor
((571) 272-7710), or Joseph F. Weiss, Jr., Legal Advisor ((571) 272-7759),
Office of Patent Legal Administration, Office of the Associate Commissioner
for Patent Examination Policy.
SUPPLEMENTARY INFORMATION: Section 6 of the Leahy-Smith America Invents Act
replaces the current inter partes reexamination proceedings with inter
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 315 |
partes review proceedings, and creates new post grant review proceedings.
See Public Law 112-29, 125 Stat. 284 (2011). Section 6 of the Leahy-Smith
America Invents Act also provides for an estoppel that may attach with
respect to ex parte reexamination based on an inter partes review or post
grant review proceeding. The Office is proposing to revise the rules of
practice in title 37 of the Code of Federal Regulations (CFR) to implement
these post-patent provisions, along with changes in nomenclature pertaining
to the renaming of the "Board of Patent Appeals and Interferences" as the
"Patent Trial and Appeal Board" and the replacement of references to
interference proceedings with references to derivation proceedings. The
post grant review, inter partes review, and derivation provisions of
Sections 3 and 6 of the Leahy-Smith America Invents Act will be implemented
by separate rulemakings.
I. Background
Section 6(g) of the Leahy-Smith America Invents Act amends 35 U.S.C. 301
to expand the information that can be submitted in the file of an issued
patent by including written statements made by a patent owner before a
Federal court or the Office regarding the scope of any claim of the patent.
The provision limits the Office's use of such written statements to
determining the meaning of a patent claim in ex parte reexamination
proceedings that have already been ordered and in inter partes review and
post grant review proceedings that have been instituted. This provision is
effective on September 16, 2012.
Section 6(a) and (d) of the Leahy-Smith American Invents Act also
contains provisions in new 35 U.S.C. 315(e)(1) and 35 U.S.C. 325(e)(1) for
estopping a third party requester from filing a request for ex parte
reexamination, in certain instances where the third party requester filed a
petition for inter partes review or post grant review and a final written
decision under 35 U.S.C. 318(a) or 35 U.S.C. 328(a) has been issued. In
addition, a third party requester may not maintain an ex parte
reexamination if the estoppel provisions are met during the pendency of the
ex parte reexamination proceeding. The estoppel provisions apply to the
real party(ies) in interest of the inter partes review or post grant review
petitioner and any privy of such a petitioner. This provision is effective
on September 16, 2012.
In view of the estoppel provisions, the Office needs to be aware of any
final written decision in an inter partes review or post grant review
regarding the patentability of claims. Current § 1.565(a) requires the
patent owner to "inform the Office of any prior or concurrent proceedings
in which the patent is or was involved such as interferences, reissues, ex
parte reexaminations, inter partes reexaminations, or litigation and the
results of such proceedings." Because current § 1.565(a) uses open language
to provide a non-exhaustive listing of proceedings that patent owner must
inform the Office about, the current rule will include inter partes review
and post grant review proceedings, once they become effective. In addition,
the third party requester (to whom the inter partes review or post grant
review estoppel statutes are directed) may inform the Office of a final
written decision in an inter partes review or post grant review of the
patent subject to the ex parte reexamination by filing a "Notification of
Existence of Prior or Concurrent Proceedings and Decisions Thereon"
pursuant to Manual of Patent Examining Procedure (MPEP) § 2282 (8th ed.
2001) (Rev. 8, July 2010). MPEP § 2282 provides that "in order to ensure a
complete file, with updated status information regarding prior or
concurrent proceedings regarding the patent under reexamination, the Office
will, at any time, accept from any parties, for entry into the
reexamination file, copies of notices of suits and other proceedings
involving the patent and copies of decisions or papers filed in the court
from litigations or other proceedings involving the patent."
[Emphasis added]
Section 6(h)(1) of the Leahy-Smith America Invents Act amends 35 U.S.C.
303 to expressly identify the authority of the Director to initiate
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 316 |
reexamination based on patents and publications cited in a prior
reexamination request under 35 U.S.C. 302, as well as on those cited under
35 U.S.C. 301 (which was previously expressly authorized). This provision
is effective on September 16, 2012.
Section 3(i) of the Leahy-Smith America Invents Act replaces
interference proceedings with derivation proceedings; Section 3(j) replaces
the title "Board of Patent Appeals and Interferences" with "Patent Trial
and Appeal Board" in 35 U.S.C. 134, 145, 146, 154, and 305; Section 6(a)
replaces inter partes reexamination with inter partes review of a patent;
Section 6(d) provides for post-grant review of patents; and Section 7
amends 35 U.S.C. 6(b) to define the duties of the Patent Trial and Appeal
Board.
II. Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to be
amended as follows:
The undesignated center heading before § 1.501: It is proposed that the
undesignated center heading be revised to read "Citation of prior art and
written statements."
Section 1.501: Proposed § 1.501 is rewritten to reflect the amendment to
35 U.S.C. 301 by Section 6(g)(1) of the Leahy-Smith America Invents Act.
New 35 U.S.C. 301(a)(2) would permit a submission under 35 U.S.C. 301 and
1.501 to contain, in addition to prior art (currently provided for in §
1.501), "statements of the patent owner filed in a proceeding before a
Federal court or the Office in which the patent owner took a position on
the scope of any claim of a particular patent" (claim scope statements of
the patent owner). Proposed § 1.501 provides that a submission can include
prior art and claim scope statements of the patent owner. The term "Federal
court" in 35 U.S.C. 301(a)(2) is understood to also include the United
States Court of International Trade.
Section 1.501(a): Proposed § 1.501(a)(1), like current § 1.501(a),
provides for submission to the Office of prior art directed to patents or
printed publications allegedly bearing on the patentability of any claim of
a particular patent. Section 1.501(a)(2) newly permits submission of
statements of the patent owner filed in a proceeding before a Federal court
or the Office in which the patent owner took a position on the scope of any
claim of a patent (claim scope statements). Any statement submitted under
this paragraph must be accompanied by any other documents, pleadings, or
evidence from the proceeding in which the statement was filed that address
the statement; and the statement and accompanying information under this
paragraph must be submitted in redacted form to exclude information subject
to an applicable protective order. For example, a third party may submit a
deposition of the patent owner occurring during the course of the Federal
court proceeding where the patent owner discusses the scope of a patent
claim. A party submitting any submission that includes § 1.501(a)(2)
information should also consider providing the following information to
assist the Office in identifying the proceeding where the patent owner
claim scope statement was made: (1) The forum in which the statement was
made (the specific Federal court or the Office); (2) the Federal court or
Office proceeding designation (case citation or numerical designation);
(3) the status of the proceeding; (4) the relationship of the proceeding to
the patent in which the submission is being made; (5) an identification of
the specific papers of the proceeding containing the statement of the
patent owner; and (6) an identification of the portion(s) of the papers
relevant to the written statement being asserted to constitute a statement
of the patent owner under 35 U.S.C. 301(a)(2). Any patent owner statement
regarding the scope of any claim of a particular patent made outside of a
Federal court or Office proceeding is not a written statement eligible for
submission under 35 U.S.C. 301(a)(2), even though it may be later entered
into a Federal court or Office proceeding by a party other than the patent
owner. See H.R. Rep. No. 112-98, Part 1, at page 46 (2011) ("[t]his
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 317 |
addition will counteract the ability of patent owners to offer differing
interpretations of prior art in different proceedings").
Section 1.501(b): Proposed § 1.501(b)(1) is directed to the 35 U.S.C.
301(b) requirement that the submission include an explanation "in writing
[of] the pertinency and manner of applying the prior art or written
statements" to at least one patent claim. Proposed § 1.501(b)(1) requires
an explanation as to how the information in the submission is pertinent to
the claim(s) of the patent and how it is applied to each of those claims.
In some instances, a combination of prior art and written statements may be
cited, while in other situations only prior art or written statements may
be cited. In either situation, an explanation as to how the cited
information applies to those specific claims must be included with the
submission of patent owner statements under 35 U.S.C. 301(a)(2). Section
1.501(b)(1) requires an explanation of the additional information required
by 35 U.S.C. 301(c) (as a result of the Leahy-Smith America Invents Act),
because the additional information addresses and provides context to the
written statement of the patent owner; thus, it provides an additional
explanation as to how the cited information is pertinent to the claim(s).
Proposed § 1.501(b)(2) is directed to the substance of the second
sentence of current § 1.501(a), which provides regulatory authorization for
a patent owner submitter to include an explanation of how the claims differ
from the prior art submitted. Proposed § 1.501(b)(2) simply adds statements
of patent owner under 35 U.S.C. 301(a)(2) to the current regulatory
authorization.
Section 1.501(c): Proposed § 1.501(c) restates the last sentence of
existing § 1.501(a) directed to the timing for a submission under §§ 1.502
and 1.902 when there is a reexamination proceeding pending for the patent
in which the submission is made. Pursuant to current § § 1.502 and 1.902,
entry (into the official patent file) of a proper submission that is made
after the date of an order to reexamine will be delayed (with certain
exceptions specified in §§ 1.502 and 1.902) until the reexamination
proceeding has been concluded by the issuance and publication of a
reexamination certificate. This prevents harassment of the patent owner by
frequent submissions of prior art made during a reexamination proceeding,
as well as unwarranted interruption and delay of the reexamination
proceeding, which would be contrary to the mandate under 35 U.S.C. 305 and
35 U.S.C. 314(c) that all reexamination proceedings are to be "conducted
with special dispatch within the Office."
Section 1.501(d): Proposed § 1.501(d) restates existing § 1.501(b), to
permit the person making the submission to exclude his or her identity from
the patent file by anonymously filing the submission.
Section 1.501(e): Proposed § 1.501(e) requires that a submission made
under § 1.501 must reflect that a copy of the submission has been served
upon the patent owner at the correspondence address of record in the
patent, and that service was carried out in accordance with § 1.248.
Service is required to provide notice to the patent owner of the
submission. The presence of a certificate of service compliant with
§ 1.248(b) is prima facie evidence of compliance with § 1.501(e). If
service upon patent owner is unsuccessful, the submission must include
proof of a bona fide attempt to serve. Proof of a bona fide attempt to
serve must include a statement of facts with an explanation of the
inability to serve the submission upon patent owner, along with all
supporting evidence of the attempt of service. The statement of facts must
be signed by a person having firsthand knowledge of the facts recited,
regarding unsuccessful service. The statement of facts should include the
steps taken to locate and serve the patent owner. A statement of facts
which provides a mere conclusion or assertion of unsuccessful service will
not satisfy this requirement. Copies of documentary proof such as
certified/registered mail receipts, cover letters, telegrams or other forms
of evidence that support a finding that the patent owner could not be
served should be made part of the statement of facts. A submission will not
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 318 |
be entered into the patent's Image File Wrapper (IFW) if it does not
include either proof of service compliant with § 1.248(b) or a sufficient
explanation and proof of a bona fide attempt of service, and if such a
submission is inadvertently entered, it will be expunged. Where a
submission complies with the rule, all information included in the
submission will be made of record in the IFW of the patent. A best practice
for patent owners is to regularly monitor the IFW record of their patents
in the event that a third party was unsuccessful in serving the patent
owner at the correspondence address of record. Such regular monitoring
allows a patent owner to be aware of all information added to its patent
files.
Section 1.501(f): Proposed § 1.501(f) limits the use of statements of
the patent owner and accompanying information submitted under § 1.501(a)(2)
to what is provided for in 35 U.S.C. 301(d). Thus, statements of the patent
owner and accompanying information submitted under paragraph (a)(2) may
only be used for determination of the proper meaning of a patent claim in:
(1) An ex parte reexamination proceeding that has been ordered pursuant to
35 U.S.C. 304; (2) an inter partes review proceeding that has been
instituted pursuant to 35 U.S.C. 314; and (3) a post grant review
proceeding that has been instituted pursuant to 35 U.S.C. 324. Proposed
§ 1.501(f) follows from new 35 U.S.C. 301(d), which provides that "a
written statement submitted pursuant to subSection (a)(2)" "shall not be
considered by the Office for any purpose other than to determine the proper
meaning of a patent claim in a proceeding that is ordered or instituted
pursuant to Section 304, 314, or 324." The reference to 35 U.S.C. 314 is
understood to apply to inter partes review, and not to inter partes
reexamination, because inter partes reexamination is being replaced by
inter partes review on the date that 35 U.S.C. 301(d) becomes effective
(i.e., September 16, 2012). While inter partes reexamination proceedings
already ordered will continue after September 16, 2012, 35 U.S.C. 314 is
understood not to apply to such proceedings.
Section 1.510: Proposed § 1.510(b)(2) is revised, and new §§ 1.510(b)(6)
and (b)(7) are added to implement provisions of the Leahy-Smith America
Invents Act. Section 1.510(b)(2) is revised to require that a request for
reexamination identify every claim for which reexamination is requested,
and for any statement of the patent owner submitted pursuant to
§ 1.501(a)(2) which is relied upon in the detailed explanation, explain how
that statement is being used to determine the proper meaning of a patent
claim in connection with prior art applied to that claim. New 35 U.S.C.
301(d) provides that a statement of the patent owner, pursuant to
§ 1.501(a)(2), may be relied upon in the ex parte reexamination proceeding
only after reexamination has been ordered. In order to comply with the
requirement of 35 U.S.C. 302 that the "request must set forth the
pertinency and manner of applying cited prior art to every claim for which
reexamination is requested," the "detailed explanation" provided in the
request (pursuant to § 1.510(b)(2)) must explain how each § 1.501(a)(2)
statement is being used to determine the proper meaning of a patent claim
in connection with the applied prior art. This must be explained for each
claim for which the § 1.501(a)(2) statement is being used in the request,
and the explanation will be considered by the Office during the examination
stage, if reexamination is ordered. At the order stage, the Office will use
the broadest reasonable interpretation of the claims, without consideration
to any § 1.501(a)(2) statement relied upon in the detailed explanation of a
request.
New § 1.510(b)(6) requires that the request contain a certification that
the statutory estoppel provisions of inter partes review and post grant
review do not bar the third party from requesting ex parte reexamination.
To complement this revision, § 1.510(b)(7) requires that the request
contain, as part of the certification, a statement identifying the real
party(ies) in interest to the extent necessary to determine whether an
inter partes review or post grant review filed subsequent to an ex parte
reexamination bars the third party from maintaining a pending ex parte
reexamination. An ex parte reexamination requester has the option to remain
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 319 |
anonymous. In order to do so, the requester must: (1) Submit the statement
identifying the real party(ies) in interest as a separate paper; (2) title
the paper as a statement identifying the real party(ies) in interest; (3)
request in the paper that the Office to retain the paper in confidence by
sealing it; and (4) include, in a clear and conspicuous manner, an
appropriate instructional label designating the statement as a non-public
submission, e.g., NOT OPEN TO THE PUBLIC FOR OFFICE USE ONLY. The Office
will then maintain the real party(ies) in interest statement as a sealed,
non-public submission.
The estoppel provisions of inter partes review and post grant review are
provided in new 35 U.S.C. 315(e)(1) and 325(e)(1), respectively. These
estoppel provisions bar a request for ex parte reexamination (or
maintenance of an ex parte reexamination) by a third party requester, the
requester's real party(ies) in interest, or a privy, where the requester
petitioned for an inter partes review or post grant review of a claim in
the patent that resulted in a final written decision with respect to that
claim on any ground that the petitioner raised or reasonably could have
raised during that inter partes review or post grant review. The
certification and identification in new § § 1.510(b)(6) and 1.510(b)(7) are
consistent with the practice of real party(ies) in interest identification
certification used for existing inter partes reexamination. As was the case
for implementation of §§ 1.915(b)(7) and 1.915(b)(8) for inter partes
reexamination, the certification and identification to be implemented via
new §§ 1.510(b)(6) and 1.510(b)(7) address Congress's desire to prevent
harassment of the patent owner by third parties. See H.R. Rep. No. 112-98
(Part 1), at 48.
Section 1.515: Section 1.515 is revised to add: "A statement pursuant to
§ 1.501(a)(2) will not be considered by the examiner in the examiner's
determination on the request." New 35 U.S.C. 301(d) states: "A written
statement submitted pursuant to subSection (a)(2), and additional
information submitted pursuant to subSection (c) [of 35 U.S.C. 301], shall
not be considered by the Office for any purpose other than to determine the
proper meaning of a patent claim in a proceeding that is ordered * * *
pursuant to Section 304." The Office interprets 35 U.S.C. 301(d) as
prohibiting it from considering a § 1.501(a)(2) written statement when
making the determination of whether to order ex parte reexamination under
35 U.S.C. 303. See also H.R. Rep. No. 112-98, Part 1, at page 46 (2011).
In making the § 1.515(a) determination of whether to order ex parte
reexamination, the Office will generally (except in the rare case of an
expired patent), give the claims the broadest reasonable interpretation
consistent with the specification (See In re Yamamoto, 740 F.2d 1569, 222
USPQ 934 (Fed. Cir. 1984)). Consideration of the evidentiary weight to be
accorded to a 35 U.S.C. 301(a)(2) statement (as to the meaning of the
claims with respect to the ultimate patentability decision) will not be
given unless reexamination is ordered. If reexamination is ordered, the
patent owner statements submitted pursuant to 35 U.S.C. 301(a)(2) will be
considered to the fullest extent possible when determining the scope of any
claims in the patent which are subject to reexamination.
Section 1.552: § 1.552 is rewritten to include new subsection § 1.552(d)
to reflect the amendment of 35 U.S.C. 301 by section 6(g)(1) of the
Leahy-Smith America Invents Act. Proposed § 1.552(d) states: "Any statement
of the patent owner and any accompanying information submitted pursuant to
§ 1.501(a)(2) which is of record in the patent being reexamined (which
includes any reexamination files for the patent) may be used after a
reexamination proceeding has been ordered to determine the proper meaning
of a patent claim when applying patents or printed publications." New 35
U.S.C. 301(a)(2) permits a submission under 35 U.S.C. 301 to contain
"statements of the patent owner filed in a proceeding before a Federal
court or the Office in which the patent owner took a position on the scope
of any claim of a particular patent." Thus, written statements cited under
new 35 U.S.C. 301(a)(2) may be considered after an ex parte reexamination
proceeding has been ordered, but not in making the determination of whether
to order ex parte reexamination under 35 U.S.C. 303. See 35 U.S.C. 301(d).
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 320 |
See also H.R. Rep. No. 112-98, Part 1, at page 46 (2011).
The Office also proposes to change the nomenclature in title 37 CFR to
reflect renaming the "Board of Patent Appeals and Interferences" as the
"Patent Trial and Appeal Board," including changes for the new trial
proceedings of inter partes review, post grant review, and derivation.
Specifically, the Office proposes to change "Board of Patent Appeals and
Interferences" to the "Patent Trial and Appeal Board" in 37 CFR parts 1,
11, and 41 (in § § 1.1(a)(1)(ii), 1.4(a)(2), 1.6(d)(9), 1.8(a)(2)(i)(C),
1.9(g), 1.17(b), 1.36(b), 1.48(j), 1.136(a)(1)(iv), 1.136(a)(2), 1.136(b),
1.181(a)(1), 1.181(a)(3), 1.191, 1.197(a), 1.198, 1.248(c), 1.294(b),
1.301, 1.303(a), 1.304(a)(1), 1.304(a)(1)(ii), 1.324(d), 1.550(a),
1.701(a)(3), 1.701(c)(3), 1.702(a)(3), 1.702(b)(4), 1.702(e), 1.703(a)(5),
1.703(b)(4), 1.703(e), 1.704(c)(9), 1.937(a), 1.959, 1.979(a), 1.979(b),
1.981, 1.983(a), 1.983(c), 1.983(d), 1.983(f), 11.5(b)(1), 11.6(d),
41.1(a), 41.2, 41.10(a)-(c), and 41.77(a), and in the title of part 41).
The Office likewise proposes to add specific references to trial
proceedings before the Patent Trial and Appeal Board to § § 1.5(c), 1.6(d),
1.6(d)(9), 1.11(e), 1.136(a)(2), 1.136(b), 1.178(b), 1.248(c), 1.322(a)(3),
1.324(a), 1.324(d), 1.565(a), 1.565(e), 1.985(a), 1.985(b), 1.993, 10.1(s),
11.10(b)(3)(iii), and 11.57(b)(1)(i). Finally, the Office proposes to add
specific references to derivation proceedings to §§ 1.48(j), 1.55(a)(3)(i),
1.55(a)(4)(i)(A), 1.103(g), 1.136(a)(1)(v), 1.313(b)(4), 1.701(a)(1),
1.701(c)(1)(i-ii), 1.701(c)(2)(iii), 1.702(b)(2), 1.702(c),
1.703(b)(2)(i-ii), 1.703(b)(3)(iii), 1.703(c)(1-2), 1.703(d)(3), and
5.3(b).
III. Rulemaking Considerations
A. Administrative Procedure Act (APA): This proposed rule revises
existing rules governing prior art citations and patent owner statements in
a patent file and ex parte reexamination to implement the following
provisions of Sections 3 and 6 of the Leahy-Smith America Invents Act: (1)
Section 6(g) which amends 35 U.S.C. 301, to expand the scope of information
that can be submitted in the file of an issued patent; (2) the provisions
of Sections 6(a) and 6(d) (which newly enact inter partes review and post
grant review, respectively) that provide for estoppels effective as to
proceedings before the Office, including but not limited to reexamination;
and (3) Sections 3(j) and 7 which change the title "Board of Patent Appeals
and Interferences" to "Patent Trial and Appeal Board," and change
references to interference proceedings to derivation proceedings.
Therefore, the changes in this proposed rule are merely procedural
and/or interpretive. See Bachow Communs., Inc. v. FCC, 237 F.3d 683, 690
(DC Cir. 2001) (rules governing an application process are procedural under
the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244
F.3d 242, 350 (4th Cir. 2001) (rules for handling appeals were procedural
where they did not change the substantive standard for reviewing claims);
Nat'l Org. of Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d
1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a
statute is interpretive).
Accordingly, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law) and
thirty-day advance publication is not required pursuant to 5 U.S.C. 553(d)
(or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
(Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B),
does not require notice and comment rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization, procedure,
or practice.") (quoting 5 U.S.C. 553(b)(A)). The Office, however, is
publishing these changes for comment as it seeks the benefit of the
public's views on the Office's proposed implementation of these provisions
of the Leahy-Smith America Invents Act.
B. Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 or any other law,
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 321 |
neither a regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C.
603.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review):
The Office has complied with Executive Order 13563. Specifically, the
Office has, to the extent feasible and applicable: (1) Made a reasoned
determination that the benefits justify the costs of the rule; (2) tailored
the rule to impose the least burden on society consistent with obtaining
the regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public in
an open exchange of information and perspectives among experts in relevant
disciplines, affected stakeholders in the private §or and the public as a
whole, and provided on-line access to the rulemaking docket; (7) attempted
to promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote innovation;
(8) considered approaches that reduce burdens and maintain flexibility and
freedom of choice for the public; and (9) ensured the objectivity of
scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not contain
policies with federalism implications sufficient to warrant preparation of
a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking will
not: (1) Have substantial direct effects on one or more Indian tribes; (2)
impose substantial direct compliance costs on Indian tribal governments; or
(3) preempt tribal law. Therefore, a tribal summary impact statement is not
required under Executive Order 13175 (Nov. 6, 2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of Energy
Effects is not required under Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking meets
applicable standards to minimize litigation, eliminate ambiguity, and
reduce burden as set forth in Sections 3(a) and 3(b)(2) of Executive Order
12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking does
not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr. 21,
1997).
J. Executive Order 12630 (Taking of Private Property): This rulemaking
will not effect a taking of private property or otherwise have taking
implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the United States Senate, the
United States House of Representatives, and the Comptroller General of the
Government Accountability Office. The changes in this notice are not
expected to result in an annual effect on the economy of 100 million
dollars or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to compete
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 322 |
with foreign-based enterprises in domestic and export markets. Therefore,
this notice is not expected to result in a "major rule" as defined in 5
U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in this
notice do not involve a Federal intergovernmental mandate that will result
in the expenditure by State, local, and tribal governments, in the
aggregate, of 100 million dollars (as adjusted) or more in any one year, or
a Federal private §or mandate that will result in the expenditure by the
private §or of 100 million dollars (as adjusted) or more in any one year,
and will not significantly or uniquely affect small governments. Therefore,
no actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have any
effect on the quality of the environment and is thus categorically excluded
from review under the National Environmental Policy Act of 1969. See 42
U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The requirements of
Section 12(d) of the National Technology Transfer and Advancement Act of
1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does
not contain provisions which involve the use of technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the public.
This proposed rulemaking involves information collection requirements
which are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). The
collection of information involved in this notice has been submitted to
OMB under OMB control number 0651-00xx. The proposed collection will be
available at OMB's Information Collection Review Web site
(http://www.reginfo.gov/public/do/PRAMain).
Needs and Uses: This information collection is necessary so that the
public may file, in a patent, submissions of patents and printed
publications, and statements of the patent owner filed in a proceeding
before a Federal court or the Office in which the patent owner took a
position on the scope of any claim of the patent. The public may use this
information to aid in ascertaining the patentability and/or scope of the
claims of the patent.
Title of Collection: Post Patent Public Submissions.
OMB Control Number: 0651-00xx.
Method of Collection: By mail, facsimile, hand delivery, or
electronically to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 1,000 responses per year.
Estimated Time Per Response: The Office estimates that the responses in
this collection will take the public 10 hours.
Estimated Total Annual Respondent Burden Hours: 10,000 hours per year.
Estimated Total Annual Respondent Cost Burden: $3,400,000 per year.
The Office is soliciting comments to: (1) Evaluate whether the proposed
information requirement is necessary for the proper performance of the
functions of the Office, including whether the information will have
practical utility; (2) evaluate the accuracy of the Office's estimate of
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 323 |
the burden; (3) enhance the quality, utility, and clarity of the
information to be collected; and (4) minimize the burden of collecting the
information on those who are to respond, including by using appropriate
automated, electronic, mechanical, or other technological collection
techniques or other forms of information technology.
Please send comments on or before March 5, 2012 to Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA,
22313-1450, marked to the attention of Raul Tamayo, Legal Advisor, Office
of Patent Legal Administration, Office of the Associate Commissioner for
Patent Examination Policy. Comments should also be submitted to the Office
of Information and Regulatory Affairs, Office of Management and Budget, New
Executive Office Building, Room 10202, 725 17th Street NW., Washington, DC
20503, Attention: Desk Officer for the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to, nor shall a person be subject to a penalty for failure to
comply with, a collection of information subject to the requirements of the
Paperwork Reduction Act, unless that collection of information displays a
currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and record keeping requirements, Small
businesses, and Biologics.
For the reasons set forth in the preamble, 37 CFR Part 1 is proposed to
be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. The undesignated center heading before § 1.501 is revised to read as
follows:
Citation of Prior Art and Written Statements
3. Section 1.501 is revised to read as follows:
§ 1.501 Citation of prior art and written statements in patent files.
(a) Information content of submission: At any time during the period of
enforceability of a patent, any person may file a written submission with
the Office under this Section, which is directed to the following
information:
(1) Prior art consisting of patents or printed publications which the
person making the submission states to have a bearing on the patentability
of any claim of the patent; or
(2) Statements of the patent owner filed in a proceeding before a
Federal court or the Office in which the patent owner took a position on
the scope of any claim of the patent. Any statement submitted under this
paragraph must be accompanied by any other documents, pleadings, or
evidence from the proceeding in which the statement was filed that address
the written statement, and such statement and accompanying information
under this paragraph must be submitted in redacted form to exclude
information subject to an applicable protective order. Submission of a
statement of the patent owner made outside of a Federal court or Office
proceeding and later filed for inclusion in a Federal court or Office
proceeding is not permitted by this Section, and such a submission will not
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 324 |
be entered into the patent file.
(b) Explanation included: A submission pursuant to paragraph (a) of this
Section:
(1) Must explain in writing the pertinence and manner of applying any
prior art submitted under paragraph (a)(1) of this Section and any written
statement and accompanying information submitted under paragraph (a)(2) of
this Section to at least one claim of the patent, in order for the
submission to become a part of the official file of the patent; and
(2) May, if the submission is made by the patent owner, include an
explanation of how the claims differ from any prior art submitted under
paragraph (a)(1) of this Section or any written statements and accompanying
information submitted under paragraph (a)(2) of this Section.
(c) Reexamination pending: If a reexamination proceeding has been
requested and is pending for the patent in which the submission is filed,
entry of the submission into the official file of the patent is subject to
the provisions of § § 1.502 and 1.902.
(d) Identity: If the person making the submission wishes his or her
identity to be excluded from the patent file and kept confidential, the
submission papers must be submitted anonymously without any identification
of the person making the submission.
(e) Service of the submission: A submission made under this Section must
reflect that a copy of the submission has been served upon the patent owner
at the correspondence address of record in the patent, in accordance with
§ 1.248, or that a bona fide attempt of service was made. A submission that
fails to include either proof of service or a sufficient explanation and
proof of a bona fide attempt of service will not be entered into the patent
file, and will be expunged if inadvertently entered.
(f) Consideration of statements of patent owner: Statements of the
patent owner and accompanying information submitted under paragraph (a)(2)
of this Section shall not be considered by the Office for any purpose other
than as provided for in 35 U.S.C. 301(d) . If reexamination is ordered, the
patent owner statements submitted pursuant to Section 301(a)(2) will be
considered when determining the scope of any claims in the patent subject
to reexamination.
4. Section 1.510 is amended by revising paragraph (b)(2), and adding new
paragraphs (b)(6) and (b)(7), to read as follows:
§ 1.510 Request for ex parte reexamination.
* * * * *
(b) * * *
(2) An identification of every claim for which reexamination is
requested, and a detailed explanation of the pertinency and manner of
applying the cited prior art to every claim for which reexamination is
requested. For each statement and accompanying information of the patent
owner submitted pursuant to § 1.501(a)(2) which is relied upon in the
detailed explanation, the request must explain how that statement is being
used to determine the proper meaning of a patent claim in connection with
the prior art applied to that claim and how each relevant claim is being
interpreted. If appropriate, the party requesting reexamination may also
point out how claims distinguish over cited prior art.
* * * * *
(6) A certification that the statutory estoppel provisions of both inter
partes review (35 U.S.C. 315(e)(1)) and post grant review (35 U.S.C.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 325 |
325(e)(1)) do not prohibit the ex parte reexamination.
(7) A statement identifying the real party(ies) in interest to the
extent necessary to determine whether any inter partes review or post
grant review filed subsequent to an ex parte reexamination bars a pending
ex parte reexamination filed by the real party(ies) in interest or its
privy from being maintained.
5. Section 1.515 is amended by revising paragraph (a) to read as
follows:
§ 1.515 Determination of the request for ex parte reexamination.
(a) Within three months following the filing date of a request for an ex
parte reexamination, an examiner will consider the request and determine
whether or not a substantial new question of patentability affecting any
claim of the patent is raised by the request and the prior art cited
therein, with or without consideration of other patents or printed
publications. A statement and any accompanying information submitted
pursuant to § 1.501(a)(2) will not be considered by the examiner in the
examiner's determination on the request. The examiner's determination will
be based on the claims in effect at the time of the determination, will
become a part of the official file of the patent, and will be mailed to the
patent owner at the address provided for in § 1.33(c) and to the person
requesting reexamination.
* * * * *
6. Section 1.552 is amended by adding new paragraph (d) to read as
follows:
§ 1.552 Scope of reexamination in ex parte reexamination proceedings.
* * * * *
(d) Any statement of the patent owner and any accompanying information
submitted pursuant to § 1.501(a)(2) which is of record in the patent being
reexamined (which includes any reexamination files for the patent) may be
used after a reexamination proceeding has been ordered to determine the
proper meaning of a patent claim when applying patents or printed
publications.
December 30, 2011 DAVID J. KAPPOS
Under §etary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
| Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act |
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2011-0073]
RIN 0651-AC67
Changes To Implement the Preissuance Submissions by
Third Parties Provision of the Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of patent practice to implement the
preissuance submissions by third parties provision of the Leahy-Smith
America Invents Act. This provision provides a mechanism for third parties
to contribute to the quality of issued patents by submitting to the Office,
for consideration and inclusion in the record of patent applications, any
patents, published patent applications, or other printed publications of
potential relevance to the examination of the applications. A preissuance
submission may be made in any non-provisional utility, design, and plant
application, as well as in any continuing or reissue application. A
third-party preissuance submission must include a concise description of
the asserted relevance of each document submitted and be submitted within a
certain statutorily specified time period. The third party must submit a
fee as prescribed by the Director and a statement that the submission
complies with all of the statutory requirements. The third-party
preissuance submission provision of the Leahy-Smith America Invents Act is
effective on September 16, 2012, and applies to any application filed
before, on, or after September 16, 2012.
Comment Deadline: Written comments must be received on or before March
5, 2012.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: preissuance_submissions@uspto.gov. Comments may also
be submitted by postal mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313 1450, marked
to the attention of Nicole D. Haines, Legal Advisor, Office of Patent Legal
Administration, Office of the Associate Commissioner for Patent Examination
Policy.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office prefers to
receive comments by electronic mail message over the Internet because
sharing comments with the public is more easily accomplished. Electronic
comments are preferred to be submitted in plain text, but also may be
submitted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Comments not submitted electronically should be
submitted on paper in a format that facilitates convenient digital scanning
into ADOBE[supreg] portable document format.
The comments will be available for public inspection at the Office of
the Commissioner for Patents, currently located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be
available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for public
inspection, information that the submitter does not desire to make public,
such as an address or phone number, should not be included in the comments.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 327 |
FOR FURTHER INFORMATION CONTACT: Nicole D. Haines, Legal Advisor ((571)
272 7717), Pinchus M. Laufer, Senior Legal Advisor ((571) 272-7726), or
Hiram H. Bernstein, Senior Legal Advisor ((571) 272-7707), Office of Patent
Legal Administration, Office of the Associate Commissioner for Patent
Examination Policy.
SUPPLEMENTARY INFORMATION: The Leahy-Smith America Invents Act was enacted
into law on September 16, 2011. See Public Law 112-29, 125 Stat. 284
(2011). This notice proposes changes to the rules of practice to implement
Section 8 of the Leahy-Smith America Invents Act, which provides a
mechanism for third parties to submit to the Office, for consideration and
inclusion in the record of a patent application, any patents, published
patent applications, or other printed publications of potential relevance
to the examination of the application.
Section 8 of the Leahy-Smith America Invents Act amends 35 U.S.C. 122 by
adding 35 U.S.C. 122(e), which enumerates certain conditions that apply to
a third-party preissuance submission to the Office in a patent application.
Pursuant to 35 U.S.C. 122(e), third-party preissuance submissions of
patents, published patent applications, or other printed publications must
be made in patent applications before the earlier of: (a) The date a notice
of allowance under 35 U.S.C. 151 is given or mailed in the application; or
(b) the later of (i) six months after the date on which the application is
first published under 35 U.S.C. 122 by the Office, or (ii) the date of the
first rejection under 35 U.S.C. 132 of any claim by the examiner during the
examination of the application. 35 U.S.C. 122(e) also requires a concise
description of the asserted relevance of each document submitted, a fee as
prescribed by the Director, and a statement by the person making the
third-party preissuance submission that the submission was made in
compliance with 35 U.S.C. 122(e). A preissuance submission by a third party
may be made in any non-provisional utility, design, or plant application,
as well as in any continuing or reissue application.
The preissuance submissions by third parties provision of the
Leahy-Smith America Invents Act takes effect on September 16, 2012. This
provision applies to any patent application filed before, on, or after
September 16, 2012.
The Office plans to permit third-party preissuance submissions to be
filed via the Office electronic filing system (EFS-Web). However,
third-party preissuance submissions, whether submitted in paper or
electronically via EFS-Web, would not be automatically entered into the
electronic image file wrapper (IFW) for an application. Instead,
preissuance submissions submitted by third parties would be reviewed to
determine compliance with 35 U.S.C. 122(e) and new 37 CFR 1.290 before
being entered into the IFW. Third parties filing preissuance submissions
electronically via EFS-Web, will receive immediate, electronic
acknowledgment of the Office's receipt of the submission, instead of
waiting for the Office to mail a return postcard.
The current EFS-Web Legal Framework prohibits third-party submissions
under 37 CFR 1.99 and 37 CFR 1.291 in patent applications because
electronically filed documents are instantly loaded into the IFW. See
Legal Framework for Electronic Filing System--Web (EFS-Web), 74 FR 55200,
55202, 55206-7 (October 27, 2009). Because third-party preissuance
submissions would be permitted to be filed electronically under the
proposed rule, the Office intends to protect applicants by establishing
procedures to determine whether a third-party preissuance submission is in
compliance with the requirements of new 37 CFR 1.290 before entering the
submission into the IFW of an application or making the submission
available to an examiner for consideration. The Office intends to complete
such determination, for both paper and electronic submissions, promptly
following receipt of the submission so that compliant preissuance
submissions would be quickly entered into the IFW and made available to the
examiner for consideration. Non-compliant third-party preissuance
submissions would not be entered into the IFW of an application or
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 328 |
considered and would be discarded. Also, no refund of the required fees
would be provided in the event a preissuance submission is determined to be
non-compliant. If an electronic mail message address is provided with a
third party preissuance submission, the Office may attempt to notify the
third party submitter of such non-compliance; however, the statutory time
period for making a preissuance submission would not be tolled by the
initial non-compliant submission.
The Office does not plan to require that the third party serve the
applicant with a copy of the third-party's preissuance submission. Nor does
the Office intend to directly notify the applicant upon entry of a
third-party preissuance submission. However, the contents of a compliant
third-party preissuance submission will be made available to the applicant
via its entry in the IFW of the patent application. By not requiring
service of third-party preissuance submissions on the applicant, the Office
is underscoring that such third-party submissions will not create a duty on
the part of the applicant to independently file the submitted documents
with the Office in an information disclosure statement (IDS). Additionally,
challenges regarding whether service of a third-party preissuance
submission was proper could negatively impact the pendency of the
application.
35 U.S.C. 122(e) does not limit third-party preissuance submissions to
pending applications. A third-party preissuance submission made within the
statutory time period, and otherwise compliant, would be entered even if
the application to which the submission is directed has been abandoned. An
examiner would not consider such preissuance submission unless the
application resumes a pending status (e.g., the application is revived, the
notice of abandonment is withdrawn, etc.). The abandonment of an
application will not, however, toll the statutory time period for making a
preissuance submission. Additionally, a third-party preissuance submission
made within the statutory time period, and otherwise compliant, would be
entered even if the application to which the submission is directed has not
been published.
Compliant third-party preissuance submissions would be considered by the
examiner when the examiner next takes up the application for action
following the entry of the preissuance submission into the IFW. An examiner
would consider the documents and concise descriptions submitted in a
compliant third-party preissuance submission in the same manner that the
examiner considers information and concise explanations of relevance
submitted as part of an IDS. Generally with the next Office action, a copy
of the third party's listing of documents, with an indication of which
documents were considered by the examiner, would be provided to the
applicant. Documents considered by the examiner would be printed on the
patent. Accordingly, an applicant would not need to file an IDS to have the
same documents that were previously submitted by a third party as part of a
compliant preissuance submission considered by the examiner in the
application.
The Office plans to have examiners acknowledge in the record of the
patent application the examiner's consideration of the documents submitted.
This will be done in a manner similar to that of the examiner's
consideration of applicant-submitted documents filed as part of an IDS. For
example, the examiner would indicate at the bottom of each page of a
preissuance submission "All documents considered except where lined
through," along with the examiner's electronic initials and the examiner's
electronic signature on the final page of the submission. See, e.g., Manual
of Patent Examining Procedure (MPEP) § 609.05(b) (8th ed. 2001) (Rev. 8,
July 2010). Such indication by the examiner placed at the bottom of each
page of a preissuance submission would mean that the examiner has
considered the listed documents and their accompanying concise
descriptions. Striking through a document would mean that the examiner did
not consider either the document or its accompanying concise description
(e.g., because the document was listed improperly, a copy of the document
was not submitted, or a concise description was not provided for that
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 329 |
document).
Since it would be advantageous for examiners to have the best art before
them prior to issuing the first Office action on the merits, and because a
first action allowance in the application could close the time period for
making a preissuance submission under 35 U.S.C. 122(e), third parties
should consider providing any preissuance submission at the earliest
opportunity. Additionally, because highly relevant documents can be
obfuscated by voluminous submissions, third parties should limit any
preissuance submission to the most relevant documents and should avoid
submitting documents that are cumulative in nature. Third parties need not
submit documents that are cumulative of each other or that are cumulative
of information already under consideration by the Office. Third parties are
reminded that 35 U.S.C. 122(e) requires that the documents submitted be "of
potential relevance to the examination of the application" and that the
relevance of each document submitted must be provided in an accompanying
concise description.
The Director is proposing to set the fees for third-party preissuance
submissions to recover costs to the Office for third-party preissuance
submissions to the Office. 35 U.S.C. 122(e) expressly provides for "such
fee as the Director may prescribe." The Office is setting fees for
third-party preissuance submissions in this rulemaking pursuant to its
authority under 35 U.S.C. 41(d)(2), which provides that fees for all
processing, services, or materials relating to patents not specified in 35
U.S.C. 41 are to be set at amounts to recover the estimated average cost to
the Office of such processing, services, or materials. See 35 U.S.C.
41(d)(2). The current rules of practice (37 CFR 1.99) provide for a
third-party submission of up to ten documents for the fee set forth in 37
CFR 1.17(p) (currently $180.00). The Office expects the processing costs to
the Office for third-party preissuance submissions under new 37 CFR 1.290
to be equivalent to the processing costs to the Office for submissions
under 37 CFR 1.99. Accordingly, the Office has determined that the fee set
forth in 37 CFR 1.17(p) would also be applicable to third-party preissuance
submissions under 37 CFR 1.290 and proposes to require the fee set forth in
37 CFR 1.17(p) for every ten documents, or fraction thereof, listed in each
third-party preissuance submission.
The Office proposes to provide an exemption from this fee requirement
where a preissuance submission lists three or fewer total documents and is
the first preissuance submission submitted in an application by a third
party or a party in privity with the third party. The Office is providing
this fee exemption for the first preissuance submission in an application
by a third party containing three or fewer total documents because the
submission of a limited number of documents is more likely to assist in the
examination process and thus offset the cost of processing the submission.
Moreover, keeping the size of the fee exempted submission to three or fewer
total documents will help to focus the attention of third parties on
finding and submitting only the most relevant art to the claims at hand.
Where one third party takes advantage of the fee exemption in an
application, another third party is not precluded from also taking
advantage of the fee exemption in the same application provided that the
third parties are not in privity with each other.
The Office proposes to implement 35 U.S.C. 122(e) in a new rule 37 CFR
1.290 and to eliminate § 1.99. While current § 1.99 provides for
third-party submissions of patents, published patent applications, or
printed publications, it does not permit an accompanying concise
description of relevance of each document and limits the time period for
such submissions to up to two months after the date of the patent
application publication, or the mailing of a notice of allowance, whichever
is earlier. By contrast, new 35 U.S.C. 122(e) and proposed 37 CFR 1.290
permit third parties to submit the same types of documents, but with an
accompanying concise description of relevance of each document submitted
and provide third parties with the same or more time to file preissuance
submissions with the Office when compared with current 37 CFR 1.99.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 330 |
Accordingly, the Office proposes to eliminate 37 CFR 1.99 in favor of new
37 CFR 1.290.
The Office also plans to eliminate the public use proceeding provisions
of 37 CFR 1.292. Because Section 6 of the Leahy-Smith America Invents Act
makes available a post-grant review proceeding in which prior public use
may be raised, the pre-grant public use proceeding set forth in 37 CFR
1.292 is no longer considered necessary. Additionally, information on prior
public use may be submitted by third parties by way of a protest in a
pending application when the requirements of 37 CFR 1.291 have been met,
and utilization of 37 CFR 1.291 would promote Office efficiency with
respect to treatment of these issues. Requests for a public use proceeding
under 37 CFR 1.292 are also very rare. The few public use proceedings
conducted each year are a source of considerable delay in the involved
applications and seldom lead to the rejection of claims.
In view of the proposed elimination of 37 CFR 1.99 and 37 CFR 1.292, the
Office proposes to amend 37 CFR 1.17 to eliminate the document submission
fees pertaining to 37 CFR 1.99 and 37 CFR 1.292. The Office also proposes
to amend 37 CFR 1.17 to add the document submission fees pertaining to new
37 CFR 1.290.
For ease of compliance, the Office proposes to amend 37 CFR 1.291 to
make the requirements for submitting protests against pending patent
applications more clear and, where appropriate, more consistent with the
proposed requirements of new 37 CFR 1.290.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to be
amended as follows:
Section 1.99: Section 1.99 is proposed to be removed and reserved.
Section 1.99 is unnecessary because proposed § 1.290 provides for
third-party preissuance submissions of patents, published patent
applications, and other printed publications to the Office for
consideration and inclusion in the record of a patent application, with a
concise description of the relevance of each document being submitted and
within time periods that are the same or greater than those permitted under
§ 1.99.
Section 1.290: Section 1.290(a) as proposed provides that a third party
may submit, for consideration and entry in the record of a patent
application, any patents, published patent applications, or other printed
publications of potential relevance to the examination of the application
if the submission complies with 35 U.S.C. 122(e) and the requirements of
§ 1.290, and provides that the submission will not be entered or considered
by the Office if the submission is not in compliance with 35 U.S.C. 122(e)
and § 1.290. Because § 1.290(a) as proposed requires preissuance
submissions be directed to patent applications, the Office would not accept
preissuance submissions directed to issued patents. Such submissions should
be filed in accordance with § 1.501. Section 1.290(a) as proposed does not
require that the application be published. For example, the Office would
accept a compliant preissuance submission directed to an application in
which a nonpublication request has been filed pursuant to 35 U.S.C.
122(b)(2)(B)(i) and § 1.213. Preissuance submissions under § 1.290 as
proposed may be directed to non-provisional utility, design, and plant
applications, as well as to continuing and reissue applications.
Also, § 1.290(a) as proposed limits the type of information that may be
submitted to patent publications, which include patents and published
patent applications, and other printed publications of potential relevance
to the examination of a patent application. For example, a submission under
§ 1.290 could not include unpublished internal documents or other
non-patent documents which do not qualify as "printed publications." See
MPEP § 2128. In the case of a preissuance submission that includes a
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 331 |
lengthy document, a third party could submit the relevant portion of the
document (e.g., one chapter of a book) in lieu of the entire document where
it is practical to do so. Because 35 U.S.C. 122(e) does not limit the type
of information that may be submitted to prior art, there is no requirement
in § 1.290(a) as proposed that the information submitted be prior art
documents in order to be considered by the examiner. Further, in those
situations where a third party is asserting that a document submitted is
prior art, the third party bears the burden of establishing the date of the
document where the date is not apparent from the document regardless
whether the document is in paper or electronic format. In such situations,
the third party may submit evidence in the form of affidavits,
declarations, or other evidence. Such evidence will not be counted toward
the document count, unless the document is in the form of a patent document
or other printed publication and the document, itself, is listed and
submitted for consideration by the examiner.
Section 1.290(b) as proposed sets forth the time periods in which a
third party may file a preissuance submission. Under § 1.290(b) as
proposed, any third-party submission under this section must be filed
before the earlier of: (1) The date a notice of allowance under § 1.311 is
given or mailed in the application; or (2) the later of: (i) six months
after the date on which the application is first published by the Office
under 35 U.S.C. 122(b) and § 1.211, or (ii) the date the first rejection
under § 1.104 of any claim by the examiner is given or mailed during the
examination of the application.
The time periods provided for in § 1.290(b) are statutory and cannot be
waived. Thus, the Office cannot grant any request for extension of the
§ 1.290(b) time periods. Also, preissuance submissions must be filed
before, not on, the dates identified in § 1.290(b)(i), (b)(2)(i), and
(b)(2)(ii). A preissuance submission under § 1.290 is filed on its date of
receipt in the Office as set forth in § 1.6 (the provisions of § 1.8 do not
apply to a preissuance submission under § 1.290). Third-party preissuance
submissions that are not timely filed would not be entered or considered
and would be discarded.
Proposed § 1.290(b)(2)(i) highlights a distinction in the statutory
language of 35 U.S.C. 122(c) and (e) with respect to publication of the
application. 35 U.S.C. 122(c) broadly refers to "publication of the
application," whereas new 35 U.S.C. 122(e) refers to an application "first
published under section 122 by the Office." The § 1.290(b)(2)(i) time
period would be initiated only by publications by the Office under 35
U.S.C. 122(b) and § 1.211, and would not be initiated by a publication by
the World Intellectual Property Organization (WIPO). Thus, an earlier
publication by WIPO of an international application designating the U.S.
filed on or after November 29, 2000, would not be considered a publication
that would initiate the § 1.290(b)(2)(i) time period for an application
which entered the national stage from the international application after
compliance with 35 U.S.C. 371. Further, where the Office republishes an
application due to material mistake of the Office pursuant to 37 CFR
1.221(b), the date on which the application is republished will be
considered the date the application is "first published by the Office"
under § 1.290(b)(2)(i).
The proposed new § 1.290(b)(2)(ii) time period would be initiated by the
date the first rejection under § 1.104 of any claim by the examiner is
given or mailed during the examination of the application. The
§ 1.290(b)(2)(ii) time period would not be initiated, for example, by a
first Office action that only contains a restriction requirement or where
the first Office action is an action under Ex parte Quayle, 1935 Dec.
Comm'r Pat. 11 (1935).
Section 1.290(c) as proposed requires a preissuance submission to be
made in writing. For a paper filing, the third party may include a
self-addressed postcard with the preissuance submission to receive an
acknowledgment by the Office that the preissuance submission has been
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 332 |
received. For an electronic filing, the third party will receive immediate,
electronic acknowledgment of the Office's receipt of the submission. In
either case, the third party will not receive any communications from the
Office relating to the submission other than the self-addressed postcard or
electronic acknowledgment of receipt. Section 1.290(c) as proposed also
requires that the application to which the third-party submission is
directed be identified on each page of the submission by application number
(i.e., the series code and serial number), except for the copies of the
documents that are being submitted pursuant to § 1.290(d)(3). By requiring
identification by application number, third-party preissuance submissions
could be timely matched with the application file and routed to the
examiner.
Section 1.290(d)(1) as proposed provides that any third-party submission
under § 1.290 must include a list of the documents being submitted, and the
listing must include a heading that identifies the listing as a third-party
preissuance submission under § 1.290. Proposed § 1.290(e) also sets forth
the requirements for identifying the documents being submitted and listed
pursuant to § 1.290(d)(1). The Office proposes to provide a form similar to
forms PTO/SB/08A and 08B to assist third parties in preparing the listing
of documents in accordance with §§ 1.290(d)(1) and (e) and to ensure that
the documents are properly made of record in the application file.
Section 1.290(d)(2) as proposed requires a concise description of the
asserted relevance of each listed document. 35 U.S.C. 122(e) requires that
each third-party preissuance submission be accompanied by a "concise
description of the asserted relevance of each document submitted." The
concise description should explain why the respective document has been
submitted and how it is of potential relevance to the examination of the
application in which the preissuance submission has been filed. Unless
there is no concise description provided for a document that is listed, or
the concise description is merely a bare statement that the document is
relevant and thus does not amount to a meaningful concise description, the
Office does not propose to otherwise evaluate the sufficiency of the
concise description. It would be a best practice that each concise
description point out the relevant pages or lines of the respective
document, particularly where the document is lengthy and complex and the
third party can identify a highly relevant section, such as a particular
figure or paragraph. The third party may present the concise description in
a format that would best explain to the examiner the relevance of the
accompanying document, such as in a narrative description or a claim chart.
Third parties should refrain from submitting a verbose description of
relevance not only because the statute calls for a "concise" description
but also because a focused description is more effective in drawing the
examiner's attention to the relevant issues.
Section 1.290(d)(3) as proposed requires submission of a legible copy of
each listed document. See § 1.98(a)(2) and MPEP § 609.04(a). Where only the
relevant portion of a document is listed, the third party could submit only
a copy of that portion (e.g., where a particular chapter of a book is
listed and not the entire book). When a copy of only a relevant portion of
a document is submitted, the third party should also submit copies of pages
of the document that provide identifying information (e.g., a copy of the
cover, the title page, the copyright information page, etc.). Under §
1.290(d)(3) as proposed, a third party need not submit copies of U.S.
patents and U.S. patent application publications, unless required by the
Office, as such documents are readily accessible to examiners.
Section 1.290(d)(4) as proposed requires an English language translation
of all relevant portions of any listed non-English language document to be
considered by the examiner.
Section 1.290(d)(5)(i) as proposed requires a statement by the party
making the submission that the party is not an individual who has a duty to
disclose information with respect to the application (i.e., each individual
associated with the filing and prosecution of the patent application) under
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 333 |
§ 1.56. Such statement is intended to avoid potential misuse of preissuance
submissions by applicants (e.g., by employing a third party "straw man") to
attempt to circumvent the IDS rules.
Section 1.290(d)(5)(ii) as proposed requires a statement by the party
making the submission that the submission complies with the requirements of
35 U.S.C. 122(e) and § 1.290. To facilitate compliance by third parties,
the Office proposes to provide a form for third-party preissuance
submissions under § 1.290 that includes the statements required by §§
1.290(d)(5)(i) and (ii).
Section 1.290(e) as proposed sets forth the requirements for identifying
the documents submitted and listed pursuant to § 1.290(d)(1). Section
1.290(e) requires that U.S. patents and U.S. patent application
publications be listed in a separate section from other documents.
Separating the listing of U.S. patents and U.S. patent application
publications from the listing of other documents would facilitate printing
the U.S. patents and U.S. patent application publications considered by the
examiner in a third-party preissuance submission on the face of the patent.
Section 1.290(e)(1) as proposed requires that each U.S. patent be
identified by patent number, first named inventor, and issue date. Section
1.290(e)(2) as proposed requires that each U.S. patent application
publication be identified by patent application publication number, first
named inventor, and publication date. Section 1.290(e)(3) as proposed
requires that each foreign patent or published foreign patent application
be identified by the country or patent office that issued the patent or
published the application, an appropriate document number, first named
inventor, and the publication date indicated on the patent or published
application. Requiring U.S. and foreign patent and published patent
application documents to be identified by the first named inventor should
aid in identifying the listed documents in the event the application
number, publication number, or other appropriate document number data is
inadvertently transposed or otherwise misidentified. Section 1.290(e)(4) as
proposed requires that each non-patent publication be identified by
publisher, author, title, pages being submitted, publication date, and
place of publication, where such information is available. The qualifier
"where available" applies to each item of information specified in §
1.290(e)(4). Thus, if an item of information is not available for a
particular non-patent publication (e.g., publisher information), the third
party need not provide that information, and the citation of the non-patent
publication would not be improper as a result of not providing that
information. Further, § 1.290(e)(4) as proposed does not preclude
additional information not specified in § 1.290(e)(4) from being provided
(e.g., journal title and volume/issue information for a journal article).
Section 1.290(e)(4) as proposed also provides that the third party bears
the burden of establishing the date of a non-patent publication where the
non-patent publication is asserted by the third party to be prior art and
the date is not apparent from the document, regardless whether the document
is in paper or electronic form.
Section 1.290(f) as proposed requires payment of the fee set forth in §
1.17(p) for every ten documents or fraction thereof being submitted, except
where the submission is accompanied by the statement set forth in proposed
§ 1.290(g). The Office proposes to determine the document count based on
the § 1.290(d)(1) listing of documents. Thus, if a document is listed but a
copy of the document is not submitted, the listed document would be counted
toward the document count. If a copy of a document is submitted but the
document is not listed, the document would not be counted or considered and
would be discarded. A third party would be permitted to cite less than an
entire publication in the § 1.290(d)(1) listing, which would be counted as
one document. Further, while a third party would be permitted to cite
different publications that are all available from the same electronic
source, such as a Web site, each such publication would be counted as a
separate document.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 334 |
Section 1.290(g) as proposed provides an exemption from the § 1.290(f)
fee requirement where a preissuance submission listing three or fewer total
documents is the first preissuance submission submitted in an application
by a third party, or a party in privity with the third party. Where one
third party takes advantage of the fee exemption in an application, another
third party is not precluded from also taking advantage of the fee
exemption in the same application as long as the third parties are not in
privity with each other. For example, applying the current 37 CFR 1.17(p)
fee of $180.00 in accordance with proposed §§ 1.290(f) and (g): (1) No fee
would be required for the first preissuance submission by a third party
containing three or fewer total documents; (2) a $180.00 fee would be
required for the first preissuance submission by a third party containing
more than three, but ten or fewer total documents: and (3) a $360.00 fee
would be required for the first preissuance submission by a third party
containing more than ten, but twenty or fewer total documents. For a second
or subsequent preissuance submission by the same third party: (1) A $180.00
fee would be required where the second or subsequent preissuance submission
by the third party contains ten or fewer total documents; and (2) a $360.00
fee would be required where the second or subsequent preissuance submission
by the same third party contains more than ten, but twenty or fewer total
documents.
To implement the fee exemption in § 1.290(g) and avoid potential misuse
of such exemption, the Office proposes to require that exemption-eligible
preissuance submissions be accompanied by a statement of the third party
that, to the knowledge of the person signing the statement after making
reasonable inquiry, the submission is the first and only preissuance
submission submitted in the application by the third party or a party in
privity with the third party. To preclude a third party from making
multiple preissuance submissions in the same application on the same day
and asserting that each such submission is the first preissuance submission
being submitted in the application by the third party, the § 1.290(g)
statement would require that the submission be the "first and only"
preissuance submission. This statement would not, however, preclude the
third party from making more than one preissuance submission in an
application, where the need for the subsequent submissions was not known at
the time the earlier submission including the § 1.290(g) statement was
filed with the Office. Such additional submissions would not be exempt from
the § 1.290(f) fee requirement.
The Office does not propose to entertain challenges to the accuracy of
such third-party statements because, pursuant to § 11.18(b), whoever
knowingly and willfully makes any false, fictitious, or fraudulent
statements or representations to the Office shall be subject to the
penalties set forth under 18 U.S.C. 1001. Section 11.18(b) applies to any
paper presented to the Office, whether by a practitioner or
non-practitioner.
Additionally, the Office does not propose to require an explicit
identification of a real party in interest because such identification
might discourage some third parties from making a preissuance submission or
invite challenges based on allegations of misidentification.
Section 1.290(h) as proposed provides that in the absence of a request
by the Office, an applicant has no duty to, and need not, reply to a
submission under § 1.290. Likewise, because the prosecution of a patent
application is an ex parte proceeding, no further response from a third
party with respect to an examiner's treatment of the third party's
preissuance submission would be permitted or considered.
Section 1.290(i) as proposed provides that the provisions of § 1.8 do
not apply to the time periods set forth in § 1.290.
Section 1.291: The Office proposes to amend portions of § 1.291 for
clarity and also for consistency with new 35 U.S.C. 122(e) and proposed
§ 1.290.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 335 |
Section 1.291(b) is proposed to be amended to clarify that the
application publication date is the date the application was published
under 35 U.S.C. 122(b), and § 1.211 and is also proposed to be amended by
including "given or" before "mailed" to provide for electronic notification
of the notice of allowance (i.e., e-Office action).
Section 1.291(b)(1) is proposed to be amended to more clearly define the
time period for submitting protests under § 1.291 that are accompanied by
applicant consent. Specifically, § 1.291(b)(1) is proposed to be amended to
provide that, if a protest is accompanied by the written consent of the
applicant, the protest will be considered if the protest is filed before a
notice of allowance under § 1.311 is given or mailed in the application.
This amendment would provide a definite standard for both the Office and
third parties and would give more certainty as to when a protest under §
1.291 that is accompanied by applicant consent would or would not be
accepted by the Office. Moreover, it is reasonable that the time period for
submission ends when a notice of allowance is given or mailed in the
application in view of the current publication process.
Under the current publication process, final electronic capture of
information to be printed in a patent will begin as soon as an allowed
application is received in the Office of Patent Publication, immediately
after the notice of allowance has been given or mailed. See MPEP § 1309.
Section 1.291(c)(1) is proposed to be amended to set forth the
requirements for identifying the information being submitted and listed,
consistent with proposed § 1.290(e). Section 1.291(c)(1)(i) as proposed to
be amended requires that each U.S. patent be identified by patent number,
first named inventor, and issue date. Section 1.291(c)(1)(ii) as proposed
to be amended requires that each U.S. patent application publication be
identified by patent application publication number, first named inventor,
and publication date. Section 1.291(c)(1)(iii) as proposed to be amended
requires that each foreign patent or published foreign patent application
be identified by the country or patent office that issued the patent or
published the application, an appropriate document number, first named
inventor, and the publication date indicated on the patent or published
application. Section 1.291(c)(1)(iv) as proposed to be amended requires
that each non-patent publication be identified by publisher, author, title,
pages being submitted, publication date, and place of publication, where
such information is available. The qualifier "where such information is
available" applies to each item of information specified in §
1.291(c)(1)(iv). Thus, if an item of information is not available for a
particular non-patent publication (e.g., publisher information), the
protestor need not provide that information, and the citation of the
non-patent publication would not be improper as a result of not providing
that information. Further, § 1.291(c)(1)(iv) as proposed to be amended does
not preclude additional information not specified in § 1.291(c)(1)(iv) from
being provided (e.g., journal title and volume/issue information for a
journal article). Section 1.291(c)(1)(v) as proposed to be amended requires
that each item of other information be identified by date, if known.
Requiring U.S. and foreign patent and published patent application
documents to be identified by the first named inventor should aid in
identifying the listed documents in the event the application number,
publication number, or other appropriate document number data is
inadvertently transposed or otherwise misidentified.
Section 1.291(c)(2) is proposed to be amended to change "explanation" to
"description" to conform to proposed § 1.290(d)(2). This amendment would
clarify that there is no difference between the concise description of
relevance for a third-party preissuance submission and the concise
description of relevance for a protest.
Section 1.291(c)(3) is proposed to be amended to clarify that copies of
information submitted must be legible. See § 1.98(a)(2) and MPEP §
609.04(a). § ion 1.291(c)(3) is also proposed to be amended to provide that
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 336 |
copies of U.S. patents and U.S. patent application publications would not
need to be submitted, unless required by the Office, as such documents are
readily accessible to examiners.
Section 1.292: Section 1.292 is proposed to be removed and reserved. The
practice of providing a pre-grant public use proceeding as set forth in §
1.292 is no longer considered necessary, and is inefficient as compared to
alternative mechanisms available to third parties for raising prior public
use; for example, as provided for by § 1.291 protests, where appropriate,
and also by Section 6 of the Leahy-Smith America Invents Act which makes
available a post-grant review proceeding.
Sections 1.17 and 41.202: Sections 1.17 and 41.202 would also be amended
to change or remove references to §§ 1.99 and 1.292, for consistency with
the proposed addition of new § 1.290 and removal of §§ 1.99 and 1.292.
Section 1.17(i) would also be amended to correct a misidentification of §
1.53(b)(3) to § 1.53(c)(3) concerning the fee for converting a provisional
application filed under § 1.53(c) into a nonprovisional application under §
1.53(b).
Rulemaking Considerations
A. Administrative Procedure Act: This notice proposes changes to the
rules of practice concerning the procedure for filing third party
preissuance submissions. The changes proposed in this notice do not change
the substantive criteria of patentability. Therefore, the changes in this
proposed rule are merely procedural and/or interpretive. See Bachow
Communs., Inc. v. FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an
application process are procedural under the Administrative Procedure Act);
Inova Alexandria Hosp. v. Shalala, 244 F.3d 242, 350 (4th Cir. 2001) (rules
for handling appeals were procedural where they did not change the
substantive standard for reviewing claims); Nat'l Org. of Veterans'
Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001) (rule that clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law) and
thirty-day advance publication is not required pursuant to 5 U.S.C. 553(d)
(or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
(Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B),
does not require notice and comment rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization, procedure,
or practice.") (quoting 5 U.S.C. 553(b)(A)). The Office, however, is
publishing these changes and the Regulatory Flexibility Act certification
discussion below, for comment as it seeks the benefit of the public's views
on the Office's proposed implementation of this provision of the
Leahy-Smith America Invents Act.
B. Regulatory Flexibility Act: For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that changes proposed in this notice will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b). This notice proposes changes to the rules of
practice to implement section 8 of the Leahy-Smith America Invents Act,
which provides a mechanism for third parties to submit to the Office, for
consideration and inclusion in the record of a patent application, any
patents, published patent applications, or other printed publications of
potential relevance to the examination of the application.
The changes proposed in this notice concern requirements for third
parties submitting patents, published patent applications, or other printed
publications in a patent application. The burden to all entities, including
small entities, imposed by these rules is a minor addition to that of the
current regulations for third-party submissions under § 1.99. Consistent
with the current regulations, the Office will continue to require third
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 337 |
parties filing submissions to, for example, file a listing of the documents
submitted along with a copy of each document, with minor additional
formatting requirements. Additional requirements proposed in this notice
are requirements of statute (e.g., the concise explanation) and thus the
sole means of accomplishing the purpose of the statute. Because of the
expanded scope of submissions under this rulemaking and additional
requirements by statute, the Office believes this will take a total of 10
hours at a cost of $3,400.00 per submission. Furthermore, the Office
estimates that no more than 730 small entity third parties will make
preissuance submissions per year. Therefore, the changes proposed in this
notice will not have a significant economic impact on a substantial number
of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review):
The Office has complied with Executive Order 13563. Specifically, the
Office has, to the extent feasible and applicable: (1) Made a reasoned
determination that the benefits justify the costs of the rule; (2) tailored
the rule to impose the least burden on society consistent with obtaining
the regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public in
an open exchange of information and perspectives among experts in relevant
disciplines, affected stakeholders in the private sector and the public as
a whole, and provided on-line access to the rulemaking docket; (7)
attempted to promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote innovation;
(8) considered approaches that reduce burdens and maintain flexibility and
freedom of choice for the public; and (9) ensured the objectivity of
scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not contain
policies with federalism implications sufficient to warrant preparation of
a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking will
not: (1) Have substantial direct effects on one or more Indian tribes; (2)
impose substantial direct compliance costs on Indian tribal governments; or
(3) preempt tribal law. Therefore, a tribal summary impact statement is not
required under Executive Order 13175 (Nov. 6, 2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of Energy
Effects is not required under Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking meets
applicable standards to minimize litigation, eliminate ambiguity, and
reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order
12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking does
not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr. 21,
1997).
J. Executive Order 12630 (Taking of Private Property): This rulemaking
will not effect a taking of private property or otherwise have taking
implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 338 |
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the United States Senate, the
United States House of Representatives, and the Comptroller General of the
Government Accountability Office. The changes in this notice are not
expected to result in an annual effect on the economy of 100 million
dollars or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to compete
with foreign-based enterprises in domestic and export markets. Therefore,
this notice is not expected to result in a "major rule" as defined in 5
U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in this
notice do not involve a Federal intergovernmental mandate that will result
in the expenditure by State, local, and tribal governments, in the
aggregate, of 100 million dollars (as adjusted) or more in any one year, or
a Federal private sector mandate that will result in the expenditure by the
private sector of 100 million dollars (as adjusted) or more in any one
year, and will not significantly or uniquely affect small governments.
Therefore, no actions are necessary under the provisions of the Unfunded
Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have any
effect on the quality of environment and is thus categorically excluded
from review under the National Environmental Policy Act of 1969. See 42
U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The requirements of
section 12(d) of the National Technology Transfer and Advancement Act of
1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does
not contain provisions which involve the use of technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the public.
This rulemaking proposes changes to the rules of practice that would impact
existing information collection requirements previously approved by the
Office of Management and Budget (OMB) under OMB Control Number 0651-0062.
Accordingly, the Office will submit to the OMB a proposed revision to the
information collection requirements under 0651-0062. The proposed revision
will be available at the OMB's Information Collection Review Web site
(www.reginfo.gov/public/do/PRAMain).
Needs and Uses: This information collection is necessary so that the
public may submit patents, published patent applications, and other printed
publications to the Office for consideration in a patent application. The
Office will use this information, as appropriate, during the patent
examination process to assist in evaluating the patent application. The
Office will provide a form (PTO/SB/429) to assist the public in making a
submission of patents, published patent applications, and other printed
publications for consideration in a patent application.
Title of Collection: Third-Party Submissions and Protests.
OMB Control Number: 0651-0062.
Form Numbers: PTO/SB/429.
Method of Collection: By mail, facsimile, hand delivery, or
electronically to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 1,030 responses filed per year.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 339 |
Estimated Time per Response: The Office estimates that the responses in
this collection will take the public 10 hours.
Estimated Total Annual Respondent Burden Hours: 10,300 hours per year.
Estimated Total Annual Respondent Cost Burden: $3,502,000 per year.
Estimated Total Annual Non-hour Respondent Cost Burden: $131,400 per
year in the form of filing fees.
The Office is soliciting comments to: (1) Evaluate whether the proposed
information requirement is necessary for the proper performance of the
functions of the Office, including whether the information will have
practical utility; (2) evaluate the accuracy of the Office's estimate of
the burden; (3) enhance the quality, utility, and clarity of the
information to be collected; and (4) minimize the burden of collecting the
information on those who are to respond, including by using appropriate
automated, electronic, mechanical or other technological collection
techniques or other forms of information technology.
Please send comments on or before March 5, 2012 to Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, marked to the attention of Raul Tamayo, Legal Advisor,
Office of Patent Legal Administration, Office of the Associate Commissioner
for Patent Examination Policy. Comments should also be submitted to the
Office of Information and Regulatory Affairs, Office of Management and
Budget, New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Desk Officer for the Patent and Trademark
Office.
Notwithstanding any other provision of law, no person is required to
respond to, nor shall a person be subject to a penalty for failure to
comply with, a collection of information subject to the requirements of the
Paperwork Reduction Act, unless that collection of information displays a
currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and record keeping requirements, Small
Businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is proposed to
be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.99 is removed and reserved.
§ 1.99 [Reserved]
3. Section 1.290 is added as follows:
§ 1.290 Submissions by third parties in applications.
(a) A third party may submit, for consideration and entry in the record
of a patent application, any patents, published patent applications, or
other printed publications of potential relevance to the examination of the
application if the submission is in compliance with 35 U.S.C. 122(e) and
this section. A third-party submission in an application will not be
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 340 |
entered or considered by the Office if the submission is not in compliance
with 35 U.S.C. 122(e) and this section.
(b) Any third-party submission under this section must be filed before
the earlier of:
(1) The date a notice of allowance under § 1.311 is given or mailed in
the application; or
(2) The later of:
(i) Six months after the date on which the application is first
published by the Office under 35 U.S.C. 122(b) and § 1.211, or
(ii) The date the first rejection under § 1.104 of any claim by the
examiner is given or mailed during the examination of the application.
(c) Any third-party submission under this section must be made in
writing, and identify on each page of the submission, except for copies
required by paragraph (d)(3) of this section, the application to which the
submission is directed by application number.
(d) Any third-party submission under this section must include:
(1) A list of the documents being submitted;
(2) A concise description of the asserted relevance of each listed
document;
(3) A legible copy of each listed document, or the portion which caused
it to be listed, other than U.S. patents and U.S. patent application
publications, unless required by the Office;
(4) An English language translation of all relevant portions of any
listed non-English language document to be considered by the examiner; and
(5) A statement by the party making the submission that:
(i) The party is not an individual who has a duty to disclose
information with respect to the application under § 1.56; and
(ii) The submission complies with the requirements of 35 U.S.C. 122(e)
and this section.
(e) The list of documents required by paragraph (d)(1) of this section
must list U.S. patents and U.S. patent application publications in a
separate section from other documents, include a heading that identifies
the listing as a third-party preissuance submission under § 1.290, and
identify each:
(1) U.S. patent by patent number, first named inventor, and issue date;
(2) U.S. patent application publication by patent application
publication number, first named inventor, and publication date;
(3) Foreign patent or published foreign patent application by the
country or patent office that issued the patent or published the
application, first named inventor, an appropriate document number, and the
publication date indicated on the patent or published application; and
(4) Non-patent publication by publisher, author, title, pages being
submitted, publication date, and place of publication, where available. If
not apparent from the document, the third party bears the burden of
establishing the date of a non-patent publication where asserted to be
prior art.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 341 |
(f) Any third-party submission under this section must be accompanied by
the fee set forth in § 1.17(p) for every ten documents or fraction
thereof being submitted.
(g) The fee otherwise required by paragraph (f) of this section is
not required for a submission listing three or fewer total documents
that is accompanied by a statement by the party making the submission
that, to the knowledge of the person signing the statement after making
reasonable inquiry, the submission is the first and only submission
under 35 U.S.C. 122(e) submitted in the application by the party or a
party in privity with the party.
(h) In the absence of a request by the Office, an applicant has no duty
to, and need not, reply to a submission under this section.
(i) The provisions of § 1.8 do not apply to the time periods set forth
in this section.
4. Section 1.291 is amended by revising the introductory text of
paragraph (b) and paragraphs (b)(1) and (c) to read as follows:
§ 1.291 Protests by the public against pending applications.
* * * * *
(b) The protest will be entered into the record of the application if,
in addition to complying with paragraph (c) of this section, the protest
has been served upon the applicant in accordance with § 1.248, or filed
with the Office in duplicate in the event service is not possible; and,
except for paragraph (b)(1) of this section, the protest was filed prior to
the date the application was published under 35 U.S.C. 122(b) and § 1.211,
or a notice of allowance under § 1.311 was given or mailed, whichever
occurs first.
(1) If a protest is accompanied by the written consent of the applicant,
the protest will be considered if the protest is filed before a notice of
allowance under § 1.311 is given or mailed in the application.
* * * * *
(c) In addition to compliance with paragraphs (a) and (b) of this
section, a protest must include:
(1) A listing of the patents, publications, or other information relied
upon identifying:
(i) Each U.S. patent by patent number, first named inventor, and issue
date;
(ii) Each U.S. patent application publication by patent application
publication number, first named inventor, and publication date;
(iii) Each foreign patent or published foreign patent application by the
country or patent office that issued the patent or published the
application, an appropriate document number, first named inventor, and the
publication date indicated on the patent or published application;
(iv) Each printed publication is identified by publisher, author, title,
pages being submitted, publication date, and place of publication, where
available; and
(vi) Each item of other information by date, if known.
(2) A concise description of the relevance of each item listed pursuant
to paragraph (c)(1) of this section;
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 342 |
(3) A legible copy of each listed patent, publication, or other item of
information in written form, or at least the pertinent portions thereof,
other than U.S. patents and U.S. patent application publications, unless
required by the Office;
* * * * *
5. Section 1.292 is removed and reserved.
§ 1.292 [Reserved]
December 30, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
| Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act |
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No. PTO-P-2011-0074]
RIN 0651-AC68
Changes To Implement the Inventor's Oath or
Declaration Provisions of the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) proposes
changes to the existing rules of practice to implement the inventor's oath
or declaration provisions of the Leahy-Smith America Invents Act. The
Office proposes to revise and clarify the rules of practice relating to the
inventor's oath or declaration, including reissue oaths or declarations,
assignments containing oath or declaration statements from inventors, and
oaths or declarations signed by parties other than the inventors. In order
to better facilitate processing of patent applications, the Office further
proposes to revise and clarify the rules of practice for power of attorney
and prosecution of an application by an assignee.
DATES: Written comments must be received on or before March 6, 2012.
ADDRESSES: Comments should be sent be electronic mail message over the
Internet addressed to: oath_declaration@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments--Patents, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Hiram H. Bernstein, Senior Legal Advisor, Office of Patent
Legal Administration, Office of the Associate Commissioner for Patent
Examination Policy.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office prefers to
receive comments by electronic mail message over the Internet because
sharing comments with the public is more easily accomplished. Electronic
comments are preferred to be submitted in plain text, but also may be
submitted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Comments not submitted electronically should be
submitted on paper in a format that facilitates convenient digital scanning
into ADOBE[supreg] portable document format.
The comments will be available for public inspection at the Office of
the Commissioner for Patents, currently located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be
available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for public
inspection, information that the submitter does not desire to make public,
such as an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707),
Senior Legal Advisor, or Eugenia Jones ((571) 272-7727), Senior Legal
Advisor, or Terry J. Maciejewski ((571) 272-7730), Technical Writer-Editor,
Office of Patent Legal Administration, Office of the Associate Commissioner
for Patent Examination Policy.
SUPPLEMENTARY INFORMATION: The Leahy-Smith America Invents Act was enacted
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 344 |
into law on September 16, 2011. See Public Law 112-29, 125 Stat. 284
(2011). Section 4 of the Leahy-Smith America Invents Act amends 35 U.S.C.
115 and 118 to change the practice regarding an inventor's oath or
declaration. Section 20 of the Leahy-Smith America Invents Act amends 35
U.S.C. 116, 184, 251, and 256 (and other statutes) to remove the "without
any deceptive intention" provision. This notice proposes changes to the
rules of practice to implement the provisions of Section 4 of the
Leahy-Smith America Invents Act and the changes in Section 20 of the
Leahy-Smith America Invents Act that relate to the removal of the "without
any deceptive intention" language from 35 U.S.C. 116, 184, 251, and 256.
More specifically, Section 4(a) of the Leahy-Smith America Invents Act
amends 35 U.S.C. 115 to change the requirements for an inventor's oath or
declaration.
35 U.S.C. 115(a) provides that an application filed under 35 U.S.C.
111(a) or that commences the national stage under 35 U.S.C. 371 must
include, or be amended to include, the name of the inventor for any
invention claimed in the application. 35 U.S.C. 115(a) also provides that,
except as otherwise provided in 35 U.S.C. 115, each individual who is the
inventor or a joint inventor of a claimed invention in an application must
execute an oath or declaration in connection with the application.
35 U.S.C. 115(b) provides that an oath or declaration under 35 U.S.C.
115(a) must contain statements that the application was made or was
authorized to be made by the affiant or declarant, and the individual
believes himself or herself to be the original inventor or an original
joint inventor of a claimed invention in the application. There is no
longer a requirement in the statute that the inventor must state his
country of citizenship and that the inventor believes himself or herself to
be the "first" inventor of the subject matter (process, machine,
manufacture, or composition of matter) sought to be patented.
35 U.S.C. 115(c) provides that the Director may specify additional
information relating to the inventor and to the invention that is required
to be included in an oath or declaration under 35 U.S.C. 115(a).
35 U.S.C. 115(d)(1) provides that, in lieu of execution of an oath or
declaration by an inventor under 35 U.S.C. 115(a), the applicant for patent
may provide a substitute statement under the circumstances described in 35
U.S.C. 115(d)(2) and such additional circumstances as the Director
specifies by regulation. The circumstances set forth in 35 U.S.C. 115(d)(2)
in which the applicant may provide a substitute statement are limited to
the situations where an individual is unable to file the oath or
declaration under 35 U.S.C. 115(a) because the individual is deceased,
under legal incapacity, or cannot be found or reached after diligent
effort, or an individual is under an obligation to assign the invention but
has refused to make the oath or declaration required under 35 U.S.C.
115(a). Therefore, while an assignee, an obligated assignee, or a person
who otherwise shows sufficient proprietary interest in the matter may make
an application for patent as provided for in 35 U.S.C. 118, an oath or
declaration (or an assignment containing the required statements) by each
of the inventors is still required, except in the circumstances set forth
in 35 U.S.C. 115(d)(2) and in any additional circumstances specified by the
Director in the regulations. The contents of a substitute statement are set
forth in 35 U.S.C. 115(d)(3). Specifically, the substitute statement must
identify the individual to whom the statement applies, set forth the
circumstances for the permitted basis for filing the substitute statement
in lieu of the oath or declaration under 35 U.S.C. 115(a), and contain any
additional information, including any showing, required by the Director.
35 U.S.C. 115(e) provides for making the statements required under 35
U.S.C. 115(b) and (c) in an assignment of record and specifically permits
an individual who is under an obligation of assignment of an application to
include the required statements in the assignment executed by the
individual, in lieu of filing the statements separately.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 345 |
35 U.S.C. 115(f) provides that a notice of allowance under 35 U.S.C. 151
may be provided to an applicant only if the applicant has: (1) Filed each
required oath or declaration under 35 U.S.C. 115(a); (2) filed a substitute
statement under 35 U.S.C. 115(d); or (3) recorded an assignment meeting the
requirements of 35 U.S.C. 115(e). 35 U.S.C. 111(a)(2), however, continues
to require that an application filed under 35 U.S.C. 111(a) include an oath
or declaration as prescribed by 35 U.S.C. 115, and 35 U.S.C. 111(a)(3)
continues to permit the oath or declaration to be submitted after the
filing date of the application, but within such period and under the
conditions prescribed by the Director, including payment of a surcharge.
Likewise, 35 U.S.C. 371(c) continues to require an oath or declaration
complying with the requirements of 35 U.S.C. 115 for an international
application to enter the national stage, and 35 U.S.C. 371(d) continues to
require the oath or declaration to be submitted within the period
prescribed by the Director, and with the payment of a surcharge if required
by the Director and not submitted by the date of the commencement of the
national stage. Thus, the change to 35 U.S.C. 115 does not alter the
statutory authorization in 35 U.S.C. 111(a) and 371 for requiring the oath
or declaration to be submitted prior to examination of the application, and
requiring a surcharge for the submission of an oath or declaration after
the filing date of the application under 35 U.S.C. 111(a) or by the date of
the commencement of the national stage in an international application
entering the national stage under 35 U.S.C. 371.
35 U.S.C. 115(g)(1) provides that the requirements under 35 U.S.C. 115
shall not apply to an individual named as the inventor or a joint inventor
in an application that claims benefit under 35 U.S.C. 120, 121, or 365(c)
of an earlier-filed application, if: (1) An oath or declaration meeting the
requirements of 35 U.S.C. 115(a) was executed by the individual and was
filed in connection with the earlier-filed application; (2) a substitute
statement meeting the requirements of 35 U.S.C. 115(d) was filed in
connection with the earlier-filed application with respect to the
individual; or (3) an assignment meeting the requirements of 35 U.S.C.
115(e) was executed with respect to the earlier-filed application by the
individual and was recorded in connection with the earlier-filed
application. 35 U.S.C. 115(g)(2) provides that the Director may still
require a copy of the executed oath or declaration, the substitute
statement, or the assignment filed in connection with the earlier-filed
application to be filed in the later-filed application.
35 U.S.C. 115(h)(1) provides that any person making a statement under 35
U.S.C. 115 may withdraw, replace, or otherwise correct the statement at any
time. 35 U.S.C. 115(h)(1) also provides that if a change is made in the
naming of an inventor requiring the filing of one or more additional
statements, the Director shall establish regulations under which such
additional statements may be filed. 35 U.S.C. 115(h)(2) provides that if an
individual has executed an oath or declaration meeting the requirements of
35 U.S.C. 115(a) or an assignment meeting the requirements of 35 U.S.C.
115(e), then the Director cannot require that individual to subsequently
make any additional oath, declaration, or other equivalent statement in
connection with the application or any patent issuing thereon. 35 U.S.C.
115(h)(3) provides that a patent shall not be invalid or unenforceable
based upon the failure to comply with a requirement under this section if
the failure is remedied as provided under 35 U.S.C. 115(h)(1).
35 U.S.C. 115(i) provides that any declaration or statement filed
pursuant to 35 U.S.C. 115 must contain an acknowledgement that any willful
false statement made in the declaration or statement is punishable under 18
U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both. This
is similar to the provision in current 37 CFR 1.68.
Section 4(a)(2) of the Leahy-Smith America Invents Act amends 35 U.S.C.
121 to eliminate the sentence that provided for the Director to dispense
with the signing and execution of an oath or declaration or equivalent
statement by the inventor in a divisional application when the divisional
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 346 |
application is directed solely to subject matter described and claimed in
the original application as filed. This amendment to 35 U.S.C. 121 is
consistent with 35 U.S.C. 115(g)(1) because the inventor named in a
divisional application would not need to execute an oath or declaration or
equivalent statement for the divisional application regardless of whether
the divisional application is directed solely to subject matter described
and claimed in the original application.
Section 4(a)(3) of the Leahy-Smith America Invents Act amends 35 U.S.C.
111(a) to insert "or declaration" after "and oath."
Section 4(b)(1) of the Leahy-Smith America Invents Act amends 35 U.S.C.
118 to change the practice regarding the filing of an application by a
person other than the inventor. First, 35 U.S.C. 118 is amended to provide
that a person to whom the inventor has assigned or is under an obligation
to assign the invention may make an application for patent. Second, 35
U.S.C. 118 is amended to provide that a person who otherwise shows
sufficient proprietary interest in the matter may make an application for
patent on behalf of, and as agent for, the inventor on proof of the
pertinent facts and a showing that such action is appropriate to preserve
the rights of the parties. Finally, 35 U.S.C. 118 is amended to provide
that if a patent is granted on an application filed under 35 U.S.C. 118,
the patent shall be granted to the real party in interest. Under amended 35
U.S.C. 118, the Director may continue to provide whatever notice to the
inventor that the Director considers to be sufficient.
The changes to 35 U.S.C. 115 and 118 do not mean that a person to whom
the inventor has assigned or is under an obligation to assign the invention
may make an application for patent in all circumstances. They do, however,
recognize that an assignee or a person to whom the inventor is obligated to
assign can execute the oath or declaration. In those circumstances set
forth in 35 U.S.C. 115(d)(2), an assignee or person to whom the inventor is
under an obligation to assign, or a legal representative of the dead or
legally incapacitated inventor, is the applicant as is currently set forth
in 37 CFR 1.41(b).
Section 4(b)(2) of the Leahy-Smith America Invents Act includes a
conforming amendment to 35 U.S.C. 251 to provide for the filing of a
reissue application by an assignee of the entire interest if the
application for the original patent was filed by the assignee of the entire
interest.
Section 4(c) of the Leahy-Smith America Invents Act amends 35 U.S.C. 112
to change, inter alia, the undesignated paragraphs to subsections. Section
4(d) makes conforming amendments to 35 U.S.C. 111(b) to make reference to
the subsections of 35 U.S.C. 112.
Section 4(e) of the Leahy-Smith America Invents Act provides that the
amendments made by Section 4 shall take effect on September 16, 2012, and
shall apply to any patent application filed on or after September 16, 2012.
Section 20 of the Leahy-Smith America Invents Act amends 35 U.S.C. 116,
184, 251, and 256 to eliminate the "without any deceptive intention"
clauses from each portion of the statute. This change should not be taken
as an endorsement for applicants and inventors to act with "deceptive
intention" in proceedings before the Office. As discussed previously, 35
U.S.C. 115(i) requires that any declaration or statement filed pursuant to
35 U.S.C. 115 must contain an acknowledgement that any willful false
statement made in the declaration or statement is punishable under 18
U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both.
Section 20(l) of the Leahy-Smith America Invents Act provides that the
amendments made by Section 20 shall take effect on September 16, 2012, and
shall apply to proceedings commenced on or after September 16, 2012.
General discussion regarding implementation: 35 U.S.C. 115 as amended
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 347 |
permits the required inventor statements to be made in an oath or
declaration under 35 U.S.C. 115(a), a substitute statement under 35 U.S.C.
115(d), or an assignment under 35 U.S.C. 115(e). Since 35 U.S.C. 115 no
longer contains a requirement that the inventor identify his country of
citizenship, the Office will no longer require this information in the oath
or declaration. The other requirements for oaths or declarations currently
provided in 37 CFR 1.63 would be retained.
In view of 35 U.S.C. 115(d), the Office is proposing to permit an
assignee, a party to whom the inventor is legally obligated to assign the
invention, and a party who otherwise has a sufficient proprietary interest
to provide a substitute statement with respect to an inventor who is
deceased, is legally incapacitated, cannot be found or reached after
diligent effort, or refuses to sign the oath or declaration, even when
there are other inventors who are signing the oath, declaration, or
assignment with the required statements. This would provide an alternative
to the current procedure in which a legal representative (e.g., executor,
administrator, guardian, or conservator) must sign the oath or declaration
for a deceased or legally incapacitated inventor, and, if joint inventors
are signing the oath or declaration, the joint inventors must sign the oath
or declaration on behalf of an inventor who cannot be found or reached
after diligent effort or who refuses to sign the oath or declaration.
In view of 35 U.S.C. 115(e), the Office will permit inventors to make
the required statements in an assignment executed by the inventor and
recorded in the Office. When the inventors choose to do so, the Office is
proposing to require that the assignment cover sheet identify such an
assignment as also being an oath or declaration. 35 U.S.C. 111(a)(2)(C)
provides that the application "shall include an oath or declaration as
prescribed by section 115 of this title." Therefore, the Office is
proposing to require that a copy of any recorded assignment submitted
pursuant to 35 U.S.C. 115(e) as the inventor oath or declaration be filed
in the application, rather than merely making reference to its recording in
regard to the application.
Under 35 U.S.C. 115(f), the Office is permitted to delay requiring an
oath or declaration until an application is in condition for allowance. The
Office considered this option, but considers it better for the examination
process and patent pendency to continue to require the oath or declaration
during pre-examination.
The Office needs to know who the inventors are to prepare patent
application publications and publish applications at eighteen months from
their earliest filing date. The Office also needs to know who the inventors
are to conduct examination (under conditions of patentability in effect
today as well as in effect under the Leahy-Smith America Invents Act). For
instance, the Office must know the identity of the inventors to determine
what prior art may be applied against the claimed invention or whether to
issue a double patenting rejection. The inventorship in an application is
not set until an oath or declaration is filed. See 37 CFR 1.41(a)(1) (the
inventorship of a nonprovisional application is that inventorship set forth
in the oath or declaration as prescribed by 37 CFR 1.63, with certain
exceptions).
In addition, delaying the requirement for an oath or declaration until
allowance would also significantly add to overall patent pendency. The
current practice for completing applications (i.e., obtaining any
outstanding oath or declaration and filing fees) does not have a noticeable
effect on patent pendency because it takes place during pre-examination
when the application would otherwise be awaiting a first Office action by
the examiner and applications are placed in the queue for examination by
filing date order regardless of the date on which they are completed. No
Technology Center (other than designs) had average first action pendency
lower than twenty months to first action at the end of fiscal year 2011.
See United States Patent and Trademark Office Performance and
Accountability Report Fiscal Year 2011, at 162 (table 4) (2011). Thus, the
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 348 |
current practice of completing applications during pre-examination avoids
any noticeable impact on first action pendency and overall pendency. Stated
differently, forwarding applications for examination without an oath or
declaration would not change the first action pendency either under current
first action pendency or when the Office reaches a ten-month first action.
Changing the practice of completing applications during pre-examination
such that an oath or declaration is not required until an application is
otherwise in condition for allowance would require the Office to issue some
type of action (e.g., an action under Ex parte Quayle, 1935 Dec. Comm'r
Pat. 11 (1935)) to obtain an oath or declaration before the Office is able
to issue a notice of allowance under 35 U.S.C. 151. This would require an
extra action during the examination process in any application in which an
oath or declaration is not present before examination. About 33 percent of
applications do not contain an oath or declaration on filing. In addition,
based upon data for fiscal year 2011 in the Patent Application Location and
Monitoring (PALM) database system, the average time taken for applicants to
reply to an Ex parte Quayle action was 52 days, and the average time taken
by examiners to respond to an applicant's reply to an Ex parte Quayle
action was 32 days. Thus, a change in practice to permit an oath or
declaration to be filed after the Office is ready to mail a notice of
allowance could increase the total pendency for allowed applications by
between one and three months (depending upon whether only 33 percent of
applicants or all applicants delayed submission of an oath or declaration).
This is also why identification of the inventor(s) in the application
itself to be followed after the notice of allowance with the oath or
declaration is insufficient.
The approach that will allow for an efficient publication and
examination process while minimizing the impact on patent pendency is for
an application to be completed prior to examination. Assignees should
consider getting the oath or declaration and any assignment document
executed concurrently or in the common declaration-assignment document
provided for in 35 U.S.C. 115(e) before filing an application. The Office
also plans to streamline its practices to permit an assignee or an
obligated assignee to readily execute an oath or declaration, or a person
who otherwise shows sufficient proprietary interest to be able to readily
execute an oath or declaration on behalf of an inventor, when such inventor
is not able, willing, or available to execute the oath or declaration.
Finally, for those few applicants who actually need more time than is
permitted for completing applications during pre-examination, the Office
has practices that would permit an extended period for completing an
application (Pilot Program for Extended Time Period To Reply to a Notice To
File Missing Parts of Nonprovisional Application, 75 FR 76401 (Dec. 8,
2010)), and will be proposing other ways to permit applicants to have
additional time to complete an application for examination (see Track III
of the Enhanced Examination Timing Control Initiative, 75 FR 31763 (June 4,
2010)).
The Office also considered discontinuing the practice of charging a
surcharge for an application in which the oath or declaration is not
present on filing. Applications that are not complete on filing (e.g., are
filed without an oath or declaration, or without the filing fee) require
special processing on the part of the Office. The Office appreciates that
some applications need to be filed to avoid a loss of rights before all of
the formal documents or fees are ready, but the Office thinks that the cost
of the special processing required for such applications should be borne by
those applicants who require special processing and not by applicants whose
applications are complete on
filing.
Consistent with 35 U.S.C. 115(g), the Office will permit applicants who
executed an oath or declaration in a prior application, where appropriate,
to use a copy of that oath or declaration in all continuing applications,
including continuation-in-part applications, with the caveat that any added
inventors in the continuing application must execute an original oath or
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 349 |
declaration.
While the Office recognizes the ability of any person making a statement
under 35 U.S.C. 115 to correct the statement at any time, including after
issuance of the patent, as provided in 35 U.S.C. 115(h), the Office will
not review the submission of such a document if it is not timely presented
during prosecution of the application, except where there is a correction
of inventorship in a patent made pursuant to 35 U.S.C. 256 and 37 CFR
1.324.
Consistent with the amendments made to 35 U.S.C. 115 and 251, the Office
proposes changes to reissue practice to: (1) Delete the requirement for a
reissue oath or declaration to include a statement that all errors arose
without any deceptive intent on the part of the applicant; (2) eliminate
the requirement for a supplemental oath or declaration when a claim is
amended, and require a corrected oath or declaration only where all errors
previously identified in the reissue oath or declaration are no longer
being relied upon as the basis for reissue; (3) require applicants to
specifically identify any broadening of a patent claim, rather than merely
provide an alternative statement that applicant is correcting an error of
either claiming more or less than a patentee was entitled to claim; and (4)
clarify that a single claim containing both a broadening and a narrowing of
the claimed invention is to be treated as a broadening. These changes will
provide for more efficient processing of reissue applications and improve
the quality of patents, in accordance with the intent of the Leahy-Smith
America Invents Act. In order to implement the conforming amendment made to
35 U.S.C. 251 in Section 4(b)(2) of the Leahy-Smith America Invents Act,
the Office is also proposing to amend the rules to permit an assignee of
the entire interest who filed an application under 35 U.S.C. 118 that was
patented to sign the reissue oath or declaration in a reissue application
of such patent (even if the reissue application is a broadening reissue).
Where the Director grants a patent on an application filed under amended
35 U.S.C. 118 by a person other than the inventor, the Office must grant
the patent to the real party in interest. Therefore, the Office proposes to
require applicants other than the inventor to notify the Office of any
change in ownership of the application no later than payment of the issue
fee. Absent any such notification, the Office will presume no change in
ownership of the application has occurred.
The Office, under the authority provided by 35 U.S.C. 2(b)(2), also
proposes changes to the rules of practice for power of attorney,
prosecution of an application by an assignee, and foreign priority claims
to facilitate prosecution of applications and improve the quality of
patents. Juristic entities who seek to take over prosecution of an
application will need to do so via a registered practitioner. Juristic
entity includes entities such as corporations or other non-human entities
created by law and given certain legal rights. This practice is consistent
with the general rule in Federal courts that a juristic entity must be
represented by counsel admitted to practice before the court. See, e.g.,
Osborn v. Bank of United States, 22 U.S. (9 Wheat.) 738, 830 (1824) (a
corporation can appear in court only by attorney); Richdel, Inc. v.
Sunspool Corp., 699 F.2d 1366 (Fed.Cir.1983) (corporation must be
represented in court by an attorney); Southwest Express Co., Inc. v.
Interstate Commerce Commission, 670 F.2d 53, (5th Cir. 1982) (a corporation
or partnership must be represented in court by an attorney). The Office's
experience is that the vast majority of juristic entities act via a
registered practitioner, but a small number attempt to prosecute
applications "pro se."
Other proposed changes include: providing for the carryover of a power
of attorney in continuation and divisional applications, and in
continuation-in-part applications where the inventorship is the same as in
the immediate prior application; permitting practitioners who have acted
only in a representative capacity in an application to change the
correspondence address after a patent has issued; accepting the signature
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 350 |
of a practitioner of record on a statement under 37 CFR 3.73(b) on behalf
of an assignee without requiring further evidence of the practitioner's
authority to act on behalf of the assignee; providing a procedure for
handling conflicts between different purported assignees attempting to
control prosecution; and harmonizing the practice regarding foreign
priority claims with the practice regarding domestic benefit claims by
requiring both types of claims to be set forth in an application data
sheet.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to be
amended as follows:
Section 1.1: Section 1.1(e) is proposed to be amended to update the mail
stop designation for communications relating to patent term extensions
under 35 U.S.C. 156 to make it consistent with the Office's list of mail
stops. Mail stops assist the Office in routing correspondence to the office
or area assigned with treating it. Use of mail stops is not required but is
strongly recommended, even where the documents are submitted via the
Office's electronic filing system-Web (EFS-Web). A mail stop designation
can help the Office more quickly identify the type of document where
applicant did not select the correct document code when uploading a
document through EFS-Web. For this reason, use of mail stops is encouraged.
Applicants are reminded that initial requests for patent term extension
may not be submitted via EFS-Web and must be filed in paper. These initial
requests are handled differently by Office personnel than other types of
official patent correspondence. Therefore, the use of a mail stop will help
ensure that initial requests are properly recognized and processed in a
timely manner.
Section 1.4: Section 1.4(e) is proposed to be amended to require that a
payment by credit card in patent cases may only be submitted with an
original handwritten signature personally signed in permanent dark ink or
its equivalent. This change is proposed to avoid possible controversies
regarding use of an S-signature (§ 1.4(d)(2)) instead of a handwritten
signature (§ 1.4(d)(1)) for credit card payments, e.g., a request for
refund where there is a change of purpose by the applicant and the request
is based on use of an S-signature rather than a handwritten signature.
Section 1.31: Section 1.31 is proposed to be amended to create
paragraphs (a) and (b). Section 1.31(a) would retain the subject matter of
the first sentence of current § 1.31 with the second sentence of current §
1.31 being placed in paragraph (b). Section 1.31(a) is proposed to be
amended, under the authority provided by 35 U.S.C. 2(b)(2), to include a
provision that a juristic entity must be represented by a patent
practitioner. An additional clarification is provided that prosecution by a
juristic entity is governed by § 3.71(a), and the taking of action by an
assignee is governed by § 3.73. See also the discussion of § 1.33(f).
Section 1.32: Section 1.32(d) is proposed to be added to address the
filing in a continuing application of powers of attorney from the parent
application. Proposed § 1.32(d) provides that a power of attorney from a
prior application for which benefit is claimed under 35 U.S.C. 120, 121, or
365(c) in a continuing application may have effect in the continuing
application if the inventorship of the continuing application is the same
as the prior application or one or more inventors from the prior
application has been deleted in the continuing application, and if a copy
of the power of attorney from the prior application is filed in the
continuing application. Current § 1.63(d)(4) (proposed to be deleted in
this notice) provides that, when filing continuation and divisional
applications and including a copy of a declaration from the parent
application, applicants should "identify" in the continuation or divisional
any change in power of attorney that occurred after the filing of the
parent application. The requirement in § 1.63(d)(4) to "identify" the
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 351 |
change in power of attorney has been interpreted differently by applicants
causing confusion for the Office as to who has the power of attorney. For
example, some applicants have filed a copy of the power of attorney from
the parent, while others have filed a copy of only the notice of acceptance
of power of attorney or just made a statement about the power of attorney
in a transmittal letter that accompanied the continuation or divisional
application. Because of these past inconsistencies in "identifying" a
change in power of attorney, specifically requiring a copy of the power of
attorney from the prior application to be filed in the continuing
application (even where a change in power did not occur in the prior
application) will make the record clear with respect to who has power of
attorney.
The Office does not recommend that practitioners use a combined
declaration and power of attorney document and no longer provides a
combined declaration and power of attorney form on its Internet Web site.
The power of attorney should be from the assignee where one exists.
Otherwise, the assignee may be paying the bill, while the inventor is
providing the power of attorney, thereby possibly raising an issue as to
who is the practitioner's client. Additionally, relationships between an
assignee and the inventors may deteriorate. It is not uncommon in these
situations for inventors to stop cooperating, and in some cases, file
powers of attorney in an attempt to control prosecution of the application.
Section 1.32(e) is proposed to be added to clarify that, where a power
of attorney has been granted by all of the inventors (as opposed to the
assignee), the addition of an inventor pursuant to a request granted under
§ 1.48 results in the loss of that power of attorney unless the added
inventor provides a power of attorney consistent with the existing power
of attorney from the other inventors. This provision does not preclude a
practitioner from acting pursuant to § 1.34, if applicable.
A power of attorney is a written document by which a principal (i.e.,
the applicant for patent or assignee of entire interest) authorizes one or
more patent practitioners or joint inventors to act on his or her behalf.
See § 1.32(a). Where a power of attorney from the inventors is already
present in the application file, and a request is filed to add one or more
inventors pursuant to § 1.48, the grant of the § 1.48 request results in
the power of attorney of record being signed by less than all of the
inventors. The Manual of Patent Examining Procedure specifies that papers
giving a power of attorney in an application will not be accepted when
signed by less than all of the inventors unless accompanied by a petition
under § 1.183 and fee under § 1.17(f) demonstrating the extraordinary
situation where justice requires the waiver of the requirement in §
1.32(b)(4) that all of the inventors sign the power of attorney. See Manual
of Patent Examining Procedure (MPEP) § 402.10 (8th ed. 2001) (Rev. 8, July
2010). Because the inventive entity changes upon grant of the § 1.48
request, the power of attorney of record can no longer be effective in the
application.
It should be noted that a practitioner may only act in a representative
capacity on behalf of all of the applicants or owners of a patent
application, unless a petition is granted in accordance with MPEP § 402.10.
Section 1.34 does not authorize a practitioner to take action in a patent
application where he or she has authority or a power of attorney from less
than all of the inventors or owners, and is not provided as a means to
subvert the petition requirements set forth in MPEP § 402.10. Where a power
of attorney was already of record in the file prior to the filing and grant
of the § 1.48 request, and the practitioner cannot secure a power of
attorney from each added inventor, the procedures set forth in MPEP §
402.10 must be followed, unless a power of attorney from the assignee of
the entire right, title, and interest, or from partial assignees who
collectively make up the entire right, title, and interest (after ownership
is established pursuant to § 3.71) is filed.
Section 1.33: Section 1.33(a) is proposed to be amended to specify that
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 352 |
if an applicant provides more than one correspondence address in a single
paper or in multiple papers submitted on one day, the Office will select
one of the specified addresses for use as the correspondence address and,
if given, may select the correspondence address associated with a Customer
Number over a typed correspondence address. This proposal addresses the
problem that arises when applicants provide multiple correspondence
addresses in a single paper (e.g., providing both a typed correspondence
address and a Customer Number in a single paper) or multiple papers (e.g.,
an oath or declaration, a transmittal letter, and a preliminary amendment
that each includes a different correspondence address) on one day, and the
Office inadvertently did not select the correspondence address actually
desired by applicant. The Office may then need to re-mail papers to the
desired address. This proposed change does not affect the hierarchy
provided in § 1.76(d) for inconsistencies between an application data sheet
and other documents. The proposed change is intended to encourage
applicants to carefully review their submissions to ensure that the Office
receives clear instructions regarding the correspondence address.
Section 1.33(b)(3) is proposed to be removed and reserved in view of
changes proposed in § 1.33(f), which provides that a juristic entity may
prosecute a patent application only through a patent practitioner. See the
discussion of proposed § 1.33(f), below.
Section 1.33 is proposed to be amended to add a new § 1.33(f) to provide
that an assignee may only conduct prosecution of an application in
accordance with §§ 1.31 and 3.71. Thus, all papers submitted on behalf of a
juristic entity must be signed by a patent practitioner. This change is
proposed because juristic entities have been attempting to prosecute patent
applications before the Office pro se and consequently requesting
additional assistance from the examiner. Juristic entities attempting to
prosecute patent applications before the Office pro se also make more
procedural errors that result in delays in prosecution. Accordingly, this
proposal will facilitate a reduction in the Office backlog by reducing the
delays.
Section 1.33 is proposed to be amended to add a new § 1.33(g) to replace
§ 1.63(d)(4) with respect to the correspondence address. Where application
papers from a prior application are used in a continuing application and
the correspondence address was changed during the prosecution of the prior
application, an application data sheet or separate paper identifying the
updated correspondence address to be used for the continuing application
must be submitted. Otherwise, the Office may not recognize the change of
correspondence address effected during the prosecution of the prior
application. Where copies of submitted papers, e.g., an oath or
declaration, contain an outdated address (that was changed during
prosecution of the prior application), an application data sheet or
separate paper identifying the updated correspondence address to be used
must be submitted. Presently, some applicants file continuing applications
with copies of papers from the prior application that include
correspondence addresses to former law firms or that are no longer current.
The proposal would facilitate the processing of patent applications by the
Office by making it easier to determine the correct correspondence address
and reduce the number of instances where the Office mails correspondence to
an incorrect address.
Section 1.33 is proposed to be amended to add a new § 1.33(h) to provide
that a practitioner acting in a representative capacity in an application
may change the correspondence address after the patent has issued, provided
that the change of correspondence address is accompanied by a statement
that notice has been given to the applicant or owner. Proposed § 1.33(h) is
intended to provide a means for practitioners acting in a representative
capacity in an application to effect a change in correspondence address
after the patent has granted but would not provide authority to a
practitioner acting under § 1.34 to change the correspondence address in an
application after a § 1.63 oath or declaration by any of the inventors has
been filed. See § 1.33(a)(2).
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 353 |
Practitioners that file and prosecute an application in a representative
capacity, pursuant to § 1.34, usually provide their business address as the
correspondence address of record. Once the patent issues, some
practitioners attempt to withdraw as attorney or agent by filing a
petition, and also attempt to change the correspondence address to direct
correspondence to the applicant's or owner's address. Such attempts are not
successful as the current rules do not permit the correspondence address to
be changed by a practitioner acting in a representative capacity, nor will
the Office grant withdrawal where a practitioner is not of record. See
Change in Procedure for Requests to Withdraw from Representation In a
Patent Application, 1329 Off. Gaz. Pat. Office 99 (Apr. 8, 2008). There
have been instances where practitioners acting in a representative capacity
have indicated that they have repeatedly requested that the client change
the correspondence address, but the client has refused to submit the change
of correspondence address to the Office. Proposed § 1.33(h) would permit
practitioners to change the correspondence address after a patent has
issued where practitioners have provided notice to the applicants or
owners.
Section 1.41: Section 1.41(a)(3) is proposed to be amended to delete the
language regarding provision of the citizenship of each person believed to
be an inventor when the application papers for a nonprovisional application
are filed without an oath or declaration as prescribed by § 1.63, or when
application papers for a provisional application are filed without a cover
sheet as prescribed by § 1.51(c)(1). Thus, only the name and residence of
each person believed to be an inventor should be provided when
nonprovisional application papers are filed without an oath or declaration
or provisional application papers are filed without a cover sheet.
Section 1.41(a)(4) is proposed to be amended to simplify correction of
inventorship in a national stage application under 35 U.S.C. 371. Under the
current provision of § 1.41(a)(4), to correct inventorship, applicants must
either: (1) File an oath or declaration executed by the inventors
identified in the international phase and then follow the procedures under
§ 1.48(b) or (c) to correct inventorship due to claim amendments; or (2)
file a request to correct inventorship under § 1.497(d), where inventorship
was erroneously identified in the international phase. The proposed
amendment to § 1.41(a)(4) treats national stage applications as analogous
to applications filed under 35 U.S.C. 111(a) in that the first submission
of an executed oath or declaration acts to correct the earlier
identification of inventorship. See current § 1.48(f)(1).
Section 1.41(c) is proposed to be amended to differentiate between the
mere delivery of a patent application and other correspondence to the
Office and the signing of official correspondence. Proposed § 1.41(c) would
provide that any person may physically or electronically deliver an
application for patent and related correspondence, including fees, to the
Office on behalf of the inventor(s), except that an oath or declaration (§
1.63) can only be made in accordance with § 1.64. Proposed § 1.41(c) would
also provide that amendments and other papers must be signed in accordance
with § 1.33(b). This is consistent with the language of current § 1.33(b).
Section 1.42: Section 1.42 is proposed to be amended to set forth the
procedures for satisfying the oath or declaration provisions of 35 U.S.C.
115 for deceased and legally incapacitated inventors in paragraphs (a)
through (c). Current § 1.42 provides that in the case of the death of an
inventor, the legal representative (e.g., executor, administrator, etc.) of
the deceased inventor may make the necessary oath or declaration, and apply
for and obtain the patent. Current § 1.43 provides that in the case of an
inventor who is legally incapacitated, the legal representative (e.g.,
guardian, conservator, etc.) of the legally incapacitated inventor may make
the necessary oath or declaration, and apply for and obtain the patent. 35
U.S.C. 115(d) sets forth the permitted circumstances in which the applicant
for patent may provide a substitute statement in lieu of executing an oath
or declaration under 35 U.S.C. 115(a). Specifically, the permitted
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 354 |
circumstances in which a substitute statement may be made with respect to
an individual include: (1) Where the individual is deceased; (2) where the
individual is legally incapacitated; (3) where the individual cannot be
found or reached after diligent effort; or (4) where the individual is
under an obligation to assign the invention but has refused to make the
oath or declaration required under 35 U.S.C. 115(a). Proposed § 1.42 would
cover the first two permitted circumstances, while proposed § 1.47 would
cover the last two permitted circumstances. It is noted that 35 U.S.C.
115(d) also gives the Director the authority to specify additional
circumstances by regulation.
Amended 35 U.S.C. 118 provides for a person to whom the inventor has
assigned or is under an obligation to assign the invention to make an
application for patent, and for a person who otherwise shows sufficient
proprietary interest in the matter to make an application for patent on
behalf of, and as agent for, the inventor on proof of the pertinent facts
and a showing that such action is appropriate to preserve the rights of the
parties. Accordingly, the Office is proposing amendments to § 1.42 to
provide for the ability of the assignee, a party to whom the inventor is
under an obligation to assign the invention, or a party who otherwise shows
sufficient proprietary interest to execute the oath or declaration under §
1.63 in the case of a deceased or legally incapacitated inventor, in
addition to the legal representative of such an inventor. This oath or
declaration, together with any necessary showing, constitutes the
substitute statement provided for in 35 U.S.C. 115(d). The Office is
interpreting the term "person" as used in 35 U.S.C. 118 as including
juristic persons.
Proposed § 1.42(a) provides that in the case of the death or legal
incapacity of the inventor, the legal representative (e.g., executor,
administrator, guardian, or conservator) of the deceased or incapacitated
inventor, the assignee, a party to whom the inventor is under an obligation
to assign the invention or a party who otherwise shows sufficient
proprietary interest in the matter may execute the oath or declaration
under § 1.63. Proposed § 1.42(a) further provides that the oath or
declaration must comply with §§ 1.63(a) and (b) and identify the inventor
who is deceased or legally incapacitated. Proposed § 1.42(a) further
provides that a party who shows sufficient proprietary interest in the
matter executes the oath or declaration on behalf of the deceased or
incapacitated inventor.
Proposed § 1.42(b) provides that a party to whom the inventor is under
an obligation to assign the invention or a party who otherwise has
sufficient proprietary interest in the matter who is taking action under §
1.42 must file a petition, accompanied by the fee set forth in § 1.17(g)
and a showing, including proof of pertinent facts, either that: (1) The
deceased or incapacitated inventor is under an obligation to assign the
invention to the party; or (2) the party has sufficient proprietary
interest in the matter to execute the oath or declaration on behalf of the
deceased or incapacitated inventor and that such action is necessary to
preserve the rights of the parties. Legal representatives of deceased or
incapacitated inventors would be able to execute the oath or declaration
for such an inventor without the need for a petition, consistent with the
practice under current §§ 1.42 and 1.43. In addition, assignees would now
be able to execute the oath or declaration for a deceased or incapacitated
inventor without the need for a petition. However, a party to whom the
inventor is under an obligation to assign or a party who otherwise has
sufficient proprietary interest would need to file a petition as set forth
in proposed § 1.42(b) in order to execute the oath or declaration for a
deceased or incapacitated inventor. The proof required would be similar to
the current proof required when an assignee, a party to whom an inventor
has agreed in writing to assign the invention, or a party who otherwise
shows sufficient proprietary interest in the matter files a petition under
current § 1.47(b). The proof required to show proprietary interest and to
show that the action is necessary to preserve the rights of the parties in
a petition under current § 1.47(b) is discussed in MPEP §§ 409.03(f) and
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 355 |
(g). The language "or to prevent irreparable damage" contained in current
§ 1.47(b) has not been included in proposed § 1.42(b) because 35 U.S.C.
118, as amended by the Leahy-Smith America Invents Act, does not contain
this language.
Proposed § 1.42(c) contains language similar to current § 1.42 (second
sentence) with the addition of the term "assignee" and the limitation that
the intervention must be "pursuant to this section." Thus, where an
inventor dies during the time intervening between the filing of the
application and the granting of a patent thereon, the letters patent may be
issued to the legal representative or the assignee upon proper intervention
under § 1.42.
Section 1.43: Section 1.43 is proposed to be removed and reserved. The
provisions relating to inventors who are legally incapacitated are proposed
to be moved to § 1.42 and revised as discussed above.
Section 1.47: Section 1.47 is proposed to be amended to revise the
procedures for when an inventor refuses to sign the oath or declaration or
cannot be reached after diligent effort to sign the oath or declaration.
Current § 1.47(a) provides a petition procedure for when an inventor
refuses to sign the oath or declaration or cannot be reached after diligent
effort, which requires each of the available inventors to sign the oath or
declaration on behalf of himself or herself and the nonsigning inventor, a
petition including proof of the pertinent facts, the petition fee in §
1.17(g), and the last known address of the nonsigning inventor. Current §
1.47(b) provides a petition procedure for when all inventors are refusing
to sign the oath or declaration or cannot be reached after diligent effort
and thus no inventors are available to sign the oath or declaration. In
this situation, current § 1.47(b) permits a person to whom the inventor has
assigned or agreed in writing to assign the invention, or who otherwise
shows sufficient proprietary interest in the matter, to sign the oath or
declaration on behalf of and as agent for all the inventors. Current §
1.47(b) requires a petition including proof of pertinent facts, a showing
that such action is necessary to preserve the rights of the parties or to
prevent irreparable damage, the petition fee set forth in § 1.17(g), and
the last known address of all inventors. Thus, under the current rule, the
assignee, a party to whom the inventor has agreed in writing to assign the
invention, or a party who otherwise shows sufficient proprietary interest
in the matter can only sign the oath or declaration for a nonsigning
inventor under § 1.47(b), when there are no inventors available to sign the
oath or declaration.
Proposed § 1.47(a) provides that if an inventor or a legal
representative of a deceased or incapacitated inventor refuses to execute
the oath or declaration, or cannot after diligent effort be found or
reached to execute the oath or declaration, then the assignee of the
nonsigning inventor, a party to whom the inventor is obligated to assign
the invention, or a party who otherwise shows sufficient proprietary
interest may execute the oath or declaration. Proposed § 1.47(a) further
provides that a party who shows sufficient interest in the matter executes
the oath or declaration on behalf of the nonsigning inventor. This expands
the situations in which an assignee, a party to whom the inventor is
obligated to assign, or a party who otherwise shows sufficient proprietary
interest can execute the oath or declaration beyond what is permitted in
current § 1.47(b). Thus, even if other inventors are signing the oath or
declaration, the assignee of the nonsigning inventor, a party to whom the
inventor is obligated to assign, or a party who otherwise shows sufficient
proprietary interest would be able to execute the oath or declaration for
the nonsigning inventor, accompanied by the petition under proposed §
1.47(a).
Proposed § 1.47(b) provides that if a joint inventor or legal
representative of a deceased or incapacitated joint inventor refuses to
execute the oath or declaration, or cannot be found or reached after
diligent effort, the remaining inventor(s) may execute the oath or
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 356 |
declaration on behalf of himself or herself and the nonsigning inventor.
This is similar to the practice in current § 1.47(a) where the available
inventor(s) can execute the oath or declaration on behalf of himself of
herself and the nonsigning inventor. Current § 1.47(a) and (b) also apply
to nonsigning legal representatives, although not expressly stated in the
rule. Proposed § 1.47(a) and (b) make it explicit in the rule that the
provisions apply to nonsigning legal representatives of deceased or
incapacitated inventors.
Proposed § 1.47(c) provides that any oath or declaration executed
pursuant to § 1.47 must comply with the requirements of § 1.63(a) and (b)
and be accompanied by a petition that: (1) Includes the petition fee set
forth in § 1.17(g); (2) identifies the nonsigning inventor, and includes
the last known address of the nonsigning inventor; and (3) states either
that the inventor or legal representative cannot be reached after a
diligent effort was made, or has refused to execute the oath or declaration
when presented with a copy of the application papers, with proof of the
pertinent facts. The proof required to show that the inventor refuses to
execute the oath or declaration, or cannot be found or reached after
diligent effort, is the same level of proof currently required for § 1.47
petitions and is discussed in MPEP § 409.03(d).
In addition, proposed § 1.47(c)(4) requires a party to whom the
nonsigning inventor is under an obligation to assign the invention, or a
party who has sufficient proprietary interest in the matter acting under §
1.47(a) to also provide a showing, including proof of the pertinent facts,
either that: (1) The nonsigning inventor is under an obligation to assign
the invention to the party; or (2) the party has sufficient proprietary
interest in the matter to execute the oath or declaration on behalf of the
nonsigning inventor and that such action is necessary to preserve the
rights of the parties. The proof required would be similar to the current
proof required when an assignee, a party to whom an inventor has agreed in
writing to assign the invention, or a party who otherwise shows sufficient
proprietary interest in the matter files a petition under current §
1.47(b). As noted above in the discussion regarding proposed § 1.42, the
proof required to show proprietary interest and to show that the action is
necessary to preserve the rights of the parties is discussed in MPEP §
409.03(f) and (g). The language "or to prevent irreparable damage"
contained in current § 1.47(b) has not been included in proposed § 1.47(c)
because amended 35 U.S.C. 118 does not contain this language.
Proposed § 1.47(d) contains language similar to current § 1.47(c).
Specifically, proposed § 1.47(d) provides that the Office will publish
notice of the filing of the application in the Official Gazette, and the
Office may send notice of the filing of the application to the nonsigning
inventors at the address(es) provided in the petition under § 1.47. The
option to give notice via publication in the Official Gazette helps the
Office to reach nonsigning inventors, particularly when the Office knows
that such notice, if sent to the address(es) provided in the petition,
would only be returned to the Office as being undeliverable. Proposed §
1.47(d) also permits the Office to dispense with the notice provision in a
continuing application (including a continuation-in-part), not just a
continuation or divisional application, if notice regarding the filing of
the prior application was given to the nonsigning inventor such as by
publication in the Official Gazette.
Proposed § 1.47(e) provides that a nonsigning inventor or legal
representative may subsequently join in the application by submitting an
oath or declaration under § 1.63 subsequent to a § 1.47 petition being
granted. This is similar to language contained in current § 1.47(a) and (b)
that provides for a nonsigning inventor to subsequently join in the
application by filing an executed oath or declaration complying with §
1.63. Proposed § 1.47(e) also provides that the submission of an oath or
declaration by a nonsigning inventor or legal representative after a § 1.47
petition has been granted will not permit the nonsigning inventor or legal
representative to revoke or grant a power of attorney. This is not a change
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 357 |
in practice but is merely a clarification of power of attorney practice.
Section 1.48: Section 1.48 is proposed to be amended to add paragraph
(k) to provide for a simplified procedure for correcting inventorship in a
national stage application. As discussed below, current § 1.497(d) and (e),
which include provisions for correcting inventorship in a national stage
application, are proposed to be deleted. The corrective procedure in
proposed § 1.48(k) has been simplified in light of the amendment to 35
U.S.C. 116 eliminating the requirement that the error in inventorship
"arose without any deceptive intention" on the part of the inventor being
added or the inventor being deleted. Proposed § 1.48(k) provides that the
procedure in § 1.48(a) may also be used for correcting an error in
inventorship in a national stage application under 35 U.S.C. 371 prior to
becoming a nonprovisional application, and for correcting an error in the
inventive entity set forth in an executed declaration submitted under PCT
Rule 4.17(iv).
Section 1.48 is also proposed to be amended to eliminate the "without
deceptive intention" requirement (as this requirement has been eliminated
from 35 U.S.C. 116), and delete the reference to § 1.43 (as § 1.42 is
proposed to be amended to include the subject matter of § 1.43).
Section 1.53: Section 1.53(f)(4) is proposed to be amended by revising
reference to § 1.63(d) consistent with the proposed change in § 1.63(d).
Specifically, the terms "continuation" and "divisional" in paragraph (f)(4)
would be replaced by "continuing" to reflect that proposed § 1.63(d) also
covers continuation-in-part applications.
Section 1.55: Sections 1.55(a)(1)(i), (c), and (d)(1)(ii) are proposed
to be amended to require a foreign priority claim be identified in an
application data sheet (§ 1.76), or a supplemental application data sheet,
as is appropriate. The revision is intended to make clear what may be a
confusing practice to practitioners. Currently, a foreign priority claim
may be located anywhere in an application for § 1.55 compliance, while
compliance with current § 1.63(c) requires the foreign priority claim must
be supplied in an application data sheet or identified in the oath or
declaration. Thus, it is possible for an applicant's foreign priority claim
to comply with § 1.55, but not § 1.63(c). The proposed amendment
establishes a single location for the foreign priority claim in the
application data sheet, which would facilitate application processing by
providing practitioners with a clear location for the foreign priority
claim, and the Office with one location to quickly locate the foreign
priority claim.
35 U.S.C. 119(b) does not specify the particular location in the
application for setting forth a claim to the benefit of a prior foreign
application. However, 35 U.S.C. 119(b) provides that the foreign
application is identified by specifying the application number, country or
intellectual property authority, and filing date of each foreign
application for which priority is claimed. In addition, 37 CFR
1.55(a)(1)(i) requires identification of any foreign application having a
filing date before that of the application for which priority is claimed.
Providing this information in the application data sheet constitutes the
claim for foreign priority as required by 35 U.S.C. 119(b) and § 1.55(a).
Providing this information in a single location will facilitate more
efficient processing of applications, as the Office will only have to look
at one location for the priority claim and the most recent application data
sheet will govern. Currently, the Office must look at the specification,
amendments to the specification, the oath or declaration, the application
data sheet (if provided), and elsewhere to determine the priority claim.
When applicants provide inconsistent information relating to the claim for
foreign priority, the Office must then determine which priority claim
governs.
Additionally, providing this information in a single location will
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 358 |
facilitate review of patents and patent application publications, because
applications frequently provide a benefit and/or foreign priority claim in
the first sentence(s) of the specification, which is superseded by an
application data sheet that includes a different benefit or foreign
priority claim, and thus the benefit claim and/or foreign priority
information included in the first sentence(s) of the specification is
different from the benefit claim and/or foreign priority information
contained on the front page of the patent or patent application
publication. While the benefit and/or foreign priority claim on the front
page of the patent or patent application publication is usually correct,
anyone (including an examiner, a practitioner, or the public) reviewing the
patent or patent application publication must review the file history of
the application to verify this to be correct.
Since most applications are filed with an application data sheet,
requiring the benefit and/or foreign priority claims to be included in the
application data sheet will not require most practitioners to change their
practice.
Section 1.63: Section 1.63(a) is proposed to be amended to recite
applicability of the paragraph to both 35 U.S.C. 111(a) national
applications and 35 U.S.C. 371 national stage applications of international
PCT applications. Section 1.63(a)(1) is proposed to be amended to delete
the statement relating to a lack of a minimum age requirement as
unnecessary in view of the later requirement, proposed § 1.63(a)(6)
(reformatted from current § 1.63(b)(2)), that the person signing has
reviewed and understands the contents of the application.
Section 1.63(a)(2) is proposed to be amended to simplify the requirement
for the inventor name to be his or her full name without reference to a
family or given name, but an initial may only be provided for the middle
name. The requirement for a full name is sufficient, given that individuals
do not always have both a family name and a given name, or have varying
understandings of what a "given" name requires.
Section 1.63(a)(3) is proposed to be amended to delete the requirement
for identifying the country of citizenship for each inventor, as this
information has been deleted as a requirement from 35 U.S.C. 115. Section
1.63(a)(3) would also be amended to set forth a requirement to identify the
application to which the oath or declaration is directed (currently set
forth in § 1.63(b)(1)).
Section 1.63(a)(4) is proposed to be amended to delete the requirement
that the person executing the oath or declaration state that he or she is
believed to be the "first" inventor consistent with the language in 35
U.S.C. 115(b)(2) and with the statutory change to a first-inventor-to-file
system from a first-to-invent system. Additionally, § 1.63(a)(4) is
proposed to be clarified by adding the term "joint" before inventors and
referring to the submission of the oath or declaration rather than
referring to a patent being sought.
Section 1.63(a)(5) is proposed to be added to contain the requirement
from 35 U.S.C. 115(b)(1) that the oath or declaration state that the
application was made or was authorized to be made by the inventor.
Section 1.63(a)(6) is proposed to be added to contain the requirement
from current § 1.63(b)(2) that the person making the oath or declaration
has reviewed and understands the application. Sections 1.63(a)(4) and
(a)(6), as proposed, also require that the averments therein be applicable
in any application for which the oath or declaration is being submitted
such as a continuing application.
Section 1.63(a)(7) is proposed to be added to contain the requirement
from current § 1.63(b)(3) regarding the § 1.56 duty being acknowledged.
Section 1.63(b) is proposed to be amended by reciting the requirements
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 359 |
for the mailing address and the residence of an inventor (transferred from
current § 1.63(c)(1)), and adds the alternative of using an application
data sheet (transferred from current § 1.63(c)). The mailing address
requirement would be further clarified by noting that it is the address
where the inventor "customarily receives mail," which may encompass an
address where the inventor works, a post office box, or other address where
mail is received, even if it is not the main mailing address of the
inventor. The mailing address is for the benefit of the inventor in the
event that the Office needs to contact the inventor directly. Accordingly,
care should be taken in identifying the mailing address, but the
requirement is not one that the Office would investigate or confirm its
accuracy. Current §§ 1.63(b)(1) through (b)(3) are proposed to be deleted
as the requirements are moved to other portions of proposed § 1.63 (i.e.,
current paragraph (b)(1) is moved to paragraph (a)(3), current paragraph
(b)(2) is moved to paragraph (a)(6), and current paragraph (b)(3) is moved
to paragraph (a)(7)).
Section 1.63(c) and (c)(1) are proposed to be amended by moving the
current requirements to paragraph (b). Current § 1.63(c)(2) is proposed to
be amended by deleting the current requirement for identifying the claim
for foreign priority under § 1.55 in the oath or declaration. This
amendment reflects the Office's desire to harmonize presentation of a claim
for foreign priority under § 1.55 and of a claim for domestic benefit under
§ 1.78. The current requirement that the domestic claim for benefit be
placed in the first sentence(s) of the specification or an application data
sheet (§ 1.76), while requiring that a foreign priority claim be identified
in an oath or declaration or application data sheet has led to confusion by
applicants as to the proper placement of these priority or benefit claims
and to Office processing issues of such claims. As Section 3 of the
Leahy-Smith America Invents Act has placed foreign priority claims on equal
footing as domestic benefit claims regarding what may be relied upon as a
prior art date, it is important that there be one unified place that the
Office and the public can rely upon in determining the presence of these
claims. Accordingly, §§ 1.55 and 1.78 are proposed to be amended to provide
for a unified way in the application data sheet to present foreign priority
and domestic benefit claims for inclusion in a printed patent or a patent
application publication.
Sections 1.63(c)(1)(i) and (ii) are proposed to provide for the use of
assignments to also include the oath or declaration as provided in 35
U.S.C. 115(e). Proposed §§ 1.63(c)(1)(i) and (ii) would provide that the
inventor can, when executing an assignment of his or her invention, include
the information and statements that would be required under §§ 1.63(a) and
(b). Section 1.63(c)(1)(ii) would require that the assignment be made of
record by recording the assignment, and filing the copy of the assignment
in the application for which it is being used as an oath or declaration. If
the assignment has not been recorded prior to its reliance in an
application, the assignment may be sent for recording at the same time it
is being submitted in the application, provided applicant makes a statement
to that effect. Applicants need to be mindful of the proposed amendment in
§ 3.31 requiring a conspicuous indication, such as by use of a check-box on
the assignment cover sheet, to alert the Office that an assignment
submitted with an application is submitted for a dual purpose: recording in
the assignment database, such as to support a power of attorney, and for
use in the application as the oath or declaration. Assignments cannot be
recorded unless an application number is provided against which the
assignment is to be recorded.
Currently, when an assignment is submitted for recording along with a
paper application, the assignment is separated from the paper application
and forwarded to the Assignment Recordation Branch for recording in its
database at the time when the application is assigned an application
number. The assignment in such case does not become part of the application
file.
Under the proposed new permitted use of an assignment as including an
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 360 |
oath or declaration, the Office, when it receives an assignment with a
paper application filing, will continue to forward the assignment to the
Assignment Recordation Branch without making it part of the application
file, unless the check-box is used on the assignment cover sheet to
indicate the intended use of the assignment to comply with the oath or
declaration requirement. Where the check-box is used, the Office will make
a copy of the assignment to scan the assignment into the Image File Wrapper
(IFW) file for the application before forwarding it to the Assignment
Recordation Branch. Failure to utilize the check-box will result in a
Notice to File Missing Parts of Nonprovisional Application for an oath or
declaration, as the assignment will not be made part of the application
file and the Office will not recognize compliance with the § 1.63 oath or
declaration requirement. A copy of the assignment would need to be
submitted in reply to the Notice along with the surcharge for the late
submission of the oath or declaration.
The Office has considered not requiring use of a check-box and
automatically scanning an assignment into the IFW file for the application,
but the Office believes that applicants should be provided with the option
of submitting an assignment only for recordation purposes without such
assignment becoming part of the IFW file.
For EFS-Web filing of application papers, EFS-Web does not accept
assignments for recording purposes when filing an application. See Legal
Framework for Electronic Filing System--Web (EFS-Web), 74 FR 55200, 55202
(Oct. 27, 2009). Recording of assignments may only be done electronically
in EPAS (Electronic Patent Assignment System), notwithstanding the
existence of a link from EFS-Web to EPAS that can be utilized to file an
assignment after the application is filed. Accordingly, for EFS-Web
submissions, all assignments submitted on filing of the application or
later submitted will be made of record in the application (entered into the
Image File Wrapper (IFW)), and will not be forwarded to the Assignment
Recordation Branch for recordation by the Office. Thus, an assignment must
be separately submitted to the Assignment Recordation Branch, and in the
application file where the assignment is to be used for a dual purpose. It
is the intention of the Office to develop a system whereby one submission
of an assignment can be electronically treated for the dual purpose.
The Office considered whether a clarifying amendment to § 1.12(b) should
be made to state that a recorded assignment should be available to the
public where it is used as the oath or declaration. However, assignment
records are available to the public whenever the related application is
available to the public. As proposed, a copy of the recorded assignment
document would become part of the application file and would be available
to the public when the application becomes available to the public.
Section 1.63(c)(2) is proposed to provide that any reference to an oath
or declaration pursuant to § 1.63 would include the assignment as provided
for in § 1.63.
Section 1.63(d)(1) is proposed to be amended to provide that a newly
executed oath or declaration in an application claiming benefit under 35
U.S.C. 120, 121, or 365(c) is not required in a later-filed application
where the oath or declaration in the earlier-filed application is compliant
with § 1.78. Section 1.63(d)(1) is also proposed to be amended to add a
reference to § 1.497(a).
The Office considered whether to restrict the use of a copy of an oath
or declaration to one from an "immediate" earlier-filed application, but
determined that an oath or declaration copy could be used from any
earlier-filed application in a chain of benefit claims so long as the oath
or declaration continues to be appropriate. This interpretation reflects
the breadth of the language utilized by the
statute.
35 U.S.C. 115(g)(1)(A) provides an exception to the requirement for an
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 361 |
oath or declaration for applications where the application claims the
benefit under 35 U.S.C. 120, 121, or 365(c) of the filing of an
earlier-filed application. As a claim for benefit under 35 U.S.C. 120
includes continuation-in-part (CIP) applications, it is also proposed to
extend the use of copies of oaths or declarations to CIP applications where
appropriate, in addition to the current continuations and divisional
applications, by the use of the term "continuing." Applicants are advised
that it would not be proper to submit any paper, e.g., a copy of a
declaration, in a continuing application that contains misstatements
relative to the continuing application. Sections 1.63(a)(4) and (a)(6) are
proposed to require that their statements (that the person executing the
oath or declaration believes the named inventor or joint inventors to be
the original inventor or original joint inventors of the claimed invention
in the application, and that the person making the oath or declaration has
reviewed and understands the contents of the application) be applicable to
the "application for which the oath or declaration is being submitted,"
which includes any continuing application for which a copy of an oath or
declaration is being submitted under 35 U.S.C. 115(g) and § 1.63(d). Thus,
the following statements in the oath or declaration must be true for the
continuing application in order for an oath or declaration from a prior
application to be properly submitted in the continuing application under 35
U.S.C. 115(g) and § 1.63(d): (1) That the person executing the oath or
declaration believes the named inventor or joint inventors to be the
original inventor or original joint inventors of the claimed invention in
the application for which the oath or declaration is being submitted (i.e.,
the oath or declaration states the correct inventorship for the continuing
application); (2) that the person making the oath or declaration has
reviewed and understands the contents of the application for which the oath
or declaration is being submitted, including the claims, as amended by any
amendment specifically referred to in the oath or declaration; and (3) that
the person making the oath or declaration acknowledges the duty to disclose
to the Office all information known to the person to be material to
patentability as defined in § 1.56.
Section 1.63(d)(1)(i) is proposed to be simplified by eliminating the
word "nonprovisional" as unnecessary since provisional applications do not
require an oath or declaration, and by referring to compliance with the
section as opposed to individual paragraphs of the section. Section
1.63(d)(1)(ii) is proposed to contain the requirement set forth in current
§ 1.63(d)(1)(iv) relating to the oath or declaration copy showing the
signature or an indication thereon that it was signed. The requirement of
current § 1.63(d)(1)(ii), relating to deleting inventors, is proposed to be
moved to proposed § 1.63(d)(2). The requirement of current §
1.63(d)(1)(iii) is proposed to be deleted in view of the applicability of
proposed § 1.63(d) to continuing applications, including
continuation-in-part applications. Current § 1.63(d)(1)(iv) subject matter,
relating to the presence of a signature, is proposed to be moved to
proposed § 1.63(d)(1)(ii). Section 1.63(d)(1)(iii) is proposed to require
that any new inventors named in the continuing application provide an
executed oath or declaration in compliance with this section.
Section 1.63(d)(2) is proposed to contain the requirements set
forth in current §§ 1.63(d)(1)(ii) and 1.63(d)(2) relating to
the continuing application seeking to name fewer inventors and a
statement requesting deletion of the name or names of the person who
are not inventors. It is also proposed to require that such a statement
requesting deletion be signed pursuant to § 1.33(b). Additionally,
proposed § 1.63(d)(2) applies to continuing applications to include
continuation-in-part applications, rather than just continuation and
divisional applications.
Section 1.63(d)(3) is proposed to contain the requirements of current §
1.63(d)(3), (d)(3)(i), and (d)(3)(ii) in simplified form. The provision for
submission of a copy of an oath or declaration where the earlier-filed
application has been accorded status under § 1.47 has been expanded to
cover § 1.42 situations relating to a deceased or legally incapacitated
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 362 |
inventor.
Current § 1.63(d)(4) is proposed to be deleted. The power of attorney in
a continuing application would be covered in proposed § 1.32. The
correspondence address in a continuing application would be treated in
proposed § 1.33(g).
Section 1.63(d)(5) is proposed to be deleted. Whether a newly executed
declaration by an added inventor is required in a continuing application
would be covered by § 1.63(d)(1).
Section 1.63(e) is proposed to be revised in that the current
requirement for a newly executed declaration in (CIP) applications would be
covered by § 1.63(d)(1). It is proposed that § 1.63(e) be amended to cover
the submission of oaths or declarations pursuant to 35 U.S.C. 115(h)(1). 35
U.S.C. 115(h)(1) provides that any person making a statement under this
section may at any time "withdraw, replace, or otherwise correct the
statement at any time." Section 1.63(e) as proposed would acknowledge that
an oath or declaration submitted at any time pursuant to 35 U.S.C.
115(h)(1) would be placed in the file record of the application or patent,
but may not be reviewed by the Office in view of the open ended time frame
that the statute provides. Oaths or declarations submitted pursuant to 35
U.S.C. 115(h)(1) that are timely submitted during prosecution of an
application would continue to be reviewed for compliance. A reminder is set
forth that mere submission of an oath or declaration pursuant to 35 U.S.C.
115(h)(1) would not, however, act to correct inventorship as compliance
with § 1.48 in an application and § 1.324 in a patent is required.
Section 1.64: Section 1.64(b) is proposed to be amended to eliminate the
requirement that the oath or declaration must state the citizenship of the
legal representative who is signing the oath or declaration for a deceased
inventor. Since the requirement for an inventor to state his country of
citizenship in the oath or declaration has been eliminated from 35 U.S.C.
115, there is no basis to require the legal representative of an inventor
to state the legal representative's citizenship. Section 1.64(b) is also
proposed to be amended to change the phrase "deceased inventor" to
"deceased or legally incapacitated inventor" in the second sentence. This
change would require both a legal representative of a deceased inventor and
a legal representative of an incapacitated inventor to state that the
person is a legal representative. Additionally, the residence and mailing
address of the legal representative would also be required, but § 1.64 is
proposed to be amended to permit such information to be provided in an
application data sheet. This will permit the submission of such information
without requiring additional contact with the legal representative of a
deceased or legally incapacitated inventor. Section 1.64(b) is also
proposed to be amended to delete the reference to § 1.43 since § 1.43 is
proposed for combination with § 1.42.
Section 1.67: The title of § 1.67 is proposed to be amended to
"Noncompliant oath or declaration" to better focus on the purpose of the
rule. 35 U.S.C. 115(h) limits the situations in which the Office may
require a supplemental oath or declaration. Section 1.67 is amended to
address the manner in which deficiencies in an oath or declaration can be
corrected.
Section 1.67(a) is proposed to be amended to refocus the language
therein away from a supplemental oath or declaration to an oath or
declaration that complies with the requirements of 35 U.S.C. 115 and § 1.63
or 1.162. Sections 1.67(a)(1) and (2) are proposed to be amended to conform
to the changes to the title and § 1.67(a) by replacing the term
"supplemental" with "in compliance," and to delete reference to § 1.43 as §
1.43 is being proposed to be combined with § 1.42. Section 1.67(a)(3) is
proposed to be amended by deleting the explanatory parentheses as
unnecessary in view of the cross-reference to § 1.63 and updating the
reference to recite § 1.63(b). Additionally, it is proposed to refer to a
supplemental application data sheet in place of application data sheet, as
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 363 |
a § 1.76 submission submitted after filing of the application must be a
supplemental application data sheet and not an application data sheet even
though it is the first § 1.76 submission.
Section 1.67(b) is proposed to retain the material from current §
1.67(b) relating to no new matter by deleting the term "supplemental," as
revised § 1.67 is clarified to be directed towards noncompliant oaths or
declarations correcting deficiencies or inaccuracies.
Section 1.76: Section 1.76(a) is proposed to be amended to clarify that
an application data sheet may be submitted in an international application
entering the national stage under 35 U.S.C. 371. Section 1.76(a) is also
proposed to be amended to require that an application data sheet must be
submitted to claim priority to or the benefit of a prior-filed application
under 35 U.S.C. 119, 120, 121, or 365 for consistency with the proposed
changes to §§ 1.55 and 1.78.
Section 1.76(c)(1) is proposed to be amended to clarify that after an
application has been filed, a supplemental application data sheet, not an
application data sheet, is required. Section 1.76(c)(2) is proposed to be
amended to require that changes to the information must be indicated by
underlining for insertions of text, and strike-through or brackets for
deletions of text.
The revision is intended to make clear the difference between an
application data sheet and a supplemental application data sheet. When an
application data sheet is provided, the application data sheet becomes part
of the application as filed and thus it does not have to be signed by the
applicant, unless it is a form such as PTO/SB/14 and a nonpublication
request is being made by the applicant on the form. When a supplemental
application data sheet is provided, the supplemental application data sheet
is an amendment to the application, and therefore the supplemental
application data sheet must be signed in accordance with § 1.33(b).
Applicants are also encouraged and reminded to use and submit an
application data sheet (PTO/SB/14) as an EFS-Web Fillable Form, rather than
a scanned PDF image, to benefit from having the data loaded directly into
USPTO electronic systems (there is no Office form for a supplemental
application data sheet). Use of an application data sheet benefits both the
Office and patent practitioners as the data is loaded directly into the
USPTO electronic systems, thus the data is accurately captured, reducing
time that is needed to review the Filing Receipt.
Representative information including the registration number of each
practitioner, or the customer number, appointed with a power of attorney or
authorization of agent in the application may be provided on an application
data sheet. Providing this information in the application data sheet does
not constitute a power of attorney or authorization of agent in the
application (see §§ 1.76(b)(4), 1.34).
Section 1.76(d) continues to set forth the procedure for resolving
inconsistencies between application data sheets and other documents. The
Office contemplated clarifying this subsection to address the situation
where inconsistent information regarding a benefit claim and/or foreign
priority is supplied by the application data sheet and the specification as
filed, and provide that the application data sheet will govern. In view of
the proposed changes to §§ 1.55 and 1.78, which state that benefit and/or
foreign priority claims must be in an application data sheet, there is no
need for this further clarification.
Section 1.76(d)(1) is proposed to be amended to exclude foreign priority
claims in accordance with § 1.55(a)(1) and benefit claims in accordance
with §§ 1.78(a)(2)(iii) and 1.78(a)(5)(iii) from this subsection of the
rule, which indicates which information will govern when inconsistent
information is provided in an application. With the amendments to §§
1.55(a)(1), 1.78(a)(2)(iii), and 1.78(a)(5)(iii), the foreign priority
claim and/or benefit claim must be in the application data sheet. Thus, an
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 364 |
amendment to the specification will not govern over a foreign priority
claim or benefit claim in an application data sheet.
Section 1.78: Section 1.78(a)(2)(iii) is proposed to be amended such
that the reference requirement for a benefit claim to a prior-filed
nonprovisional application or international application designating the
United States of America by a later-filed nonprovisional application must
be in an application data sheet or a supplemental application data sheet.
Sections 1.78(a)(5)(iii) is proposed to be amended such that the
reference requirement for a benefit claim to a prior-filed provisional
application by a later-filed nonprovisional application must be in an
application data sheet or a supplemental application data sheet.
Providing this information in the application data sheet constitutes the
specific reference required by 35 U.S.C. 119(e) or 120. The patent statute
requires that a claim to the benefit of a provisional (35 U.S.C. 119(e)(1))
or nonprovisional (35 U.S.C. 120) be in the application by specific
reference thereto. Since the application data sheet (if provided) is
considered part of the application, the specific reference to an earlier
filed provisional or nonprovisional application in the application data
sheet meets the "specific reference" requirement of 35 U.S.C. 119(e)(1) or
120.
Providing this information in a single location will facilitate more
efficient processing of applications, as the Office will only have to look
at one location for the benefit claim and the most recent application data
sheet will govern. Currently, the Office must look at the specification,
amendments to the specification, and the application data sheet if provided
to determine the benefit claim. When applicants provide inconsistent
information between the three sources, the Office must then determine which
benefit claim governs in accordance with the rule.
Providing this information in a single location will also facilitate
review of patents and patent application publications, because applications
frequently provide a benefit and/or foreign priority claim in the first
sentence(s) of the specification, which is amended by an application data
sheet that includes a different benefit or foreign priority claim, and thus
the benefit claim and/or foreign priority information included in the first
sentence(s) of the specification is different from the benefit claim and/or
foreign priority information contained on the front page of the patent or
patent application publication. While the benefit and/or foreign priority
claim on the front page of the patent or patent application publication is
usually correct, anyone (including an examiner, a practitioner, or the
public) reviewing the patent or patent application publication must review
the file history of the application to verify this to be correct.
Since most applications are filed with an application data sheet,
requiring benefit and/or foreign priority claims to be included in the
application data sheet will not require most practitioners to change their
practice.
Section 1.172: Section 1.172 is proposed to be amended in its title to
delete the duplicative reference to assignees, as assignees may be an
applicant in some circumstances for a reissue application. Section 1.172 is
proposed to be reformatted to clarify who may sign, and what documents must
accompany, a reissue oath or declaration. Section 1.172(a) is proposed to
be amended to continue to require that the reissue oath or declaration must
be accompanied by the written consent of all assignees, if any, owning an
undivided interest in the patent. Current subject matter in § 1.172(a)
relating to not enlarging the scope of the claims would be transferred to
paragraph (b) and the assignment information transferred to paragraph (c).
Section 1.172(b) is proposed to be amended to focus on signing of the oath
or declaration and includes paragraph titles to distinguish between who may
sign the reissue oath or declaration for a nonbroadening reissue (proposed
§ 1.172(b)(1)(i) through (b)(1)(iii)) versus a broadening reissue (§
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 365 |
1.172(b)(2)(i) and (b)(2)(ii)). Current subject matter in § 1.172(b) would
be moved to proposed § 1.172(d). Section 1.172(b)(2)(ii) is proposed to
authorize the assignee of the entire interest to sign the reissue oath or
declaration for a broadening reissue filed on or after September 16, 2012,
where the application for the original patent was filed by the assignee of
the entire interest (i.e., the oath or declaration was executed by the
assignee under § 1.42 or § 1.47).
Section 1.172(c) includes the language already present in current §
1.172(a) and clarifies that all assignees, including partial assignees, who
consent to the reissue must establish their ownership in the patent.
Section 1.172(d) repeats the language found in current § 1.172(b).
Section 1.175: Section 1.175(a) is proposed to be amended to clarify the
requirement that an applicant identify in the reissue oath or declaration
each applicable reason that forms the basis for reissue. The reasons
include: (1) A defective specification or drawing (§ 1.175(a)(1)); (2) the
patentee claiming more than the patentee had a right to claim in the patent
(§ 1.175(a)(2)); and (3) the patentee claiming less than the patentee had
the right to claim in the patent (§ 1.175(a)(3)). Proposed § 1.175(a)(3)
also requires identification of a broadened claim and a broadened portion
of the specification, if a change thereto is the basis for the claim
broadening.
Section 1.175(a) retains the requirement from current § 1.175(a)(1) that
the reissue oath or declaration identify at least one error that is being
relied upon as the basis for reissue and recites the statutory basis for
reissue, 35 U.S.C. 251. Examples of proper error statements are discussed
in MPEP § 1414, II. The reissue oath or declaration may identify more than
one specific error that forms the basis of the reissue, but at least one
error must be identified.
Section 1.175(b) is proposed to be amended to clarify that a claim
broadened in any respect must be treated and identified as a broadened
claim. In addition, § 1.175(b) is proposed to be further amended to delete
the requirement for supplemental reissue oaths or declarations in view of
the change to 35 U.S.C. 251 in Section 20 of the Leahy-Smith America
Invents Act (i.e., removal of the "without any deceptive intention"
provision). A claim that is broadened in any respect is a broadened claim
for purposes of 35 U.S.C. 251. See Tillotson, Ltd. v. Walbro Corp., 831
F.2d 1033, 1037 n.2 (Fed. Cir. 1987), In re Ruth, 278 F.2d 729, 730 (CCPA
1960), and In re Rogoff, 261 F.2d 601, 603 (CCPA 1958). The requirement
that a claim broadened in any respect be treated as a broadened claim is
important to distinguish who can sign the reissue oath or declaration. It
also is important because a reissue application that broadens the scope of
the original patent may only be filed within two years from the grant of
the original patent. See MPEP § 1412.03 for the meaning of a "broadened
reissue claim" and examples.
An application that does not seek to broaden the scope of the original
patent may be filed with a reissue oath or declaration that is executed by
the assignee of the entire right, title, and interest. However, if the
reissue application broadens one or more of the claims in any respect, the
reissue oath or declaration must be executed by the inventors, the legal
representatives of deceased or legally incapacitated inventors, or a § 1.47
applicant for a nonsigning inventor (proposed § 1.172(b)(2)(i)). As
discussed above, the assignee of the entire interest may sign the reissue
oath or declaration for a broadening reissue filed on or after September
16, 2012, where the application for the original patent was filed by the
assignee of the entire interest (proposed § 1.172(b)(2)(ii)), that is, the
oath or declaration was executed by the assignee under §§ 1.42 or 1.47.
Section 1.175(c) is proposed to be amended to clarify that where all
errors identified in the reissue oath or declaration pursuant to proposed
§ 1.175(a) are no longer being relied upon as the basis for reissue, a
reissue oath or declaration that identifies a new error currently being
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 366 |
relied upon as the basis for reissue must be filed. The elimination of
supplemental reissue oaths or declarations in current § 1.175(b) is
directed towards lack of deceptive intent regarding the error being
corrected, and not the statutory requirement of identification of at least
one error. Section 1.175(c) is also proposed to be amended to clarify that
the reissue oath or declaration that identifies the new error currently
being relied upon as the basis for reissue need only address the new error
and need not identify any prior error identified in a reissue oath or
declaration. This requirement is consistent with the discussion in MPEP §
1414.01, I.
The reissue oath or declaration must identify a proper error that forms
the basis for reissue. If the specified error is no longer being corrected
in the reissue application, then a new error must be identified in the
reissue oath or declaration so that the record is clear in identifying a
proper basis for reissue. The latest reissue oath or declaration need not
identify each specific error that was identified in any earlier reissue
oath or declaration; it must only identify an error that is currently being
relied upon or corrected.
Section 1.175(e) is proposed to be amended to provide a title to
identify the paragraph's applicability to continuing applications, MPEP
1414, II, and to clarify in the rule the ability to file copies of reissue
oaths or declarations from prior reissue applications in continuing
applications consistent with § 1.63(d). Section 1.175(e) would now consist
of paragraphs (e)(1), (e)(2), (e)(2)(i) and (ii).
Section 1.175(e)(1) is proposed to provide that where a continuing
reissue application replaces a prior reissue application, the requirement
for a reissue oath or declaration pursuant to § 1.172 may be satisfied by a
copy of the reissue oath or declaration from the prior reissue application
it replaces. The concept of a "prior application," in this paragraph and in
paragraph (e)(2), is intended to be broader than an immediate prior
application but to stay within the bounds of § 1.63(d) and require a prior
application that is within the chain of benefit claim.
Section 1.175(e)(2) is proposed to provide that where a continuing
reissue application does not replace a prior reissue application, the
requirement for a reissue oath or declaration pursuant to § 1.172 may be
satisfied by a newly executed oath or declaration that identifies at least
one error in the original patent which has not been corrected in a prior
reissue application, § 1.175(e)(2)(i), or how an identified error is
currently being corrected in a manner different than in a prior reissue
application, § 1.175(e)(2)(ii).
Under current practice, a new oath or declaration is required in a
continuing reissue application notwithstanding that there is no change in
the error being corrected. In certain circumstances, such as set forth in
the following examples, applicants request that they be allowed to use a
copy of the declaration from prior reissue application. Some situations
currently need to be addressed via a petition for waiver under § 1.183 with
a $400 fee, that the Office would grant in appropriate circumstances, such
as set forth in the following example 2. The rule as now proposed
recognizes the unnecessary processing delay and expense engendered by this
practice, which would be rectified by this proposed change.
Accordingly, a copy of a reissue oath or declaration from a prior
reissue application may be submitted in a continuing reissue application
where the continuing application replaces a prior reissue application.
Also, a copy of a reissue oath or declaration from a prior reissue
application may be submitted in a continuing application where the
continuing application does not replace a prior application, but only where
the identified error was not corrected and therefore would continue to
apply in the continuing reissue application, or where the identified error
is currently to be corrected in the continuing application in a manner
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 367 |
different than in the prior application. However, to do so would also
require a statement to either effect. Otherwise, a reissue oath or
declaration that identifies a new error that is the basis for reissue must
be filed. The following are examples where a copy may be used:
Example 1: A reissue application is filed with a declaration under §
1.175 that lists more than one error that properly supports reissue. The
declaration can be used to file a continuing reissue application, even if
applicant is no longer attempting to correct some of the originally listed
errors, provided that at least one of the originally listed errors remains
that was not corrected in the prior application. Under the current and
proposed § 1.175, a copy may be used.
Example 2: A reissue application is filed to amend Claim 4 to limit the
general pump means to a centrifugal pump, and to eliminate the recitation
of a refrigeration means. The reissue oath or declaration must state that
the applicant believes the original patent to be wholly or partly
inoperative or invalid by reason of patentee claiming more than the
patentee had the right to claim in the patent (§ 1.175(a)(2)), and patentee
claiming less than patentee had the right to claim, and identify Claim 4 (§
1.175(a)(3)). An identification that the defect was that the patentee
claimed "more or less" than patentee had a right to claim would not comply
with proposed § 1.175. Moreover, the identification that Claim 4 is being
broadened under proposed § 1.175(a)(3) would not be sufficient to
specifically identify at least one error under proposed § 1.175(a).
Applicant must clearly specify the defect or error in the language that
renders the original patent wholly or partly inoperative or invalid. The
reissue oath or declaration must also provide a specific identification of
one of the errors, e.g., Claim 4 was unduly limited by the inclusion of
"refrigeration means" and is being amended to eliminate this recitation.
Under the current rule, a petition under § 1.183 is required for a copy to
be used. Under proposed § 1.175, a petition is not required for a copy to
be used.
The reference in current § 1.175(e) to paragraph (a)(1) of § 1.175 would
be deleted as it would be unnecessary in view of the proposed changes.
Section 1.175(f) is proposed to be added to provide that a reissue oath
or declaration may be filed at any time pursuant to 35 U.S.C. 115(h)(1),
and will be placed in the file record of the reissue application but may
not be reviewed by the Office in view of the open ended time frame that the
statute provides. Oaths or declarations submitted pursuant to 35 U.S.C.
115(h)(1) that are timely submitted during prosecution of an application
would continue to be reviewed for compliance. Proposed § 1.175(f) is
consistent with the language of proposed § 1.63(e).
Section 1.311: Section 1.311 is proposed to be amended by adding a new
paragraph (c) to implement the requirement of 35 U.S.C. 118 that "[i]f the
Director grants a patent on an application filed under [35 U.S.C. 118] by a
person other than the inventor, the patent shall be granted to the real
party in interest and upon such notice to the inventor as the Director
considers to be sufficient." Proposed § 1.311(c) provides that where an
assignee, person to whom the inventor is under an obligation to assign the
invention, or person who otherwise shows sufficient proprietary interest in
the matter has filed an application under §§ 1.42, or 1.47, the applicant
must notify the Office of any change in ownership of the application no
later than payment of the issue fee. The Office will treat the absence of
such a notice as an indication that there has been no change in ownership
of the application. Proposed § 1.311(c) does not cover assignees or persons
who otherwise show sufficient proprietary interest, unless the application
is filed pursuant to §§ 1.42 or 1.47.
Section 3.81 currently provides that an "application may issue in the
name of the assignee" "where a request for such issuance is submitted with
payment of the issue fee." This is accomplished by providing the assignee
information in box 3 of the issue fee transmittal form, form 85B. The use
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 368 |
of box 3 would be required where ownership of the application changed from
the filing of the application and the application was filed pursuant to §§
1.42 or 1.47.
Section 1.497: Section 1.497 is proposed to be amended to be consistent
with the amendments to 35 U.S.C. 115 and the proposed amendments to § 1.63.
Under the current provisions of § 1.497, while an oath or declaration in a
national stage application under 35 U.S.C. 371 must comply with the
requirements of § 1.63, it will be accepted as sufficient for purposes of
entering the U.S. national stage if certain minimum requirements are met.
See § 1.497(c). The proposed amendment to § 1.497(a) through (c) maintains
this practice. The reference to § 1.43 in current § 1.497(b)(1) and
(2) would be deleted from the subject matter now found in the proposed §
1.497(b)(6).
Current § 1.497(d) through (e) are proposed to be deleted. A simplified
procedure for correcting inventorship in a national stage application is
proposed to be added to § 1.48, as new subsection § 1.48(k), since § 1.48
covers correction of inventorship in patent applications (other than
reissue). The corrective procedure has been simplified in light of the
amendment to 35 U.S.C. 116 eliminating the requirement that the error in
inventorship "arose without any deceptive intent" on the part of the
inventor being removed or added. Current § 1.497(f) is proposed to be
deleted because of the amendment to 35 U.S.C. 115. Current § 1.497(g) is
proposed to be deleted in view of the proposed amendment to § 1.63
eliminating foreign priority claims from the oath or declaration.
Section 3.31: Section 3.31 is proposed to be amended by the addition of
new paragraph (h) that would implement 35 U.S.C. 115(e) permitting use of
an assignment in lieu of an oath or declaration to meet the oath or
declaration requirements of § 1.63. Section 3.31(h) is proposed to provide
that an assignment cover sheet must contain a conspicuous indication of an
intent to utilize the assignment as the required oath or declaration under
§ 1.63. For the importance of complying with this provision, see the
discussion of § 1.63(c).
Section 3.71: Section 3.71(a) is proposed to be amended to be consistent
with proposed § 1.33, which limits prosecution by juristic entities. The
rule is also proposed to be amended to make it clear that conflicts between
purported assignees are handled in accordance with § 3.73(c)(4).
Section 3.73: Section 3.73(b) is proposed to be amended to clarify who
may sign a statement under § 3.73(b) in new paragraph (b)(2)(iii). Under §
3.73(b), an assignee must establish its ownership of an application to the
satisfaction of the Director in order to request or take action in a patent
or trademark matter. Current § 3.73(b)(2) specifies that the submission
establishing ownership must either include a statement that the person
signing the submission is authorized to act on behalf of the assignee (§
3.73(b)(2)(i)) or be signed by a person who has apparent authority to sign
on behalf of the assignee (§ 3.73(b)(2)(ii)).
Section 3.73(b)(2)(iii) is proposed to provide that a patent
practitioner of record pursuant to § 1.32 could sign a statement under §
3.73(b). A patent practitioner can be considered "of record" for purposes
of this section where the statement under § 3.73(b) is accompanied by a
power of attorney that appoints the practitioner (see 37 CFR 3.73(b)(1)).
Currently, a power of attorney to a patent practitioner to prosecute a
patent application executed by the applicant or assignee of the entire
interest does not make that practitioner an official of the assignee or
empower the practitioner to sign the submission on behalf of the assignee.
MPEP § 324, V. Patent practitioners who signed statements under § 3.73(b)
merely on the basis of having been appointed in a power of attorney
document have done so improperly.
Section 3.73(b)(3) is proposed to clarify that any subsequent statement
under § 3.73(b) must provide a complete chain of title. Current §
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 369 |
3.73(b)(1)(i) requires documentary evidence of a chain of title. The
submission of a subsequent statement under § 3.73(b) that only identifies
the latest "link" in the ownership chain would be incomplete and deemed
insufficient to establish ownership of the application.
Section 3.73(c)(2) is proposed to be amended to better clarify how to
identify to the Office the entire ownership interest. When establishing
ownership of the application under § 3.73(b), one needs to be cognizant of
the distinction between 100 percent ownership of the right, title, and
interest in the invention from a single inventor and 100 percent ownership
of the entire right, title, and interest in the invention from all of the
inventors. This provision is applicable such as when one assignee owns 100
percent interest from one inventor and another assignee owns 100 percent
interest from a different inventor. To comply with the requirement that the
entire right, title, and interest be identified, both assignees would need
to set forth their ownership interest by percentage (100 percent of the
entire right, title, and interest) § 3.73(c)(2)(i), or both assignees would
need to provide a statement that all parties owning an interest (without
identification of percentage) have been identified, § 3.73(c)(2)(ii). Where
a sole inventor assigns all rights to companies A and B, but the assignment
does not specify percentages of ownership, the statement under § 3.73(b)
would need to identify that companies A and B together own 100 percent of
the entire right, title, and interest without specific individual
percentages for company A and company B. Otherwise, the Office may refuse
to accept the submission as an establishment of ownership.
Section 3.73(c)(3) is proposed to provide that, for a statement under §
3.73(b) from the prior application to have effect in a continuation or
divisional application, or a continuation-in-part application with the same
inventors or fewer, a copy of the statement under paragraph (b) of this
section from the prior application for which benefit is claimed under 35
U.S.C. 120, 121, or 365(c), must be filed in the continuing application.
Section 3.73(c)(4) is proposed to be added to provide that, where two or
more purported assignees file conflicting statements under paragraph (b) of
this section, the Director will determine which, if any, purported assignee
will be permitted to control prosecution of the application. As proposed, §
3.73(c)(4) provides in the rule the Office's practice for treating two or
more conflicting statements under § 3.73(b), currently discussed in MPEP §
324, IX.
Sections 1.51, 1.53, 1.57, 1.78, 41.37, 41.67, and 41.110 are proposed
to be amended to substitute references to 35 U.S.C. 112(a), (b), and (f),
for the current references to 35 U.S.C. 112, first, second, and sixth
paragraphs. Sections 1.45 and 1.48 are proposed to be amended to reflect
the change regarding 35 U.S.C. 116. Section 1.173 is proposed to be amended
to reflect the change regarding 35 U.S.C. 251. Sections 1.48, 1.324, 1.530,
and 5.25 are proposed to be amended to delete the provisions pertaining to
a lack of deceptive intent. Sections 1.41, 1.46, 1.64, 1.76, 1.131, and
1.162 are proposed to be amended to delete the references to § 1.43.
Section 1.76 is proposed to be amended to delete the reference to an
inventor's citizenship to reflect the change regarding 35 U.S.C. 115.
Rulemaking Considerations
A. Administrative Procedure Act: The primary changes proposed in this
notice implement the inventor's oath or declaration provisions of the
Leahy-Smith America Invents Act. This notice proposes changes to the rules
of practice that concern the process for applying for a patent, namely, the
statements required in the oath or declaration required by 35 U.S.C. 115
for a patent application (including the oath or declaration for a reissue
application), the manner of presenting claims for priority to or the
benefit of prior-filed applications under 35 U.S.C. 119, 120, 121, or 365,
and the procedures for prosecution of an application by an assignee. The
changes being proposed in this notice do not change the substantive
criteria of patentability. These proposed changes involve rules of agency
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 370 |
practice and procedure, and/or interpretive rules. See Bachow Commuc'ns.,
Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an
application process are procedural under the Administrative Procedure Act);
Inova Alexandria Hosp. v. Shalala, 244 F.3d 242, 350 (4th Cir. 2001) (rules
for handling appeals were procedural where they did not change the
substantive standard for reviewing claims); Nat'l Org. of Veterans'
Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001) (rule that clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law) and
thirty-day advance publication is not required pursuant to 5 U.S.C. 553(d)
(or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
(Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B),
does not require notice and comment rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization, procedure,
or practice.") (quoting 5 U.S.C. 553(b)(A)). The Office, however, is
publishing these changes for comment as it seeks the benefit of the
public's views on the Office's proposed implementation of these provisions
of the Leahy-Smith America Invents Act.
B. Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 or any other law,
neither a regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C.
603.
In addition, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark Office
has certified to the Chief Counsel for Advocacy of the Small Business
Administration that changes proposed in this notice will not have a
significant economic impact on a substantial number of small entities. See
5 U.S.C. 605(b). This notice proposes changes to the rules of practice to
implement sections 4 and 20 of the Leahy-Smith America Invents Act, which
provides changes to the inventor's oath or declaration. The primary impact
of the changes in this notice is the streamlining of the requirements for
oaths and declarations and the simplification of the filing of an
application by the assignee when an inventor cannot or will not execute the
oath or declaration. The burden to all entities, including small entities,
imposed by these rules is a minor addition to that of the current
regulations concerning the inventor's oath or declaration. The change to
the manner of presenting claims for priority to or the benefit of
prior-filed applications under 35 U.S.C. 119, 120, 121, or 365 will not
have a significant economic impact on a substantial number of small
entities as an application data sheet is easy to prepare and use, and the
majority of patent applicants already submit an application data sheet with
the patent application. The change to reissue oath or declaration will not
have a significant economic impact on a substantial number of small
entities as reissue is sought by the patentee for fewer than 1,200 of the
1.2 million patents in force each year, and a reissue applicant already
needs to know whether claims are being broadened to comply with the
requirements of 35 U.S.C. 251. The change to the procedures for prosecution
of an application by an assignee will not have a significant economic
impact on a substantial number of small entities as it is rare for a
juristic entity to attempt to prosecute a patent application pro se.
Therefore, the changes proposed in this notice will not have a significant
economic impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review):
The Office has complied with Executive Order 13563. Specifically, the
Office has, to the extent feasible and applicable: (1) Made a reasoned
determination that the benefits justify the costs of the rule; (2) tailored
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 371 |
the rule to impose the least burden on society consistent with obtaining
the regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public in
an open exchange of information and perspectives among experts in relevant
disciplines, affected stakeholders in the private sector and the public as
a whole, and provided on-line access to the rulemaking docket; (7)
attempted to promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote innovation;
(8) considered approaches that reduce burdens and maintain flexibility and
freedom of choice for the public; and (9) ensured the objectivity of
scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not contain
policies with federalism implications sufficient to warrant preparation of
a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking will
not: (1) Have substantial direct effects on one or more Indian tribes; (2)
impose substantial direct compliance costs on Indian tribal governments; or
(3) preempt tribal law. Therefore, a tribal summary impact statement is not
required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of Energy
Effects is not required under Executive Order 13211 (May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking meets
applicable standards to minimize litigation, eliminate ambiguity, and
reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order
12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking does
not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr. 21,
1997).
J. Executive Order 12630 (Taking of Private Property): This rulemaking
will not effect a taking of private property or otherwise have taking
implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the United States Senate, the
United States House of Representatives, and the Comptroller General of the
Government Accountability Office. The changes in this notice are not
expected to result in an annual effect on the economy of 100 million
dollars or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to compete
with foreign-based enterprises in domestic and export markets. Therefore,
this notice is not expected to result in a "major rule" as defined in 5
U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in this
notice do not involve a Federal intergovernmental mandate that will result
in the expenditure by State, local, and tribal governments, in the
aggregate, of 100 million dollars (as adjusted) or more in any one year, or
a Federal private sector mandate that will result in the expenditure by the
private sector of 100 million dollars (as adjusted) or more in any one
year, and will not significantly or uniquely affect small governments.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 372 |
Therefore, no actions are necessary under the provisions of the Unfunded
Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have any
effect on the quality of environment and is thus categorically excluded
from review under the National Environmental Policy Act of 1969. See 42
U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The requirements of
section 12(d) of the National Technology Transfer and Advancement Act of
1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does
not contain provisions which involve the use of technical standards.
O. Paperwork Reduction Act: This rulemaking involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The collection of information involved in this
rulemaking has been reviewed and previously approved by OMB under OMB
Control Numbers 0651-0032 and 0651-0035. The primary impact of the changes
in this notice is the streamlining of the requirements for oaths and
declarations and the simplification of the filing of an application by the
assignee when an inventor cannot or will not execute the oath or
declaration. The Office is not resubmitting an information collection
package to OMB for its review and approval, because the changes in this
rulemaking do not change patent fees or change the information collection
requirements (the estimated number of respondents, time per response, total
annual respondent burden hours, or total annual respondent cost burden)
associated with the information collections approved under OMB Control
Numbers 0651-0032 and 0651-0035.
Notwithstanding any other provision of law, no person is required to
respond to, nor shall a person be subject to a penalty for failure to
comply with, a collection of information subject to the requirements of the
Paperwork Reduction Act, unless that collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Inventions and patents, Reporting
and recordkeeping requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
For the reasons set forth in the preamble, 37 CFR parts 1 and 3 are
proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.1 is amended by revising paragraph (e) to read as follows:
§ 1.1 Addresses for non-trademark correspondence with the United States
Patent and Trademark Office.
* * * * *
(e) Patent term extension. All applications for extension of patent term
under 35 U.S.C. 156 and any communications relating thereto intended for
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 373 |
the United States Patent and Trademark Office should be additionally marked
"Mail Stop Hatch-Waxman PTE." When appropriate, the communication should
also be marked to the attention of a particular individual, such as where a
decision has been rendered.
* * * * *
3. Section 1.4 is amended by revising paragraph (e) to read as follows:
§ 1.4 Nature of correspondence and signature requirements.
* * * * *
(e) Correspondence requiring a person's signature and relating to
payment by credit card in patent cases or registration to practice before
the Patent and Trademark Office in patent cases, enrollment and
disciplinary investigations, or disciplinary proceedings must be submitted
with an original handwritten signature personally signed in permanent dark
ink or its equivalent by that person.
* * * * *
4. Section 1.31 is revised to read as follows:
§ 1.31 Applicant may be represented by one or more patent
practitioners or joint inventors.
(a) An applicant for patent may file and prosecute his or her own case,
or he or she may give a power of attorney to be represented by one or more
patent practitioners or joint inventors, except that a juristic entity must
be represented by a patent practitioner. Prosecution by a juristic entity
is governed by § 3.71(a), and the taking of action by any assignee is
governed by § 3.73.
(b) The United States Patent and Trademark Office cannot aid in the
selection of a patent practitioner.
5. Section 1.32 is amended by adding new paragraphs (d) and (e) to read
as follows:
§ 1.32 Power of attorney.
* * * * *
(d) A power of attorney from a prior application for which benefit is
claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing application may
have effect in the continuing application if the inventorship of the
continuing application is the same as the prior application or one or more
inventors from the prior application have been deleted in the continuing
application, and if a copy of the power of attorney from the prior
application is filed in the continuing application.
(e) If a power of attorney has been granted by all of the inventors and
not an assignee, the addition of an inventor pursuant to § 1.48 results in
the loss of that power of attorney upon grant of the § 1.48 request, unless
the added inventor provides a power of attorney consistent with the power
of attorney provided by the other inventors. This provision does not
preclude a practitioner from acting pursuant to § 1.34, if applicable.
6. Section 1.33 is amended by removing and reserving paragraph (b)(3),
revising the introductory text of paragraph (a), and adding new paragraphs
(f), (g), and (h) to read as follows:
§ 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 374 |
(a) Correspondence address and daytime telephone number. When filing an
application, a correspondence address must be set forth in either an
application data sheet (§ 1.76), or elsewhere, in a clearly identifiable
manner, in any paper submitted with an application filing. If no
correspondence address is specified, the Office may treat the mailing
address of the first named inventor (if provided, see §§ 1.76 (b)(1) and
1.63 (c)(2)) as the correspondence address. The Office will direct, or
otherwise make available, all notices, official letters, and other
communications relating to the application to the person associated with
the correspondence address. For correspondence submitted via the Office's
electronic filing system, however, an electronic acknowledgment receipt
will be sent to the submitter. The Office will generally not engage in
double correspondence with an applicant and a patent practitioner, or with
more than one patent practitioner, except as deemed necessary by the
Director. If more than one correspondence address is specified in a single
paper or in multiple papers submitted on one day, the Office will select
one of the specified addresses for use as the correspondence address and,
if given, may select the address associated with a Customer Number over a
typed correspondence address. For the party to whom correspondence is to be
addressed, a daytime telephone number should be supplied in a clearly
identifiable manner and may be changed by any party who is authorized to
change the correspondence address. The correspondence address may be
changed as follows:
* * * * *
(b) * * *
(3) [Reserved]
* * * * *
(f) An assignee may only conduct prosecution of an application in
accordance with §§ 1.31 and 3.71 of this chapter. Unless otherwise
specified, all papers submitted on behalf of a juristic entity must be
signed by a patent practitioner.
(g) Where application papers from a prior application are used in a
continuing application and the correspondence address was changed during
the prosecution of the prior application, an application data sheet or
separate paper identifying the updated correspondence address to be used
for the continuing application must be submitted. Otherwise, the Office may
not recognize the change of correspondence address effected during the
prosecution of the prior application.
(h) A patent practitioner acting in a representative capacity whose
correspondence address is the correspondence address of record in an
application may change the correspondence address after the patent has
issued, provided that the change of correspondence address is accompanied
by a statement that notice has been given to the patentee or owner.
7. Section 1.41 is amended by revising paragraphs (a)(3), (a)(4) and (c)
to read as follows:
§ 1.41 Applicant for patent.
(a) * * *
(3) In a nonprovisional application filed without an oath or declaration
as prescribed by § 1.63 or in a provisional application filed without a
cover sheet as prescribed by § 1.51(c)(1), the name and residence of each
person believed to be an actual inventor should be provided when the
application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
(4) The inventorship of an international application entering the
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 375 |
national stage under 35 U.S.C. 371 is that inventorship set forth in the
first submission of an executed declaration under PCT Rule 4.17(iv) or oath
or declaration under § 1.497, except as provided in § 1.63(d). If neither
an executed declaration under PCT Rule 4.17(iv) nor executed oath or
declaration under § 1.497 is filed during the pendency of the national
stage application, the inventorship is that inventorship set forth in the
international application, which includes any change effected under PCT
Rule 92bis.
* * * * *
(c) Any person authorized by the applicant may physically or
electronically deliver an application for patent and related
correspondence, including fees, to the Office on behalf of the inventor or
inventors and provide a correspondence address pursuant to § 1.33(a), but
an oath or declaration (§ 1.63) can only be made in accordance with § 1.64
and amendments and other papers must be signed in accordance with §
1.33(b).
* * * * *
8. Section 1.42 is revised to read as follows:
§ 1.42 When the inventor is deceased or legally incapacitated.
(a) In the case of the death or legal incapacity of the inventor, the
legal representative (e.g., executor, administrator, guardian, or
conservator) of the deceased or incapacitated inventor, the assignee, or a
party to whom the inventor is under an obligation to assign the invention
or party who otherwise shows sufficient proprietary interest in the matter
may execute the oath or declaration under § 1.63, provided that the oath or
declaration complies with the requirements of § 1.63(a) and (b) and
identifies the inventor who is deceased or legally incapacitated. A party
who shows sufficient proprietary interest in the matter executes the oath
or declaration on behalf of the deceased or incapacitated inventor.
(b) A party to whom the inventor is under an obligation to assign the
invention or a party who otherwise has sufficient proprietary interest in
the matter taking action under this section must do so by way of a petition
that is accompanied by the fee set forth in § 1.17(g) and a showing,
including proof of pertinent facts, either that:
(1) The deceased or incapacitated inventor is under an obligation to
assign the invention to the party; or
(2) The party has sufficient proprietary interest in the matter to
execute the oath or declaration pursuant to § 1.63 on behalf of the
deceased or incapacitated inventor and that such action is necessary to
preserve the rights of the parties.
(c) If the inventor dies during the time intervening between the filing
of the application and the granting of a patent thereon, the letters patent
may be issued to the legal representative or assignee upon proper
intervention pursuant to this section.
9. Section 1.43 is removed and reserved.
§ 1.43 [Reserved]
10. Section 1.47 is revised to read as follows:
§ 1.47 When an inventor refuses to sign or cannot be reached.
(a) If an inventor or legal representative thereof (§ 1.42) refuses to
execute the oath or declaration under § 1.63, or cannot be found or reached
after diligent effort, the assignee of the nonsigning inventor, a party to
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 376 |
whom the inventor is obligated to assign the invention, or a party who
otherwise shows sufficient proprietary interest in the matter may execute
the oath or declaration under § 1.63. A party who shows sufficient
proprietary interest in the matter executes the oath or declaration on
behalf of the nonsigning inventor.
(b) If a joint inventor or legal representative thereof (§ 1.42) refuses
to execute the oath or declaration under § 1.63 or cannot be found or
reached after diligent effort, the remaining inventor(s) may execute the
oath or declaration under § 1.63 on behalf of himself or herself and the
nonsigning inventor.
(c) Any oath or declaration executed pursuant to this section must
comply with the requirements of § 1.63(a) and (b) and be accompanied by a
petition that:
(1) Includes the fee set forth in § 1.17(g);
(2) Identifies the nonsigning inventor, and includes the last known
address of the nonsigning inventor;
(3) States either the inventor or legal representative cannot be reached
after a diligent effort was made, or has refused to execute the oath or
declaration under § 1.63 when presented with a copy of the application
papers, with proof of the pertinent facts; and
(4) For a party to whom the nonsigning inventor is under an obligation
to assign the invention, or has sufficient proprietary interest in the
matter acting under paragraph (a) of this section, a showing, including
proof of pertinent facts, either that:
(i) The nonsigning inventor is under an obligation to assign the
invention to the party; or
(ii) The party has sufficient proprietary interest in the matter to
execute the oath or declaration pursuant to § 1.63 on behalf of the
nonsigning inventor and that such action is necessary to preserve the
rights of the parties.
(d) The Office will publish notice of the filing of the application in
the Official Gazette, and may send notice of filing of the application to
the nonsigning inventor at the address(es) provided in the petition under
this section. The Office may dispense with this notice provision in a
continuing application, if notice regarding the filing of the prior
application was given to the nonsigning inventor(s).
(e) A nonsigning inventor or legal representative may subsequently join
in the application by submitting an oath or declaration under § 1.63. The
submission of an oath or declaration by a nonsigning inventor or legal
representative after the grant of a petition under this section will not
permit the nonsigning inventor or legal representative to revoke or grant a
power of attorney.
11. Section 1.48 is amended by revising the section heading and adding
new paragraph (k) to read as follows:
§ 1.48 Correction of inventorship in a patent application, other than a
reissue application.
* * * * *
(k) National stage application under 35 U.S.C. 371. The procedure set
forth in paragraph (a) of this section for correcting an error in
inventorship is also applicable to international applications entering the
national stage under 35 U.S.C. 371 prior to becoming nonprovisional
applications (§ 1.9(a)(3)), and to correct an error in the inventive entity
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 377 |
set forth in an executed declaration submitted under PCT Rule 4.17(iv).
12. Section 1.53 is amended by revising paragraph (f)(4) to read as
follows:
§ 1.53 Application number, filing date, and completion of application.
* * * * *
(f) * * *
(4) This paragraph applies to continuation or divisional applications
under paragraphs (b) or (d) of this section and to continuation-in-part
applications under paragraph (b) of this section. See § 1.63(d) concerning
the submission of a copy of the oath or declaration from the prior
application for a continuing application under paragraph (b) of this
section.
* * * * *
13. Section 1.55 is amended by revising the introductory text of
paragraph (a)(1)(i), the introductory text of paragraph (c), and paragraph
(d)(1)(ii) to read as follows:
§ 1.55 Claim for foreign priority.
(a) * * *
(1)(i) In an original application filed under 35 U.S.C. 111(a), the
claim for priority must be presented in an application data sheet (§
1.76(b)(6)) or a supplemental application data sheet (§ 1.76(c)) during the
pendency of the application, and within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application. This time period is not extendable.
The claim must identify the foreign application for which priority is
claimed, as well as any foreign application for the same subject matter and
having a filing date before that of the application for which priority is
claimed, by specifying the application number, country (or intellectual
property authority), day, month, and year of its filing. The time periods
in this paragraph do not apply in an application under 35 U.S.C. 111(a) if
the application is:
* * * * *
(c) Unless such claim is accepted in accordance with the provisions of
this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or 365(a)
not presented in an application data sheet (§ 1.76(b)(6)) or a supplemental
application data sheet (§ 1.76(c)) within the time period provided by
paragraph (a) of this section is considered to have been waived. If a claim
for priority under 35 U.S.C. 119(a)-(d) or 365(a) is presented after the
time period provided by paragraph (a) of this section, the claim may be
accepted if the claim identifying the prior foreign application by
specifying its application number, country (or intellectual property
authority), and the day, month, and year of its filing was unintentionally
delayed. A petition to accept a delayed claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) must be accompanied by:
* * * * *
(d)(1) * * *
(ii) The foreign application is identified in an application data sheet
(§ 1.76(b)(6)) or a supplemental application data sheet (§ 1.76(c)); and
* * * * *
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 378 |
14. Section 1.63 is revised to read as follows:
§ 1.63 Oath or declaration.
(a) A nonprovisional application for patent filed under 35 U.S.C. 111(a)
or which entered the national stage under 35 U.S.C. 371 shall include, or
be amended to include, an oath or declaration. The oath or declaration
under this section must:
(1) Be executed (i.e., signed) in accordance with either § 1.66 or §
1.68;
(2) Identify each inventor by his or her full name without any
abbreviation (except for a middle initial);
(3) Identify the application to which it is directed;
(4) Include a statement that the person executing the oath or
declaration believes the named inventor or joint inventors to be the
original inventor or original joint inventors of the claimed invention in
the application for which the oath or declaration is being submitted;
(5) State that the application was made or was authorized to be made by
the inventor;
(6) State that the person making the oath or declaration has reviewed
and understands the contents of the application for which the oath or
declaration is being submitted, including the claims, as amended by any
amendment specifically referred to in the oath or declaration; and
(7) State that the person making the oath or declaration acknowledges
the duty to disclose to the Office all information known to the person to
be material to patentability as defined in § 1.56.
(b) Unless such information is supplied on an application data sheet in
accordance with § 1.76, the oath or declaration must also identify for each
inventor a mailing address where the inventor customarily receives mail,
and residence, if the inventor lives at a location different from the
mailing address.
(c)(1) An assignment may also include the oath or declaration required
by this section if:
(i) The assignment contains the information and statements required
under paragraphs (a) and (b) of this section; and
(ii) A copy of the assignment is filed in the application and recorded
as provided for in part 3 of this chapter.
(2) Any reference to an oath or declaration under § 1.63 includes an
assignment as provided for in this paragraph.
(d)(1) A newly executed inventor oath or declaration under § 1.63 is not
required under § 1.51(b)(2) and § 1.53(f) or § 1.497(a) in an application
that claims the benefit under 35 U.S.C. 120, 121, or 365(c) in compliance
with § 1.78 of an earlier-filed application, provided that:
(i) An executed oath or declaration in compliance with this section was
filed in the earlier-filed application;
(ii) A copy of such oath or declaration, showing the signature or an
indication thereon that it was executed, is submitted in the continuing
application; and
(iii) Any new inventors named in the continuing application provide an
executed oath or declaration in compliance with this section.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 379 |
(2) If applicable, the copy of the executed oath or declaration
submitted under this paragraph must be accompanied by a statement signed
pursuant to § 1.33(b) requesting the deletion of the name or names of the
person or persons who are not inventors in the continuing application.
(3) If the earlier-filed application has been accorded status via a
petition under § 1.42 or § 1.47, the copy of the executed oath or
declaration must be accompanied by a copy of the decision granting
the petition in the earlier-filed application, unless all inventors or
legal representatives subsequently joined in the earlier-filed application.
If one or more nonsigning inventor(s) or legal representative(s)
subsequently joined in the earlier-filed application, the copy of the
executed oath or declaration must be accompanied by a copy of the executed
oath or declaration filed by the inventor or legal representative to join
in the application.
(e) An oath or declaration filed at any time pursuant to 35 U.S.C.
115(h)(1) will be placed in the file record of the application or patent,
but may not be reviewed by the Office. Any request for correction of the
named inventorship must comply with § 1.48 in an application and § 1.324 in
a patent.
15. Section 1.64 is amended by revising paragraph (b) to read as
follows:
§ 1.64 Person making oath or declaration.
* * * * *
(b) If the person making the oath or declaration or any supplemental
oath or declaration is not the inventor (§§ 1.42, 1.47, or 1.67), the oath
or declaration shall state the relationship of the person to the inventor,
and, upon information and belief, the facts which the inventor is required
to state. If the person signing the oath or declaration is the legal
representative of a deceased or legally incapacitated inventor, the oath or
declaration shall also state that the person is a legal representative and,
unless such information is supplied on an application data sheet in
accordance with § 1.76, the residence and mailing address of the legal
representative.
16. Section 1.67 is revised to read as follows:
§ 1.67 Noncompliant oath or declaration.
(a) Where an oath or declaration does not comply with a requirement of
35 U.S.C. 115, or a requirement of § 1.63 or 1.162, the Office may require,
or the inventors and applicants may submit, an oath or declaration meeting
the requirements of § 1.63 or § 1.162 to correct any deficiencies or
inaccuracies present in the earlier-filed oath or declaration.
(1) Deficiencies or inaccuracies relating to all the inventors or
applicants (§ 1.42 or § 1.47) may be corrected with an oath or declaration
in compliance with 35 U.S.C. 115 and § 1.63 or 1.162 signed by all the
inventors or applicants.
(2) Deficiencies or inaccuracies relating to fewer than all of the
inventor(s) or applicant(s) (§ 1.42 or § 1.47) may be corrected with an
oath or declaration in compliance with 35 U.S.C. 115 and § 1.63 or 1.162
identifying the entire inventive entity but signed only by the inventor(s)
or applicant(s) to whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure to meet the
requirements of § 1.63(b) in an oath or declaration may be corrected with a
supplemental application data sheet in accordance with § 1.76.
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 380 |
(b) No new matter may be introduced into a nonprovisional application
after its filing date, even if an oath or declaration is filed to correct
deficiencies or inaccuracies present in the earlier-filed oath or
declaration.
17. Section 1.76 is amended by revising paragraphs (a), (c), and (d)(1)
to read as follows:
§ 1.76 Application data sheet.
(a) Application data sheet: An application data sheet is a sheet or
sheets, that may be submitted in a provisional application, a
nonprovisional application, or an international application entering the
national stage under 35 U.S.C. 371, and must be submitted to claim priority
to or the benefit of a prior-filed application under 35 U.S.C. 119, 120,
121, or 365. An application data sheet contains bibliographic data,
arranged in a format specified by the Office. An application data sheet
must be titled "Application Data Sheet" and must contain all of the section
headings listed in paragraph (b) of this section, with any appropriate data
for each section heading. If an application data sheet is provided, the
application data sheet is part of the provisional or nonprovisional
application for which it has been submitted.
* * * * *
(c) Supplemental application data sheets. Supplemental application
data sheets:
(1) May be supplied only after filing of the application, regardless of
whether an application data sheet under paragraph (a) of this section was
submitted on filing, and until payment of the issue fee, either to correct
or update information in a previously submitted application data sheet, or
an oath or declaration under § 1.63 or § 1.67, except that inventorship
changes are governed by § 1.48, and correspondence changes are governed by
§ 1.33(a); and
(2) Must be titled "Supplemental Application Data Sheet," include all of
the section headings listed in paragraph (b) of this section, include all
appropriate data for each section heading, be signed in accordance with §
1.33(b), and identify the information that is being changed, with
underlining for insertions of text, and strike-through or brackets for
deletions of text.
(d) * * *
(1) The most recent submission will govern with respect to
inconsistencies as between the information provided in an application data
sheet, an amendment to the specification, a designation of a correspondence
address, or by a § 1.63 or § 1.67 oath or declaration, except that the most
recent oath or declaration (§ 1.63 or § 1.67) will govern with respect to
the naming of inventors (§ 1.41(a)(1)), and that the most recent
application data sheet will govern with respect to foreign priority
(§ 1.55) or domestic benefit (§ 1.78) claims;
* * * * *
18. Section 1.78 is amended by revising paragraphs (a)(2)(iii) and
(a)(5)(iii) to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a) * * *
(2) * * *
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 381 |
(iii) If the later-filed application is a nonprovisional application,
the reference required by this paragraph must be included in an application
data sheet (§ 1.76(b)(5)) or a supplemental application data sheet (§
1.76(c)).
* * * * *
(5) * * *
(iii) If the later-filed application is a nonprovisional application,
the reference required by this paragraph must be included in an application
data sheet (§ 1.76(b)(5)) or a supplemental application data sheet (§
1.76(c)).
* * * * *
19. Section 1.172 is revised to read as follows:
§ 1.172 Applicants.
(a) A reissue applicant must submit an oath or declaration accompanied
by the written consent of all assignees, if any, owning an undivided
interest in the patent.
(b) Oath or declaration:
(1) Nonbroadening reissues: If the application does not seek to
enlarge the scope of the claims of the original patent, the oath or
declaration must be signed by:
(i) The inventor or inventors, including the legal representatives of
deceased or legally incapacitated inventors or a § 1.47 applicant for a
nonsigning inventor;
(ii) An assignee of the entire interest; or
(iii) All partial assignees together with all inventors who have not
assigned their rights, including the legal representatives of deceased or
legally incapacitated inventors or a § 1.47 applicant for a nonsigning
inventor.
(2) Broadening reissues: If the applicant seeks to enlarge the scope of
the claims of the original patent, the oath or declaration must be signed
by:
(i) The inventor or inventors, including the legal representatives of
deceased or legally incapacitated inventors or a § 1.47 applicant for a
nonsigning inventor; or
(ii) For a reissue application filed on or after September 16, 2012, the
assignee of the entire interest where the application for the original
patent was filed by the assignee of the entire interest (i.e., the oath or
declaration was executed by the assignee under § 1.42 or § 1.47).
(c) Assignee ownership: All assignees consenting to the reissue must
establish their ownership in the patent by filing in the reissue
application a submission in accordance with the provisions of § 3.73(b).
(d) A reissue will be granted to the original patentee, his legal
representatives or assigns as the interest may appear.
20. Section 1.175 is amended by revising paragraphs (a), (b), (c), and
(e), and adding paragraph (f), to read as follows:
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 382 |
§ 1.175 Reissue oath or declaration.
(a) The reissue oath or declaration, in addition to complying with the
requirements of § 1.63, must also specifically identify at least one error
pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and
state that the applicant believes the original patent to be wholly or
partly inoperative or invalid by reason of each one of the following
reasons that are applicable:
(1) A defective specification or drawing;
(2) The patentee claiming more than the patentee had the right to claim
in the patent; or
(3) The patentee claiming less than the patentee had the right to claim
in the patent and identify a broadened claim and a broadened portion of the
specification if a change thereto is the basis for the claim broadening;
(b) A claim broadened in any respect must be treated and identified as a
broadened claim pursuant to paragraph (a)(3) of this section.
(c) Where all errors previously identified in the reissue oath or
declaration pursuant to paragraph (a) of this section are no longer being
relied upon as the basis for reissue, a new error currently being relied
upon as the basis for reissue must be identified in a reissue oath or
declaration under this section, which statement need only address the new
error.
* * * * *
(e) Continuing reissue applications:
(1) Where a continuing reissue application replaces a prior reissue
application, the requirement for a reissue oath or declaration pursuant to
§ 1.172 may be satisfied by a copy of the reissue oath or declaration from
the prior reissue application it replaces.
(2) Where a continuing reissue application does not replace a prior
reissue application, the requirement for a reissue oath or declaration
pursuant to § 1.172 may be satisfied by:
(i) A newly executed reissue oath or declaration that identifies at
least one error in the original patent which has not been corrected by a
prior reissue application; or
(ii) A copy of the reissue oath or declaration from a prior reissue
application within the chain of the benefit claim, accompanied by a
statement that explains either that an identified error was not corrected
in a prior reissue application, or how an identified error is currently
being corrected in a manner different than in a prior reissue application.
(f) A reissue oath or declaration filed at any time pursuant to 35
U.S.C. 115(h)(1) will be placed in the file record of the reissue
application, but may not be reviewed by the Office.
21. Section 1.311 is amended by adding new paragraph (c) to read as
follows:
§ 1.311 Notice of allowance.
* * * * *
(c) Where an assignee, person to whom the inventor is under an
obligation to assign the invention, or person who otherwise shows
sufficient proprietary interest in the matter has filed an application
under §§ 1.42, or 1.47, the applicant must notify the Office of any change
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 383 |
in ownership of the application no later than payment of the issue fee. The
Office will treat the absence of such a notice as an indication that there
has been no change in ownership of the application.
22. Section 1.497 is revised to read as follows:
§ 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires to enter
the national stage under 35 U.S.C. 371 pursuant to § 1.495, and a
declaration in compliance with this section has not been previously
submitted in the international application under PCT Rule 4.17(iv) within
the time limits provided for in PCT Rule 26ter.1, the applicant must file
an oath or declaration in accordance with § 1.63.
(b) An oath or declaration will be accepted as complying with 35 U.S.C.
371(c)(4) and § 1.495(c) for purposes of entering the national stage under
35 U.S.C. 371 if it:
(1) Is executed in accordance with either §§ 1.66 or 1.68;
(2) Identifies the application to which it is directed;
(3) Identifies each inventor;
(4) States that the person executing the oath or declaration believes
the named inventor or inventors to be the original inventor or an original
joint inventor of a claimed invention in the application;
(5) States that the application was made or was authorized to be made by
the inventor; and
(6) Where the oath or declaration is not made by the inventor, complies
with the applicable requirements of §§ 1.42 and 1.47.
(c) If the oath or declaration meeting the requirements of § 1.497(b)
does not also meet the requirements of § 1.63, an oath or declaration in
compliance with § 1.63 or a supplemental application data sheet will be
required in accordance with § 1.67.
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
23. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
24. Section 3.31 is amended by adding new paragraph (h) to read as
follows:
§ 3.31 Cover sheet content.
* * * * *
(h) The assignment cover sheet required by § 3.28 must contain a
conspicuous indication of an intent to utilize the assignment as the
required oath or declaration under § 1.63 of this chapter.
25. Section 3.71 is amended by revising paragraph (a) to read as
follows:
§ 3.71 Prosecution by assignee.
(a) Patents--conducting of prosecution on behalf of assignee. Subject to
the requirements of §§ 1.31 and 1.33(f), one or more assignees as defined
in paragraph (b) of this section may, after becoming of record pursuant to
paragraph (c) of this section, conduct prosecution of a national patent
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 384 |
application or a reexamination proceeding to the exclusion of either the
inventive entity or the assignee(s) previously entitled to conduct
prosecution. Conflicts between purported assignees are handled in
accordance with § 3.73(c)(4).
* * * * *
26. Section 3.73 is amended by revising the section heading, paragraphs
(b)(2)(ii) and (c)(2), and adding new (b)(2)(iii), (b)(3), (c)(3) and
(c)(4) to read as follows:
§ 3.73 Establishing right of assignee to request or take action in a
trademark or patent matter.
* * * * *
(b) * * *
(2) * * *
(ii) Being signed by a person having apparent authority to sign on
behalf of the assignee; or
(iii) Being signed by a patent practitioner of record pursuant to § 1.32
of this chapter.
(3) In any one application or proceeding, a subsequent statement must
provide a complete chain of title.
(c) * * *
(2) If the submission is by an assignee of less than the entire right,
title, and interest (e.g., more than one assignee exists), the Office may
refuse to accept the submission as an establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its
ownership interest, so as to account for the entire right, title, and
interest in the application or patent by all parties including inventors;
or
(ii) Each assignee submits a statement identifying the parties including
inventors who together own the entire right, title, and interest and
stating that all the identified parties own the entire right, title, and
interest.
(3) A statement under paragraph (b) of this section from a prior
application for which benefit is claimed under 35 U.S.C. 120, 121, or
365(c) in a continuing application may have effect in the continuing
application if the inventorship of the continuing application is the
same as the prior application or one or more inventors from the prior
application have been deleted in the continuing application, and a copy of
the statement under paragraph (b) of this section from the prior
application is filed in the continuing application.
(4) Where two or more purported assignees file conflicting statements
under paragraph (b) of this section, the Director will determine which, if
any, purported assignee will be permitted to control prosecution of the
application.
December 30, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
Disclaimers
7,949,078 - Jafar Savoj, Sunnyvale, CA (US); Pierte Roo, Sunnyvale, CA
(US). HIGH-PRECISION SIGNAL DETECTION FOR HIGH-SPEED RECEIVER. Patent dated
May 24, 2011. Disclaimer filed Nov. 2, 2011, by the assignee MARVELL
INTERNATIONAL LTD.
The term of this patent shall not extend beyond the expiration date of
Patent No. 7,643,583.
7,971,948 - Atsushi Oshima, Shiojiri (JP). LIQUID JET APPARATUS AND
PRINTING APPARATUS. Patent dated July, 5 2011. Disclaimer filed Nov. 10,
2011, by the assignee SEIKO EPSON CORPORATION.
The term of this patent shall not extend beyond the expiration date of
Patent No. 7,717,530.
5,725,676 - Chung-Wai Chiu, Westfield; Eleanor Schiermeyer, Bound Brook;
David J. Thomas, Flemington; Manish B. Shah, Somerset, all of N.J.
THERMALLY INHIBITED STARCHES AND FLOURS AND PROCESS FOR THEIR PRODUCTION.
Patent dated March. 10, 1998. Disclaimer filed March. 27, 1998, by the
assignee National Starch and Chemical Investment Holding Corporation.
The term of this patent shall not extend beyond the expiration date of
Application No. 08/473688.
7,811,812 - Thomas W. Dubensky, Jr., Del Mar, CA (US); John M. Polo,
Encintas, CA (US); Barbara A. Belli, San Diego, CA (US); Sondra
Schlesinger, St. Loius, MO(US); Sergey A. Drvga, Fort Collins, CO (US);
Ilya Frolov, St. Louis, MO (US). RECOMBINANT ALPHAVIRUS-BASED VECTORS WITH
REDUCED INHIBITION OF CELLULAR MACROMOLECULAR SYNTHESIS. Patent dated Oct.
12, 2010. Disclaimer filed Nov. 9, 2011, by the assignee Novartis Vaccines
& Diagnostics, Inc.
The term of this patent shall not extend beyond the expiration date of
Patent No. 5,814,482.
7,087,555 - William S. Halliday, Cypress, TX (US); David W. Schwertner,
The Woodlands, TX (US); S. Dwight Strickland, Kingwood, TX (US). DRILLING
FLUIDS COMPRISING SIZED GRAPHITE PARTICLES. Patent dated Aug. 8, 2006.
Disclaimer filed Aug. 1, 2011, by the inventor William S. Halliday.
Hereby disclaims claims 1-65 of the patent.
7,911,560 - Kiyoshi Kamiya, Saitama (JP). MULTIPLE-LAYER LIQUID CRYSTAL
DISPLAY DEVICE HAVING A FLEXIBLE SUBSTRATE. Patent dated March 22, 2011.
Disclaimer filed May 20, 2011, by the inventor Kiyoshi Kamiya.
Hereby disclaims claims 16-19 of the patent.
7,915,969 - Yoshito Shimizu, Kanagawa (JP); Noriaki Saito, Tokyo (JP).
DISTORTION COMPENSATING CIRCUIT. Patent dated Mar. 29, 2011. Disclaimer
filed Nov. 4, 2011, by the assignee Panasonic Corporation.
The term of this patent shall not extend beyond the expiration date of
Patent No. 7,535,310.
7,915,969 - Yoshito Shimizu, Kanagawa (JP); Noriaki Saito, Tokyo (JP).
DISTORTION COMPENSATING CIRCUIT. Patent dated Mar. 29, 2011. Disclaimer
filed Nov. 4, 2011, by the assignee Panasonic Corporation.
The term of this patent shall not extend beyond the expiration date of
Patent No. 7,535,310.
6,444,673 - Claude Cortel, Paris; Ge'rard Roussel, Soisy sur Seine, both
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 386 |
of (FR). OPTICALLY ACTIVE 5H-PYRROLO(3,4-B)PYRAZINE DERIVATIVE, ITS
PREPARATION AND PHARMACEUTICAL COMPOSITIONS CONTAINING IT. Patent dated
Sep. 3, 2002. Disclaimer filed Nov. 23, 2011, by the assignee Sunovion
Pharmaceuticals Inc.
The term of this patent shall not extend beyond the expiration date of
Patent No. 6,319,926.
6,575,304 - George F. Cudahy, 4 Cielo Lindo Dr., Anthony, NM (US) 88021.
VIBRATING SCREEN APPARATUS. Patent dated June. 10, 2003. Disclaimer filed
Dec. 22, 2011, by the inventor George F. Cudahy.
Hereby disclaims claims 1-15 of the patent.
6,841,108 - Peter Savenok, 2S 425 Orchard Rd., Wheaton, IL (US) 60187.
METHOD OF MANUFACTURING A BALUSTRADE OF SYNTHETIC MATERIAL. Patent dated
Jan. 11, 2005. Disclaimer filed Jan. 28, 2011, by the inventor Peter
Savenok.
Hereby enters this disclaimer to all claims of said patent.
6,875,445 - Edmund V. Dennett, Jr., Milton, MA (US); Robert M. Raleigh,
Jr., Pembroke, MA (US); Bruce H. Aronson, Sharon, MA (US). ENCAPSULATED
CALCIUM ACETATE CAPLET AND A METHOD FOR INHIBITING GASTROINTESTINAL
PHOSPHOROUS ABSORPTION. Patent dated April. 5, 2005. Disclaimer filed Nov.
17, 2011, by the assignee Fresenius Medical Care Holdings, Inc.
The term of this patent shall not extend beyond the expiration date of
Patent No. 6,576,665.
7,603,365 - Yen-Fu Chen, Austin, TX (US); John H. Bosma, Cedar Park, TX
(US); John W. Dunsmoir, Round Rock, TX (US); Venkatesan Ramamoorthy, Round
Rock, TX (US); Mei Yang Selvage, Pocatello, ID (US). SYSTEM AND METHOD FOR
CAPTURE AND PROCESSING OF OVERFLOW CHARACTERS FROM USER INPUT. Patent dated
Oct. 13, 2009. Disclaimer filed Oct. 9, 2008, by the assignee International
Business Machines Corporation.
The term of this patent shall not extend beyond the expiration date of
Patent No. 7,433,877.
7,959,473 - Russell Lee Machado, San Diego, CA (US); Victor H. Renteria,
Poway, CA (US); Thuyen Dinh, San Diego, CA (US). UNIVERSAL CONNECTOR
ASSEMBLY AND METHOD OF MANUFACTURING. Patent dated June 14, 2011.
Disclaimer filed April 20, 2011, by the assignee Pulse Engineering, Inc.
The term of this patent shall not extend beyond the expiration date of
Patent No. 7,661,994.
8,027,632 - Scott T. Mazar, Inver Grove Heights, MN (US). SYSTEMS,
DEVICES, AND METHODS FOR SELECTIVELY PREVENTING DATA TRANSFER FROM A
MEDICAL DEVICE. Patent dated Sep. 27, 2011. Disclaimer filed May 19, 2011,
by the assignee Cardiac Pacemakers, Inc.
The term of this patent shall not extend beyond the expiration date of
Patent No. 7,289,761.
D. 642,903 - Neema Pourian, Skokie, IL (US). DISPENSER. Patent dated
Aug. 9, 2011. Disclaimer filed Dec. 29, 2011, by the assignee Wm. Wrigley
Jr. Company.
Hereby disclaims claim 1 of the patent.
Errata
"All reference to Patent No. D,651,442 to Tom Kwok-Yung Cheng of Rowland
Heights, CA for PILLOW appearing in the Official Gazette of January 03,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,087,590 to Ynkiun P. Wang, et al of
Cupertino, CA for INDICIA READING TERMINAL INCLUDING FRAME QUALITY
EVALUATION PROCESSING appearing in the Official Gazette of January 03, 2012
should be deleted since no patent granted."
"All reference to Patent No. 8,087,829 to Kazuya Suzuki, et al of Osaka,
Japan for ROLLING BEARING AND ROLLING BEARING ASSEMBLY appearing in the
Official Gazette of January 03, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,087,908 to Dongsheng Wang of Beijing,
China for VALVE-TYPE OIL FEEDER appearing in the Official Gazette of
January 03, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,087,997 to Mark L. Yoseloff, et al of
Henderson, NV for METHOD AND APPARATUS FOR VARIABLE CONTRIBUTION
PROGRESSIVE JACKPOTS appearing in the Official Gazette of January 03, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,088,476 to Yoshikazu Yasukawa, et al of
Shizuoka, Japan for ASSEMBLY INCLUDING POLYTERAFLUOROETHYLENE POROUS BODY
appearing in the Official Gazette of January 03, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,088,879 to Hiroki Sakamoto, et al of
Osaka, Japan for POLYSILANE AND POLYSILANE-CONTAINING RESIN COMPOSTITION
appearing in the Official Gazette of January 03, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,089,022 to Maurizio Curnis, et al of
Carvico (BG), Italy for LOW-VOLTAGE CIRCUIT BREAKER WITH SEALED
INTERCHANGEABLE PLOES appearing in the Official Gazette of January 03, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,089,069 to Byoung-Keon Park of Suwon-Si
Korea, Republic of for THIN FILM TRANSISTOR, METHOD OF FABRICATING THE
SAME, AND ORGANIC LIGHT EMITTING DIODE DISPLAY DEVICE INCLUDING THE SAME
appearing in the Official Gazette January 03, 2012 should be deleted since
no patent was granted."
"All reference to Patent No. 8,089,076 to Steven D. Lester, et al of
Palo Alto, CA for EDGE-EMITTING LED LIGHT SOURCE appearing in the Official
Gazette of January 03, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,089,174 to Tomohiro Numajiri of Nagasaki,
Japan for WIND TURBINE GENERATOR appearing in the Official Gazette of
January 03, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,089,223 to Gongyin Chen, et al of
Henderson, NV for INTERLACED MULTI-ENERGY RADIATION SOURCES appearing in
the Official Gazette of January 03, 2012 should be deleted since no patent
was granted."
"All reference to Patent No. 8,089,224 to William Bertozzi, et al of
Lexington MA for METHODS FOR DIAGNOSING AND AUTOMATICALLY CONTROLLING THE
OPERATION OF A PARTICLE ACCELERATOR appearing in the Official Gazette of
January 03, 2012 should be deleted since no patent was granted."
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 388 |
"All reference to Patent No. 8,089,361 to Noboru Kato of Moriyama-Shi,
Japan for WIRELESS IC DEVICE appearing in the Official Gazette of January
03, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,089,471 to Tao Peng, et al of Shanghai,
China for APPARATUS AND METHOD FOR REDUCING AVERAGE SCAN RATE TO DETECT A
CONDUCTIVE OBJECT ON A SENSING DEVICE appearing in the Offical Gazette of
January 03, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,089,607 to Naoyuki Kobayashi, et al of
Fukaya, Japan for EXPOSURE APPARATUS AND METHOD FOR PRODUCING DEVICE
appearing in the Official Gazette of January 03, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,089,660 to Tomokazu yanai, et al of
Yokohama-Shi, Japan for IMAGE PROCESSING APPARATUS, IMAGE FORMING
APPARATUS, AND CONTROL METHOD THEREOF, WHICH FORM AN IMAGE BY APPLYING
N-RAY PROCESSING appearing in the Official Gazette of January 03, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,089,898 to Gregory G. Raleigh of
Woodside, CA for VERIFIABLE DEVICE ASSISTED SERVICE POLICY IMPLEMENTATION
appearing in the Official Gazette of January 03, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,090,115 to Qian, Xu, et al of College
Station, TX for DISTRIBUTED JOINT SOURCE-CHANNEL CODING OF VIDEO USING
RAPTOR CODES appearing in the Official Gazette of January 03, 2012 should
be deleted since no patent was granted."
"All reference to Patent No. 8,090,325 to Solomon Trainin, et al of
Haifa, Israel for WIRELESS COMMUNICATION SYSTEM, ASSOCIATED METHODS AND
DATA STRUCTURES appearing in the Official Gazette of January 03, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,090,385 to Koichiro Kasama of Kawasaki,
Japan for MOBILE TERMINAL AND STEP LENGTH-CALCULATING METHOD appearing in
the Official Gazette of January 03, 2012 should be deleted since no patent
was granted."
"All reference to Patent No. 8,090,589 to Markus Schnell, et al of
Erlangen, Germany for ENCODING AN INFORMATION SIGNAL appearing in the
Official Gazette of January 03, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,090,610 to Dharma K. Shukla, et al of
Sammamish, WA for EXTENSIBLE FRAMEWORK FOR DESIGNING WORKFLOW S appearing
in the Official Gazette of January 03, 2012 should be deleted since no
patent was granted."
"All reference to Patent No. 8,090,661 to Wei Yen, et al of Los Altos
Hills, CA for STATIC-OR-DYNAMIC AND LIMITED-OR-UNLIMITED CONTENT RIGHTS
appearing in the Official Gazette of January 03, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,090,985 to Marc A. Gollub, et al of Round
Rock, TX for MEMORY MEATADAT USED TO HANDLE MEMORY ERRORS WITHOUT PROCESS
TERMINATION appearing in the Official Gazette of January 03, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,083,050 to William A. Bastian II, et al
of Carmel, IN for THREE-DIMENSIONAL AUTOMATED PICK MODULE appearing in the
Official Gazette of December 27, 2011 should be deleted since no patent was
granted."
"All reference to Patent No. 8,083,329 to Morimasa Kajiura of
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 389 |
Ichinomiya-Shi, Japan for FLOW PATH UNIT, INSPECTION APPARATUS, AND
INSPECTION METHOD appearing in the Official Gazette of December 27, 2011
should be deleted since no patent was granted."
"All reference to Patent No. 8,083,564 to Chih-Hao Tsai, et al of
Changhua County, Taiwan for FABRICATING METHOD OF ELECTRON-EMITTING DEVICE
appearing in the Official Gazette of December 27, 2011 should be deleted
since no patent was granted."
"All reference to Patent No. 8,083,843 to Makoto Sekiyama of Tokyo,
Japan for AQUEOUS DISPERSION OF SURFACE-TREATED CARBON BLACK AND METHOD OF
PRODUCING THE SAME appearing in the Official Gazette of December 27, 2011
should be deleted since no patent was granted."
"All reference to Patent No. 8,084,468 to Robert James Pasteris, et al
of Newark, Delaware for FUNGICIDAL AMIDES appearing in the Official Gazette
of December 27, 2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,084,636 to Andrew David Miller, et al of
London, United Kingdom for SULFUR-CONTAINING PHOSPHOLIPID DERIVATIVES
appearing in the Official Gazette of December 27, 2011 should be deleted
since no patent was granted."
"All reference to Patent No. 8,084,738 to James L. Bertsch, et al of
Palo-Alto, CA for CONVERGING MULTIPOLE ION GUIDE FOR ION BEAM SHAPING
appearing in the Official Gazette of Gazette of December 27, 2011 should be
deleted since no patent was granted."
"All reference to Patent No. 8,084,797 to Kwang-Ho Lee of
Chungeheongbuk-Do, Japan for IMAGE SENSOR AND METHOD FOR FABRICATING THE
SAME appearing in the Official Gazette of December 27, 2011 should be
deleted since no patent was granted."
"All reference to Patent No. 8,084,820 to Takashi Kumagai, et al of
Chino-Shi, Japan for INTEGRATED CIRCUIT DEVICE AND ELECTRONIC INSTRUMENT
appearing in the Official Gazette of December 27, 2011 should be deleted
since no patent was granted."
"All reference to Patent No. 8,085,077 to Armond Hairapetian of Newport
Coast, CA for CURRENT-CONTROLLED CMOS LOGIC FAMILY appearing in the
Official Gazette of December 27, 2011 should be deleted since no patent was
granted."
"All reference to Patent No. 8,085,114 to Jeffrey D. Chereson, et al of
Erie, PA for ELECTROMAGNETIC FILTER WITH A CONDUCTIVE CLIP RETENTION SYSTEM
AND METHOD OF ASSEMBLY appearing in the Official Gazette of Deecmber 27,
2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,085,307 to Hiroyoshi Inaba of
Utsunomiya-Shi, Japan for OPTICAL APPARATUS HAVING MAGNET MEMBER appearing
in the Official Gazette of December 27, 2011 should be deleted since no
patent was granted."
"All reference to Patent No. 8,085,376 to Kuei-Wei Huang, et al of
Taipei City, Taiwan for PIXEL ARRAY STRUCTURE appearing in the Official
Gazette of December 27, 2011 should be deleted since no patent was
granted."
"All reference to Patent No. 8,085,504 to Yoshinari Yoshida, et al of
Osaka, Japan for SUSPENSION BOARD WITH METAL SUPPORTING BOARD HAVING
MAGNETIC-HEAD MOUNTING REGION appearing in the Official Gazette of December
27, 2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,085,612 to Fariborz F. Roohparvar of
Monte Sereno, CA for METHOD AND APPARATUS FOR MANAGING BEHAVIOR OF MEMORY
DEVICES appearing in the Official Gazette of December 27, 2011 should be
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 390 |
deleted since no patent was granted."
"All reference to Patent No. 8,085,649 to Toshihiko Sakai, et al of
Osaka, Japan for SUPER-RESOLUTION OPTCIAL RECORDING MEDIUM ON WHICH
INFORMATION IS RECORDED USING TRAIN OF PREPITS, OPTICAL RECORDING MEDIUM
REPRODUCTION DEVICE, AND CONTORL METHOD appearing in the Official Gazette
of December 27, 2011 should be deleted since no patent was granted."
"All reference to Patent No. 8.085,682 to Calin Ciordas, et al of
Eindhoven, Netherlands for ELECTRONIC DEVICE, SYSTEM ON CHIP AND METHOD FOR
MONITORING A DATA FLOW appearing in the Official Gazette of December 27,
2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,085,762 to David Solomon, et al of River
Vale, NJ for GPON MANAGEMENT SYSTEM appearing in the Official Gazette of
December 27, 2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,085,815 to Bernd Heise, et al of
Muenchen, Germany for RETRANSMISSION IN DATA COMMUNICATION SYSTEMS
appearing in the Official Gazette of December 27, 2011 should be deleted
since no patent was granted."
"All reference to Patent No. 8,085,854 to Barin Geoffrey Haskell, et al
of Tinton Falls, NJ for SYSTEM, METHOD AND COMPUTER-READABLE MEDIUM FOR
ENCODING A SIGNAL INTO MACROBLOCKS appearing in the Official Gazette of
December 27, 2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,085,999 to Teruyuki Higuchi of Tokyo,
Japan for APPARATUS FOR BIOMETRICAL FEATURE appearing in the Official
Gazette of December 27, 2011 should be deleted since no patent was
granted."
"All reference to Patent No. 8,086,447 to Masahiro Oshikiri, et al of
Kanagawa, Japan for ENCODER, DECODER, ENCODING METHOD, AND DECODING METHOD
appearing in the Official Gazette of December 27, 2011 should be deleted
since no patent was granted."
"All reference to Patent No. 8,086,540 to Kenneth P. Weiss of Newton, MA
for UNIVERSAL SECURE REGISTRY appearing in the Official Gazette of December
27, 2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,086,630 to Leslie Yeh, et al of Mountain
View, CA for USING LOCATION-SPECIFIC PRICE AND/OR PERFORMANCE INFORMATION
IN AN AD SYSTEM appearing in the Official Gazette of December 27, 2011
should be deleted since no patent was granted."
"All reference to Patent No. 8,086,639 to Sivasankaran Chandrasekar, et
al of Menlo Park, CA for OPERATIONALLY COMPLETE HIERARCHICAL REPOSITORY IN
A RELATIONAL DATABASE appearing in the Official Gazette of December 27,
2011 should be deleted since no patent was granted."
"All reference to Patent No. 8,086,654 to Ben Eitel of Gaertringen,
Germany for ADAPTIVE FILTER DEVICE AND METHOD FOR DETERMINING FILTER
COEFFICIENTS appearing in the Official Gazette of December 27, 2011 should
be deleted since no patent was granted."
"All reference to Patent No. 8,086,683 to Robert D. Haskins, et al of
Amherst, NH for APPARATUS AND METHODS FOR CONTRLLONG THE TRANSMISSION OF
MESSAGES appearing in the Official Gazette of December 27, 2011 should be
deleted since no patent was granted."
"All reference to Patent No. 8,086,753 to Brian Dote, et al of Waipahu,
Hawaii for GENERATION LOW RESOLUTION USER INTERFACES FOR TRANSMISSION TO
MOBILE DEVICES appearing in the Official Gazette of December 27, 2011
should be deleted since no patent was granted."
"All reference to Patent No. 8,086,784 to Jacob Oshins of Redmond, WA
for DIRECT MEMORY ACCESS FILTER FOR VIRTUALIZED OPERATING SYSTEMS appearing
in the Official Gazette of December 27, 2011 should be deleted since no
patent was granted."
"All reference to Patent No. 8,086,949 to Huican Zhu, et al of San Jose,
CA for ANCHOR TAG INDEXING IN A WEB CRAWLER SYSTEM appearing in the
Official Gazette of December 27, 2011 should be deleted since no patent was
granted."
Erratum
In the notice of Certificate of Correction appearing in November 1,
2011, delete all reference to Patent No. 7,910,339, issue of October 11,
2011. The errors appearing on the certificate of correction does not
correspond to text in the printed patent. The certificate of correction
should not have been issued.
| Certificates of Correction |
Certificates of Correction
for January 10, 2012
5,627,382 7,939,558 8,005,039 8,038,852
6,153,401 7,939,699 8,005,253 8,039,037
6,321,201C1 7,940,843 8,005,526 8,039,563
6,333,045C1 7,942,338 8,006,280 8,039,678
6,414,340 7,943,571 8,007,319 8,039,796
6,542,936C1 7,944,805 8,007,515 8,039,868
6,621,870 7,945,678 8,008,338 8,040,206
6,836,885 7,947,503 8,008,566 8,040,906
6,887,842 7,947,701 8,008,845 8,041,032
7,085,077 7,948,883 8,009,185 8,041,127
7,167,137 7,950,047 8,009,582 8,042,011
7,185,540 7,951,532 8,009,631 8,042,681
7,378,799 7,951,803 8,010,038 8,043,160
7,452,408 7,953,752 8,010,668 8,043,195
7,468,383 7,954,064 8,011,038 8,043,213
7,491,534 7,954,204 8,012,014 8,043,539
7,568,163 7,954,873 8,012,088 8,043,907
7,572,765 7,955,013 8,012,528 8,043,933
7,611,562 7,955,805 8,013,163 8,043,959
7,612,869 7,956,636 8,014,344 8,044,100
7,620,456 7,957,377 8,014,436 8,044,134
7,622,414 7,957,595 8,015,011 8,044,242
7,629,284 7,957,881 8,015,314 8,044,633
7,651,637 7,958,141 8,016,275 8,047,656
7,662,451 7,959,442 8,016,505 8,048,676
7,664,264 7,959,929 8,016,846 8,048,687
7,669,218 7,959,933 8,016,895 8,048,708
7,673,441 7,960,301 8,018,135 8,048,756
7,680,807 7,960,566 8,018,863 8,049,106
7,681,687 7,960,599 8,018,975 8,049,258
7,684,628 7,961,160 8,019,346 8,050,087
7,689,016 7,961,601 8,019,558 8,050,377
7,700,931 7,961,704 8,020,233 8,050,561
7,714,849 7,962,132 8,020,464 8,052,075
7,717,304 7,962,763 8,020,830 8,053,192
7,727,719 7,963,269 8,020,948 8,053,450
7,737,360 7,966,126 8,021,403 8,053,899
7,745,111 7,966,375 8,021,786 8,053,909
7,750,873 7,966,695 8,022,017 8,055,909
7,761,811 7,966,969 8,022,826 8,056,655
7,772,251 7,968,104 8,022,996 8,058,118
7,773,711 7,968,347 8,023,424 8,058,477
7,784,684 7,969,222 8,023,433 8,058,872
7,785,299 7,969,449 8,023,723 8,058,997
7,785,690 7,969,866 8,023,954 8,059,687
7,787,859 7,970,048 8,024,000 8,060,551
7,788,403 7,970,724 8,024,242 8,061,042
7,790,150 7,971,260 8,024,344 8,061,081
7,790,727 7,972,700 8,024,373 8,061,752
7,790,980 7,972,938 8,024,755 8,062,377
7,796,107 7,973,049 8,024,777 8,062,436
7,799,860 7,974,873 8,024,795 8,062,945
7,805,026 7,975,025 8,025,096 8,062,958
7,812,031 7,975,147 8,025,680 8,063,035
7,815,254 7,976,291 8,025,901 8,063,100
7,816,543 7,976,492 8,025,934 8,063,194
7,820,878 7,977,489 8,026,237 8,063,454
7,825,867 7,978,874 8,026,320 8,063,699
7,831,230 7,978,926 8,026,917 8,063,778
7,832,809 7,979,090 8,026,918 8,064,161
7,839,862 7,980,444 8,027,023 8,064,520
7,840,996 7,980,722 8,027,519 8,065,056
| January 31, 2012 |
US PATENT AND TRADEMARK OFFICE |
1374 OG 393 |
7,841,464 7,981,536 8,027,632 8,065,262
7,842,010 7,981,588 8,027,649 8,065,369
7,847,841 7,981,648 8,027,724 8,065,572
7,853,588 7,981,672 8,027,776 8,065,704
7,855,599 7,981,917 8,027,976 8,066,105
7,861,289 7,982,937 8,028,092 8,066,140
7,861,290 7,983,879 8,029,060 8,066,149
7,865,390 7,984,863 8,029,233 8,066,711
7,865,414 7,986,214 8,029,259 8,066,876
7,869,790 7,986,397 8,029,260 8,067,174
7,871,442 7,986,986 8,029,618 8,067,483
7,875,628 7,987,094 8,030,014 8,067,485
7,881,750 7,987,221 8,030,340 8,067,556
7,884,123 7,987,245 8,031,117 8,068,043
7,884,884 7,987,370 8,031,342 8,068,053
7,885,402 7,990,328 8,031,519 8,068,218
7,890,378 7,991,022 8,031,695 8,068,413
7,891,330 7,991,182 8,032,431 8,068,548
7,893,869 7,991,980 8,032,927 8,068,744
7,895,800 7,992,004 8,033,245 8,069,419
7,897,372 7,992,142 8,033,375 8,070,069
7,897,797 7,992,521 8,033,578 8,070,306
7,906,772 7,992,659 8,033,895 8,072,525
7,909,884 7,994,212 8,033,951 8,072,990
7,910,105 7,994,705 8,034,421 8,073,329
7,911,209 7,995,043 8,034,578 8,073,627
7,915,401 7,995,641 8,034,805 8,073,787
7,915,500 7,995,987 8,035,038 8,073,928
7,915,808 7,996,000 8,035,374 8,076,114
7,917,910 7,996,234 8,036,143 D. 621,53
7,917,914 7,996,310 8,036,353 D. 633,50
7,924,698 7,996,916 8,036,609 D. 634,30
7,925,705 7,996,988 8,036,679 D. 641,82
7,926,225 7,997,013 8,037,028 D. 641,92
7,926,646 7,997,174 8,037,545 D. 642,41
7,927,361 7,997,351 8,037,691 D. 644,94
7,928,224 7,998,465 8,038,042 D. 647,12
7,930,231 7,998,969 8,038,059 D. 647,16
7,930,905 7,999,997 8,038,174 RE. 42,55
7,932,246 8,000,596 8,038,317 RE. 42,55
7,932,899 8,001,678 8,038,337 RE. 42,56
7,934,281 8,002,102 8,038,520 RE. 42,60
7,934,634 8,002,970 8,038,523 RE. 42,61
7,935,194 8,003,623 8,038,597 RE. 42,73
7,937,060 8,003,669 8,038,614
7,939,259 8,003,679 8,038,766
| Summary of Final Decisions Issued by the Trademark Trial and Appeal Board |
SUMMARY OF FINAL DECISIONS ISSUED BY THE TRADEMARK TRIAL AND APPEAL BOARD
December 27 – December 30, 2011
| Date Issued |
Type of Case(1) |
Proceeding or Appn. Number |
Party or Parties |
TTAB Panel (2) |
Issue(s) |
TTAB Decision |
Opposer’s or Petitioner’s mark and goods or services |
Applicant’s or Respondent’s mark and goods or services |
Mark and goods or services cited by Examining Attorney |
Issued as Precedent of TTAB |
| 12-28 |
EX |
76696033 |
Revolution Energy Solutions LLC |
Cataldo Mermelstein Ritchie* |
2(d); 2(e)(1) and 6(a) |
Both Refusals Affirmed |
|
RES AGRICULTURE [business organization and operation consultancy for a business which focuses on renewable energy production, the construction, maintenance and repair of power generation facilities; operation of power generation equipment and facilities for others] [building construction, repair, and maintenance in the field of renewable energy production; construction, maintenance, repair, and installation of power generation facilities] [generation of power and electricity using renewable energy sources] |
RES (three registrations by one entity, one mark stylized, one with design) (all for) [purchasing and procurement services for utility-scale wind farms, namely, procuring of contracts for others for the purchase of goods and labor contracting services] [construction of utility-scale wind farms, namely, erecting wind monitoring equipment, and operation of utility-scale wind farms, namely, providing electricity to others] [operation of utility-scale wind farms, namely, generation of electricity to others] |
No |
| 12-28 |
EX |
85061337 |
Tokyo Plast Intl. Ltd. |
Cataldo* Ritchie Kuczma |
2(d) |
Refusal Affirmed |
|
PINNACLE STYLE WITH SUBSTANCE (and design) [hot pots and casseroles] |
PINNACLE [bakeware] |
No |
| 12-30 |
OPP (SJ) |
91196513
91196514 |
Zachry Infrastructure, LLC v. American Infrastructure, Inc. |
Taylor
Ritchie
Lykos [Opinion "By the Board" (Baxley)] |
2(e)(1); 2(e)(2); 2(f); issue and claim preclusion |
Opposer’s motion for judgment granted in part |
|
AMERICAN INFRASTRUCTURE [Business information management in the field of heavy civil construction; supply services for third parties in the field of construction materials, namely, purchase of aggregate, asphalt, and concrete for other companies] [Building construction for residential, commercial, and institutional use; excavation services] [quarry services in the nature of stone-crushing] AMERICAN INFRASTRUCTURE [Construction consultation; construction management; construction planning; consultation services for the construction of water and wastewater plants; construction of water and wastewater plants; laying and construction of pipelines; road and highway construction; road and highway paving services; bridge construction] |
|
Yes |
| 12-30 |
CANC (SJ) |
92052047
|
Mattel, Inc. v. The Brainy Baby Company, LLC |
Seeherman
Ritchie Wolfson [Opinion "By the Board" (Baxley)] |
Whether mark is title of a single creative work |
Petition to Cancel Granted (Motion for summary judgment granted) |
LAUGH & LEARN [developmental toys for infants; infant toys] |
LAUGH & LEARN (and design) [series of prerecorded videotapes, audio cassettes, digital video discs and compact discs featuring live and animated educational materials intended to develop and improve the creative and intellectual faculties of infants and children] |
|
Yes |
(1) EX=Ex Parte Appeal; OPP=Opposition; CANC=Cancellation; CU=Concurrent Use; (SJ)=Summary Judgment; (MD)=Motion to Dismiss; (R)=Request for Reconsideration (2) *=Opinion Writer; (D)=Dissenting Panel Member
| Mailing and Hand Carry Addresses for Mail to the United States Patent and Trademark Office |
MAILING AND HAND CARRY ADDRESSES FOR
MAIL TO THE UNITED STATES PATENT AND TRADEMARK OFFICE
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR PATENTS
For most correspondence (e.g., new patent applications) no mail stop
is required because the processing of the correspondence is routine.
If NO mail stop is included on the list below, no mail stop is required
for the correspondence. See the listing under "Mail to be Directed to the
Director of the Patent And Trademark Office" for additional mail stops
for patent-related correspondence. Only the specified type of document
should be placed in an envelope addressed to one of these special mail
stops. If any documents other than the specified type identified for each
special mail stop are addressed to that mail stop, they will be
significantly delayed in reaching the appropriate area for which they are
intended. The mail stop should generally appear as the first line in
the address.
Most correspondence may be submitted electronically. See the USPTO's
Electronic Filing System (EFS-Web) internet page
http://www.uspto.gov/patents/process/file/efs/index.jsp for additional
information.
Please address mail to be delivered by the United States Postal Service
(USPS) as follows:
Mail Stop _____
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
If no Mail Stop is indicated below, the line beginning Mail Stop should
be omitted from the address.
Except correspondence for Maintenance Fee payments, Deposit Account
Replenishments (see 37 CFR 1.25(c)(4)), and Licensing and Review (see 37 CFR
5.1(c) and 5.2(c)), please address patent-related correspondence to be
delivered by other delivery services (Federal Express (Fed Ex), UPS, DHL,
Laser, Action, Purolator, etc.) as follows:
United States Patent and Trademark Office
Customer Service Window, Mail Stop _____
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Mail Stop
Designations Explanation
Mail Stop 12 Contributions to the Examiner Education Program.
Mail Stop 313(c) Petitions under 37 CFR 1.313(c) to withdraw a
patent application from issue after payment of
the issue fee and any papers associated with the
petition, including papers necessary for a
continuing application or a request for
continued examination (RCE).
Mail Stop AF Amendments and other responses after final
rejection (e.g., a notice of appeal (and any
request for pre-appeal brief conference)),
other than an appeal brief.
Mail Stop Amendment Information disclosure statements, drawings, and
replies to Office actions in patent applications
with or without an amendment to the application or
a terminal disclaimer. (Use Mail Stop AF for
replies after final rejection.)
Mail Stop Appeal For appeal briefs or other briefs under
Brief-Patents part 41 of title 37 of the Code of Federal
Regulations (e.g., former 37 CFR 1.192).
Mail Stop Public comments regarding patent-related
Comments-Patent regulations and procedures.
Mail Stop Conversion Requests under 37 CFR 1.53(c)(2) to convert a
nonprovisional application to a provisional
application and requests under 37 CFR 1.53(c)(3)
to convert a provisional application to a
nonprovisional application.
Mail Stop EBC Mail for the Electronic Business Center including:
Certificate Action Forms, Request for Customer
Number, and Requests for Customer Number Data
Change (USPTO Forms PTO-2042, PTO/SB/124A and 125A,
respectively) and Customer Number Upload
Spreadsheets and Cover Letters.
Mail Stop Expedited Only to be used for the initial filing of
Design design applications accompanied by a
request for expedited examination under
37 CFR 1.155.
Mail Stop Express Requests for abandonment of a patent
Abandonment application pursuant to 37 CFR 1.138,
including any petitions under 37 CFR
1.138(c) to expressly abandon an
application to avoid publication of the
application.
Mail Stop Applications under 35 U.S.C. 156 for patent term
Hatch-Waxman PTE extension based on regulatory review of a product
subject to pre-market review by a regulating
agency. This mail stop is also to be used for
additional correspondence regarding the
application for patent term extension under
35 U.S.C. 156. It is preferred that such initial
requests be hand-carried to:
Office of Patent Legal Administration
Room MDW 7D55
600 Dulany Street (Madison Building)
Alexandria, VA 22314
Mail Stop ILS Correspondence relating to international patent
classification, exchanges and standards.
Mail Stop Issue Fee All communications following the receipt of a
PTOL-85, "Notice of Allowance and Fee(s)
Due," and prior to the issuance of a patent
should be addressed to Mail Stop Issue Fee,
unless advised to the contrary.
Assignments are the exception. Assignments
(with cover sheets) should be faxed to
571-273-0140, electronically submitted
(http://epas.uspto.gov), or submitted in a
separate envelope and sent to Mail Stop
Assignment Recordation Services,
Director - U.S. Patent and Trademark Office
as shown below.
Mail Stop L&R All documents pertaining to applications subject
to secrecy order pursuant to 35 U.S.C. 181, or
national-security classified and required to be
processed accordingly. Such papers, petitions for
foreign filing license pursuant to 37 CFR 5.12(b)
for which expedited handling is requested, and
petitions for retroactive license under 37 CFR
5.25 may also be hand carried to Licensing and
Review:
Technology Center 3600, Office of the Director
Room 4B41
501 Dulany Street (Knox Building)
Alexandria, VA 22314
Mail Stop Missing Requests for a corrected filing receipt and
Parts replies to OPAP notices such as the Notice
of Omitted Items, Notice to File Corrected
Application Papers, Notice of Incomplete
Application, Notice to Comply with Nucleotide
Sequence Requirements, and Notice to File Missing
Parts of Application, and associated papers and
fees.
Mail Stop MPEP Submissions concerning the Manual of Patent
Examining Procedure.
Mail Stop Patent Ext. Applications for patent term extension or
adjustment under 35 U.S.C. 154 and any
communications relating thereto. This mail stop
is limited to petitions for patent term extension
under 35 U.S.C. 154 for applications filed
between June 8, 1995 and May 29, 2000, and patent
term adjustment (PTA) under 35 U.S.C. 154 for
applications filed on or after May 29, 2000.
For applications for patent term extension under
35 U.S.C. 156, use Mail Stop Hatch-Waxman PTE.
For applications for patent term extension or
adjustment under 35 U.S.C. 154 that are mailed
together with the payment of the issue fee, use
Mail Stop Issue Fee.
Mail Stop Patent Submission of comments regarding search templates.
Search Template
Comments
Mail Stop PCT Mail related to international applications filed
under the Patent Cooperation Treaty in the
international phase and in the national phase
under 35 U.S.C. 371 prior to mailing of a
Notification of Acceptance of Application Under
35 U.S.C. 371 and 37 CFR 1.495 (Form
PCT/DO/EO/903).
Mail Stop Petition Petitions to be decided by the Office of Petitions,
including petitions to revive and petitions to
accept late payment of issue fees or maintenance
fees.
Mail Stop PGPUB Correspondence regarding publication of patent
applications not otherwise provided, including:
requests for early publication made after filing,
rescission of a non-publication request, corrected
patent application publication, and refund of
publication fee.
Mail Stop Post In patented files: requests for changes of
Issue correspondence address, powers of attorney,
revocations of powers of attorney, withdrawal as
attorney or agent and submissions under 37
CFR 1.501. Designation of, or changes to, a fee
address should be addressed to Mail Stop M
Correspondence. Requests for Certificate of
Correction need no special mail stop, but
should be mailed to the attention of Certificate
of Correction Branch.
Mail Stop RCE Requests for continued examination under
37 CFR 1.114.
Mail Stop Correspondence pertaining to the reconstruction
Reconstruction of lost patent files.
Mail Stop Ex Parte Original requests for Ex Parte Reexamination
Reexam and all subsequent corresponcence other
than correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)).
Mail Stop Inter Original requests for Inter Partes Reexamination
Partes Reexam and all subsequent correspondence other than
correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)).
Mail Stop Reissue All new and continuing reissue application filings.
Mail Stop Sequence Submission of the computer readable form (CRF) for
applications with sequence listings, when the CRF
is not being filed with the patent application.
Information for addressing trademark-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/patents/mail.jsp.
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR TRADEMARKS
Please address trademark-related correspondence to be delivered by the
United States Postal Service (USPS), except documents sent to the Assignment
Services Division for recordation, requests for copies of trademark
documents, and documents directed to the Madrid Processing Unit, as follows:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Mail to be delivered by the USPS to the Office's Madrid Processing Unit,
must be mailed to:
Madrid Processing Unit
600 Dulany Street
MDE-7B87
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Office's Deputy Commissioner for
Trademark Policy regarding Letters of Protest must be mailed to:
Letter of Protest
ATTN: Deputy Commissioner for Trademark Policy
600 Dulany Street
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Director regarding the Fastener
Quality Act (FQA) must be mailed to:
Director, USPTO
ATTN: FQA
600 Dulany Street, MDE-10A71
Alexandria, VA 22314-5793
Mail to be delivered by the USPS to the Commissioner regarding the
recordal of a Native American Tribal Insignia (NATI) must be mailed to:
Native American Tribal Insignia
ATTN: Commissioner for Trademarks
600 Dulany Street
MDE-10A71
Alexandria, VA 22314-5793
Do NOT send any of the following via USPS certified mail or with a
"signature required" option: submissions to the Madrid Processing Unit,
Letters of Protest, applications for recordal of insignia under the
Fastener Quality Act, notifications of Native American Tribal Insignia.
Trademark-related mail to be delivered by hand or other private courier
or delivery service (e.g., UPS, Federal Express) to the Trademark Operation,
the Trademark Trial and Appeal Board, or the Office's Madrid Processing Unit,
must be delivered to:
Trademark Assistance Center
Madison East, Concourse Level Room C 55
600 Dulany Street
Alexandria, VA 22314
Information for addressing trademark-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/trademarks/mail.jsp.
MAIL TO BE DIRECTED TO THE DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE
Please address mail to be directed to a mail stop identified below to
be delivered by the United States Postal Service (USPS) as follows (unless
otherwise instructed):
Mail Stop _____
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Mail Stop
Designations Explanation
Mail Stop 3 Mail for the Office of Personnel from NFC.
Mail Stop 6 Mail for the Office of Procurement.
Mail Stop 8 All papers for the Office of the Solicitor.
Mail Stop 11 Mail for the Electronic Ordering Service (EOS).
Mail Stop 13 Mail for the Employee and Labor Relations Division.
Mail Stop 16 Mail related to refund requests, other than
requests for refund of a patent application
publication fee. Such requests should be directed
to Mail Stop PGPub.
Mail Stop 17 Invoices directed to the Office of Finance.
Mail Stop 24 Mail for the Inventor's Assistance Program,
including complaints about Invention Promoters.
Mail Stop 171 Vacancy Announcement Applications.
Mail Stop Assignment All assignment documents, security interests,
Recordation Services and other documents to be recorded in the
Assignment records. Note that documents with
cover sheets that are faxed to 571-273-0140 or
submitted electronically (http://epas.uspto.gov)
are processed much more quickly than those
submitted by mail.
Mail Stop Document All requests for certified or uncertified
Services copies of patent or trademark documents.
Mail Stop EEO Mail for the Office of Civil Rights.
Mail Stop External Mail for the Office of External Affairs.
Affairs
Mail Stop Interference Communications relating to interferences and
applications and patents involved in interference.
Mail Stop M Mail to designate or change a fee
Correspondence address, or other correspondence related to
maintenance fees, except payments of
maintenance fees in patents. See below for
the address for maintenance fee payments.
Mail Stop OED Mail for the Office of Enrollment and Discipline.
Maintenance Fee Payments
Unless submitted electronically over the Internet at www.uspto.gov, or by
facsimile, payments of maintenance fees in patents should be mailed through
the United States Postal Service.
Mailing address if paying with a check or money order:
United States Patent and Trademark Office
P.O. Box 979070
St. Louis, MO 63197-9000
Mailing address if paying by credit card or deposit account (or by hand-
delivery):
Director of the U.S. Patent and Trademark Office
Attn.: Maintenance Fees
2051 Jamieson Avenue, Suite 300
Alexandria, Virginia 22314
Information about the Maintenance Fee Branch may also be found on the
USPTO's web site at http://www.uspto.gov/about/offices/cfo/finance/receipts_
division.jsp.
Deposit Account Replenishments
To send payment to replenish deposit accounts, send the payments through
the United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979065
St. Louis, MO 63197-9000
Or
Director of the U.S. Patent and Trademark Office
Attn.: Deposit Accounts
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
Alternatively, deposit account replenishments (Attn: Deposit Accounts)
using hand-delivery and delivery by private courier (e.g., FedEx, UPS, etc.)
may be delivered to:
Director of the U.S. Patent and Trademark Office
Attn.: Deposit Accounts
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
Information abount deposit account replenishments may also be found on
the USPTO's web site at
http://www.uspto.gov/about/offices/cfo/finance/Deposit_Account_
Replenishments.jsp
Top of Notices
| Reference Collections of U.S. Patents Available for Public Use in Patent and Trademark Resource Centers |
Reference Collections of U.S. Patents Available for
Public Use in Patent and Trademark Resource Centers
The following libraries, designated as Patent and Trademark Resource Centers
(PTRCs), provide public access to patent and trademark information received
from the United States Patent and Trademark Office (USPTO). This
information includes all issued patents, all registered trademarks, the
Official Gazette of the U.S. Patent and Trademark Office, search tools such
as the Cassis CD-ROM suite of products and supplemental information in a
variety of formats including online, optical disc, microfilm and paper.
Each PTRC also offers access to USPTO resources on the Internet and to
PubWEST (Web based examiner search tool), a system used by patent examiners
that is not available on the Internet.
Staff assistance and training is provided in the use of this information.
All information is available free of charge. However, there may be charges
associated with the use of photocopying and related services. Hours of
service to the public vary, and anyone contemplating use of these
collections at a particular library is urged to contact that library in
advance about its services and hours to avoid inconvenience.
State Name of Library Telephone Contact
Alabama Auburn University Libraries (334) 844-1737
Birmingham Public Library (205) 226-3620
Alaska Fairbanks: Keith B. Mather Library,
Geophysical Institute,
University of Alaska, Fairbanks (907) 474-2636
Arkansas Little Rock: Arkansas State
Library (501) 682-2053
California Los Angeles Public Library (213) 228-7220
Riverside: University of
California, Riverside, Orbach
Science Library (951) 827-3316
Sacramento: California State
Library (916) 654-0261
San Diego Public Library (619) 236-5813
San Francisco Public Library (415) 557-4500
Sunnyvale Public Library (408) 730-7300
Colorado Denver Public Library (720) 865-1711
Connecticut Fairfield: Ryan-Matura Library
Sacred Heart University (203) 371-7726
Delaware Newark: University of Delaware
Library (302) 831-2965
Dist. of Columbia Washington: Howard University
Libraries (202) 806-7252
Florida Fort Lauderdale: Broward County
Main Library (954) 357-7444
Miami-Dade Public Library (305) 375-2665
Orlando: University of Central
Florida Libraries (407) 823-2562
Georgia Atlanta: Library and Information
Center, Georgia Institute of
Technology (404) 385-7185
Hawaii Honolulu: Hawaii State Library (808) 586-3477
Illinois Chicago Public Library (312) 747-4450
Macomb: Western Illinois
University Libraries (309) 298-2722
Indiana Indianapolis-Marion County Public
Library (317) 269-1741
West Lafayette Siegesmund
Engineering Library,
Purdue University (765) 494-2872
Iowa Davenport: Davenport Public Library (563) 326-7832
Kansas Wichita: Ablah Library, Wichita
State University 1 (800) 572-8368
Kentucky Louisville Free Public Library (502) 574-1611
Louisiana Baton Rouge: Troy H. Middleton
Library, Louisiana State University (225) 388-8875
Maine Orono: Raymond H. Fogler Library,
University of Maine (207) 581-1678
Maryland Baltimore: University of Baltimore
Law Library (410) 837-4554
College Park: Engineering and
Physical Sciences Library,
University of Maryland (301) 405-9157
Massachusetts Amherst: Physical Sciences Library,
University of Massachusetts (413) 545-2765
Boston Public Library (617) 536-5400
Ext. 4256
Michigan Ann Arbor: Art, Architecture &
Engineering Library,
University of Michigan (734) 647-5735
Big Rapids: Ferris Library for
Information, Technology &
Education, Ferris State
University (231) 592-3602
Detroit: Public Library (313) 481-1391
Minnesota Hennepin County Library
Minneapolis Central Library (952) 847-8000
Mississippi Jackson: Mississippi Library
Commission (601) 961-4111
Missouri Kansas City: Linda Hall Library (816) 363-4600
Ext. 724
St. Louis Public Library (314) 352-2900
Montana Butte: Montana Tech Library of
the University of Montana (406) 496-4281
Nebraska Lincoln: Engineering Library,
University of Nebraska-Lincoln (402) 472-3411
Nevada Reno: University of Nevada, Reno,
Mathewson-IGT Knowledge Center (775) 784-6500
Ext. 257
New Jersey Newark Public Library (973) 733-7779
Piscataway: Library of Science and
Medicine, Rutgers University (732) 445-2895
New Mexico Albuquerque: University of
New Mexico General Library (505) 277-4412
New York Albany: New York State Library (518) 474-5355
Buffalo and Erie County Public
Library (716) 858-7101
Rochester Public Library (716) 428-8110
New York: New York Public Library,
Science Industry & Business Library (212) 592-7000
North Carolina Charlotte: J. Murrey Atkins
Library, (704) 687-2241
University of North Carolina at
Charlotte (919) 515-2935
North Dakota Grand Forks: Chester Fritz Library,
University of North Dakota (701) 777-4888
Ohio Akron - Summit County Public (330) 643-9075
Library
Cincinnati and Hamilton County,
Public Library of (513) 369-6932
Cleveland Public Library (216) 623-2870
Dayton: Paul Laurence Dunbar
Library, Wright State University (937) 775-3521
Toledo/Lucas County Public Library (419) 259-5209
Oklahoma Stillwater: Oklahoma State
University Edmon Low Library (405) 744-6546
Pennsylvania Philadelphia, The Free Library of (215) 686-5394
Pittsburgh, Carnegie Library of (412) 622-3138
University Park: PAMS Library,
Pennsylvania State University (814) 865-7617
Puerto Rico Bayamon: Learning Resources Center,
University of Puerto Rico (787) 993-0000
Ext. 3222
Mayaquez General Library,
University of Puerto Rico (787) 832-4040
Ext. 2023
Bayamon, Learning Resources Center,
University of Puerto Rico (787) 786-5225
Rhode Island Providence Public Library (401) 455-8027
South Carolina Clemson University Libraries (864) 656-3024
South Dakota Rapid City: Devereaux Library,
South Dakota School of Mines and
Technology (605) 394-1275
Tennessee Nashville: Stevenson Science and
Engineering Library, Vanderbilt
University (615) 322-2717
Texas Austin: McKinney Engineering
Library, University of Texas at
Austin (512) 495-4511
College Station: West Campus
Library, Texas A & M University (979) 845-2111
Dallas Public Library (214) 670-1468
Houston: The Fondren Library, Rice
University (713) 348-5483
Lubbock: Texas Tech University (806) 742-2282
San Antonio Public Library (210) 207-2500
Utah Salt Lake City: Marriott Library,
University of Utah (801) 581-8394
Vermont Burlington: Bailey/Howe Library,
University of Vermont (802) 656-2542
Washington Seattle: Engineering Library,
University of Washington (206) 543-0740
West Virginia Morgantown: Evansdale Library,
West Virginia University (304) 293-4695
Wisconsin Wendt Commons Library,
University of Wisconsin-Madison (608) 262-0696
Milwaukee Public Library (414) 286-3051
Wyoming Cheyenne: Wyoming State Library (307) 777-7281
Top of Notices
| Patent Technology Centers |
| PATENT TECHNOLOGY CENTERS |
| AVERAGE FILING DATE OF APPLICATIONS RECEIVING A FIRST OFFICE ACTION IN THE LAST 3 MONTHS1
|
Technology
Center |
GAU |
Avg Filing Date |
| 1600 |
BIOTECHNOLOGY, AND ORGANIC CHEMISTRY |
| |
1610 |
01/14/2010 |
| |
1620 |
04/12/2010 |
| |
1630 |
02/14/2010 |
| |
1640 |
04/06/2010 |
| |
1650 |
12/30/2009 |
| |
1660 |
11/11/2010 |
| |
TOTAL |
03/04/2010 |
| |
|
|
| 1700 |
CHEMICAL AND MATERIALS ENGINEERING AND DESIGNS |
| |
1710 |
08/21/2009 |
| |
1720 |
09/02/2009 |
| |
1730 |
03/04/2010 |
| |
1740 |
01/17/2010 |
| |
1750 |
09/30/2009 |
| |
1760 |
04/18/2010 |
| |
1770 |
01/14/2010 |
| |
1780 |
12/06/2009 |
| |
1790 |
08/09/2009 |
| |
TOTAL |
12/18/2009 |
| |
|
|
| 2100 |
COMPUTER ARCHITECTURE AND SOFTWARE |
| |
2110 |
06/09/2009 |
| |
2120 |
07/22/2009 |
| |
2150 |
11/11/2009 |
| |
2160 |
12/15/2009 |
| |
2170 |
07/16/2009 |
| |
2180 |
12/15/2009 |
| |
2190 |
07/16/2008 |
| |
TOTAL |
07/28/2009 |
| |
|
|
| 2400 |
NETWORKING, MULTIPLEXING, CABLE AND SECURITY |
| |
2420 |
02/07/2009 |
| |
2430 |
04/18/2009 |
| |
2440 |
10/21/2009 |
| |
2450 |
08/21/2009 |
| |
2460 |
04/28/2009 |
| |
2470 |
06/03/2009 |
| |
2480 |
12/18/2008 |
| |
2490 |
03/19/2009 |
| |
TOTAL |
05/10/2009 |
| |
|
|
| 2600 |
COMMUNICATIONS |
| |
2610 |
08/30/2009 |
| |
2620 |
06/24/2009 |
| |
TOTAL |
07/28/2009 |
| |
|
|
| 2800
|
SEMICONDUCTORS/MEMORY, CIRCUITS/MEASURING AND TESTING, OPTICS/PHOTOCOPYING |
| |
2810 |
02/07/2010 |
| |
2820 |
01/11/2010 |
| |
2830 |
12/30/2009 |
| |
2840 |
01/05/2010 |
| |
2850 |
09/30/2009 |
| |
2860 |
12/12/2009 |
| |
2870 |
12/21/2009 |
| |
2880 |
12/15/2009 |
| |
2890 |
03/25/2010 |
| |
TOTAL |
12/27/2009 |
| |
|
|
| |
|
|
| 2900
|
|
| |
2910 |
01/20/2011 |
| |
TOTAL |
01/20/2011 |
| |
|
|
| |
|
|
| 3600
|
TRANSPORTATION, CONSTRUCTION, ELECTRONIC COMMERCE, AGRICULTURE, NATIONAL SECURITY AND LICENSE AND REVIEW
|
| |
3610 |
03/07/2010 |
| |
3620 |
09/14/2009 |
| |
3630 |
04/06/2010 |
| |
3640 |
03/16/2010 |
| |
3650 |
10/30/2009 |
| |
3660 |
09/11/2009 |
| |
3670 |
03/10/2010 |
| |
3680 |
08/15/2009 |
| |
3690 |
02/11/2010 |
| |
TOTAL |
12/24/2009 |
| |
|
|
| 3700
|
MECHANICAL ENGINEERING, MANUFACTURING AND PRODUCTS |
| |
3710 |
08/15/2009 |
| |
3720 |
10/21/2009 |
| |
3730 |
08/15/2009 |
| |
3740 |
05/31/2009 |
| |
3750 |
06/24/2009 |
| |
3760 |
09/24/2009 |
| |
3770 |
07/19/2009 |
| |
3780 |
08/12/2009 |
| |
TOTAL |
08/12/2009 |
| |
|
|
| |
1 Report last updated on 11-30-11. |
Top of Notices
Top of Notices January 31, 2012