United States and Swedish Patent Offices to Cooperate on International Search and Examination Services
Trial project part of USPTO efforts to reduce U.S. national patent application backlogs

The Commerce Department’s U.S. Patent and Trademark Office (USPTO) and the Swedish Patent and Registration Office (PRV) announced today that they have begun a pilot project to test the feasibility of the PRV performing search and examination services for the USPTO on international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).

The pilot is part of ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.

Each year, the USPTO receives over 50,000 PCT international applications in addition to over 400,000 national applications. The USPTO is testing whether, by having international applications processed elsewhere, it can dedicate more resources to examining the approximately 750,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.

Under the terms of the pilot project, the PRV will process 50 PCT Chapter I applications covering a range of technologies. The USPTO will review the PRV’s work to ensure that it meets USPTO standards for quality and accuracy.

“We look forward to working with our Swedish colleagues to achieve our mutual goals of expediting review of patent applications while maintaining high quality examination” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “Taking advantage of work completed by another office allows the USPTO to focus more of its resources on decreasing the time it now takes between the filing of an application and a final examiner decision.”

“The PRV is a competent PCT Authority since the start of the PCT system in 1978 and we have a long experience of patent search and examination” said Lars Björklund, acting Director General of the PRV. “We look forward to cooperating with the USPTO and thereby also taking responsibility to support and maintain the functionality of the PCT system.”

The PCT is an international agreement that simplifies the filing of patent applications in its 135 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and the PRV are among the national patent offices authorized to conduct PCT searches and examinations.

September 4, 2007

USPTO and United Kingdom Intellectual Property Office to Pilot Patent Prosecution Highway
Fast-track examination trial program will enhance quality and efficiency

The Commerce Department's U.S. Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UK IPO) today announced that they are now accepting applications for participation in a pilot Patent Prosecution Highway project established between the two offices. The Patent Prosecution Highway will leverage fast-track patent examination in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently. It also will permit each office to benefit from work previously done by the other office, in turn reducing examination workload and improving patent quality.

"Patent offices worldwide must increase the depth and effectiveness of their cooperation. Our collective goal is to reduce duplication of work, speed up processing, and improve quality," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. "This pilot project with the UK IPO builds on our work with the Japan Patent Office, and contributes to a more rational international patent system."

"The Patent Prosecution Highway (PPH) with the U.S. Patent and Trademark Office builds on a similar pilot scheme with the Japan Patent Office which is already showing great promise," said Chief Executive of the UK Intellectual Property Office Ian Fletcher. "The UK Intellectual Property Office has high standards in efficiency and quality as reflected in our ISO 9001:2000 accreditation, and the PPH agreement with the U.S. Patent and Trademark Office will make a contribution to raising these standards further. I am especially pleased that the improved efficiency and quality expected to arise from this PPH agreement is a direct result of the strong relations that exist between the UK Intellectual Property Office and the U.S. Patent and Trademark Office. The PPH helps both offices in their goal of stimulating and rewarding invention and innovation and is a further step towards a global patent prosecution highway network," Fletcher continued.

Under the Patent Prosecution Highway, an applicant receiving a ruling from either the UK IPO or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. Full requirements for participation in the trial program at the USPTO can be found at www.uspto.gov/web/patents/pph/pph_ukipo.html.

The purpose of the trial program is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at the USPTO and the UK IPO. The trial period is set to expire September 4, 2008, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. Both offices will provide notice of any adjustment in the trial period.

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On July 9, 2007, OMB concluded its review of the Continuations and Claims rule changes. The final rules will be made public when they are published in the Federal Register, which is expected to be later this summer. The rules will become effective at least 60 days after publication in the Federal Register, and no earlier than October 1, 2007.

The abstracts of the rules currently available on the Federal Regulatory Information Web site (http://www.reginfo.gov/public/do/eoViewRule?ruleID=273406 and http://www.reginfo.gov/public/do/eoViewRule?ruleID=273407) reflect the abstracts of the Continuations and Claims notices of proposed rule-making that were published in January, 2006.

The USPTO has sent to the Office of Management and Budget (OMB) for review draft final guidance for use by patent examiners in determining if an invention is obvious in view of the U.S. Supreme Court’s decision in KSR v Teleflex.

The USPTO will post the final guidance document on its website after OMB concludes its review. In the interim, the agency will begin training for examiners on implementation of KSR.

View comments at the following url:

http://www.uspto.gov/web/offices/dcom/olia/harmonization/index.html

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http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/jpo_pdx.pdf

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http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pctfeeupdate07.pdf

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http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pphextension.pdf

MEDIA ADVISORY Contact: Brigid Quinn or Ruth Nyblod (571) 272-8400 or brigid.quinn@uspto.gov ruth.nyblod@uspto.gov

June 07, 2007 #07-21

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http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pdxsimplified.pdf

As part of the March 2000 business method action plan, the United States Patent and Trademark Office (USPTO) announces the 2007 Business Methods Partnership Meeting to be hosted by the director and managers of the Business Methods workgroup. Members of the public are invited to attend the Partnership Meeting. The Partnership Meeting is an opportunity for an informal discussion on topics such as current interpretations of subject matter eligibility under 35 USC 101, issues surrounding tax strategy patents, classification and application assignment including the class 705 reclassification project, and other topics specific to business methods. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.

DATES AND LOCATION: The Partnership Meeting will be held on Tuesday, June 19, 2007, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM (SOUTH), Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.

Requests for Attendance at the Partnership Meeting: Requests for attendance will be honored on a first-come, first-served basis according to the time and date of receipt of each request. In order to ensure a broad cross-section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms must designate their official representatives. Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting. Non-accepted requesters will also be notified by the USPTO. No one will be permitted to attend without an accepted request.

Requests for attendance at the Partnership Meeting should be submitted to the attention of Jeff Smith via facsimile at (571) 273-6763, or by electronic mail through the Internet to jeff.smith4@uspto.gov. Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Requests must be received by June 5, 2007.

FOR FURTHER INFORMATION, PLEASE CONTACT: Jeff Smith by telephone at (571) 272-6763 (in addition to the facsimile number and e-mail address given above).

Today More than Half of All New Patent Applications Filed Through EFS-Web

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that EFS-Web, its Web-based filing system for patent applications, has exceeded the goals set forth for its first year.   Most notably, for the first time in USPTO’s history, more new patent applications are being filed electronically each week than through the traditional paper application process.   In addition, more than 700,000 applications and related documents have been filed using EFS-Web to date.

These milestones were celebrated today in a ceremony at the USPTO headquarters in Alexandria, Virginia, where Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas also recognized the patent system users and USPTO staff who made EFS-Web’s first year a success.  Special guest speakers included representatives from EFS-Web users Motorola and the law firm of Fish & Richardson, as well as independent inventor Michael Gurin.  (See below for a full list of law firms, corporations and individuals who helped make EFS-Web’s first year a success.)

“EFS-Web has exceeded our expectations for its first year, and is a great step forward in making IP protection easier and more efficient, while improving patent quality,” said Under Secretary Dudas.  “As corporations, law firms and inventors alike discover the many benefits of filing patent applications electronically, we expect the adoption rate to grow dramatically.”

Jonathan Meyer, SVP for Motorola, said, “We have found using EFS-Web has helped us to greatly streamline the patent process, saving us both time and money.  We appreciate that the USPTO sought our input, and the input of other patent filers, as they were creating EFS-Web.  The result is a system that truly meets our needs.”

Rolf Hille, Director of Practice Systems for Fish & Richardson, said, “As we continue to shift toward a paperless operation, the availability of EFS-Web has greatly helped us in accelerating that transition.  In doing so, we are able to be more efficient and accurate in our day-to-day operations and in our efforts to secure patents for our clients.”

Inventor Michael Gurin, President of CogniTek Management Systems, added, “As an independent inventor in the rapidly changing worlds of alternative energy and nanotechnology, I have found that EFS-Web has become an important part of how I do business.  In fact, I’ve filed more than a dozen patent applications using EFS-Web in the last year alone.”

The shift from a paper-based system to an electronic environment offers several  advantages for patent filers.  Patent system users can file applications and related documents virtually anytime and anywhere.  Filers may use their existing software, and may submit documents by simply attaching PDF files.  EFS-Web offers additional practical flexibility to the intellectual property community by allowing staff to file documents prepared and reviewed by patent attorneys.  Filers may also pay filing fees over the Internet.

EFS-Web submissions are automatically processed through the USPTO.  Patent filers receive rapid access to their applications through the Patent Application Information Retrieval (PAIR) system, so they can view their submissions online and confirm that documents have been securely and accurately received.  EFS-Web also offers visual proof that patent applications and documents have been received in the form of an automatic electronic receipt.

Developed with extensive input from the intellectual property community, EFS-Web launched on March 16, 2006, as a simple, safe, and secure way to file patents online.   More than 80 corporations, law firms and independent inventors participated in the EFS-Web pilot program.  Prior to deployment, nearly 200 pilot participants attended EFS-Web onsite and Web-based trainings.

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/eepd.pdf