By Donald Zuhn —

USPTO Seeks Comments on Eliciting Assignment Information

In a notice published in the Federal Register (76 Fed. Reg. 72372) last month, the U.S. Patent and Trademark Office announced that it is considering several changes in assignment practice that are "designed to encourage a more complete record at the USPTO of patent assignments."  The notice invites comments on the methods the Office can employ to collect more timely and accurate assignment information.

Noting that "[i]t is increasingly clear that applications, patents and the completeness of the patent record play an essential role in the markets of innovation," and further that "[intellectual property right} clearance is often made more difficult and time-consuming, legally risky, and expensive because current assignment information on patents and applications is not available," the Office lists a number of changes that are currently under consideration.  Among these changes are several amendments to the regulations:

    (1) Amending 37 CFR to require that any assignee or assignees be disclosed at the time of application filing;
    (2) Amending 37 CFR 3.81 to require that the application issue in the name of the assignee or assignees as of the date of payment of the issue fee [§ 3.81 currently allows, but does not require, an application to issue in the name of the assignee];
    (3) Amending 37 CFR 1.215(b) to require the identification of assignment changes after filing date for inclusion on the patent application publication (PGPub) [§ 1.215(b) currently allows, but does not require, that assignee information be provided];
    (4) Amending 37 CFR 1.27(g) to require timely identification of any new ownership rights that cause the application or issued patent to gain or lose entitlement to small entity status; and
    (5) Amending 37 CFR to provide for discounted maintenance fees in return for verification or update of assignee information either when a maintenance fee is paid or within a limited time period from the date of maintenance fee payment.

In addition to the proposed changes to assignment practice, the notice concludes with a list of nineteen questions for which the Office is seeking comments (see p. 72373).

According to the notice, written comments on eliciting more complete assignment information can be submitted by e-mail to saurabh.vishnubhakat@uspto.gov or by regular mail to Saurabh Vishnubhakat, Attorney Advisor, Office of Chief Economist, United States Patent and Trademark Office, Mail Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313–1450.  All comments must be submitted by January 23, 2012.

USPTO Seeks Comments on Satellite Offices

Section 23 of the Leahy-Smith America Invents Act calls for the establishment of three of more satellite offices in the United States by September 16, 2014, subject to available resources.  The U.S. Patent and Trademark Office has begun the process of collecting information on potential locations for future satellite offices.  As part of that process, the Office published a notice in the Federal Register (76 Fed. Reg. 73601) requesting comments and information on potential cities and regions for future locations of the satellite offices.  One satellite office is already planned for Detroit, Michigan (§ 24 of the AIA designates this office as the "Elijah J. McCoy United States Patent and Trademark Office" — Elijah McCoy, the son of fugitive slaves, named inventor on 57 U.S. patents, and source of the saying "the real McCoy").  The USPTO has indicated that, subject to available resources, it will establish at least two more satellite offices.  According to the notice, written comments regarding the locations of these two offices can be submitted by e-mail to satelliteoffices@uspto.gov; by regular mail to Azam Khan, Deputy Chief of Staff, United States Patent and Trademark Office, Mail Stop Office of Under Secretary and Director, P.O. Box 1450, Alexandria, VA, 22313–1450; or through the Federal eRulemaking Portal website at http://www.regulations.gov.  All comments must be submitted by January 30, 2012.  The notice states that:

    Comments should provide information that supports the USPTO’s purposes of establishing satellite offices, including that the location will:
    (1) Increase outreach activities to better connect patent filers and innovators with the USPTO, including the number of patent filings and grants by the city/region as well as other information that provides insight into the region’s innovation activity;
    (2) Enhance patent examiner retention, including quality of life indicators such as average household income, cost of living factors, and other factors related to employee retention;
    (3) Improve recruitment of patent examiners, including data on employment rates and other economic factors in the area, science and technology professionals, as well as legal professionals in the workforce and other related information;
    (4) Decrease the number of patent applications awaiting examination; and
    (5) Improve the quality of patent examination.

In a press release regarding the Office's request for comments, the USPTO noted that the satellite office in Detroit would open in the second half of 2012.

USPTO Adds eTerminal Disclaimer to EFS-Web

In an eAlert distributed last month, the U.S. Patent and Trademark Office announced the release of a beta version of an eTerminal Disclaimer on the EFS-Web.  The Office noted that the eTerminal Disclaimer can be filled out online and that no EFS-Web fillable forms are required.  In addition, while approval of paper-filed Terminal Disclaimers is not guaranteed (and frequently seem to be hit or miss), eTerminal Disclaimers are auto-processed and approved immediately upon submission (provided, of course, that the request meets all of the requirements).  Although a terminal disclaimer fee must be paid immediately, each eTerminal Disclaimer can include up to 50 "reference applications" and 50 "prior patents."  During the beta period, eTerminal Disclaimers will only be accepted for a patent application that has been docketed to an examiner (which can be assessed via the Transaction History Tab on public or private PAIR).  The eTerminal Disclaimer webpage on the USPTO website can be found here.