By Donald Zuhn —

USPTO to Hold Roundtable on
Recordation of Real-Part-in-Interest Information

Last month, the U.S. Patent
and Trademark Office published a notice in the Federal Register (77 Fed. Reg.
70385)
indicating that the Office will be holding a roundtable from 8:30 am to 12:00
pm (EDT) on January 11, 2013 to obtain public input regarding
changes to the Office's rules of practice for collecting and providing patent and application
ownership information and making such information publicly available.  The roundtable will be held in the Madison
Auditorium on the USPTO campus (600 Dulany Street, Alexandria, Virginia 22314).

Those wishing to
participate in the roundtable must submit requests by Friday, December 21, 2012.  Requests can be submitted by e-mail to
saurabh.vishnubhakat@uspto.gov, and should include the name of the person wishing
to participate, the person's contact information (telephone number and e-mail
address), and the organizations that the person represents.  The notice indicates that the roundtable will
be webcast, and that information regarding accessing the webcast will be made available
prior to the roundtable.

The Office is also seeking
written comments on the issue.  Written
comments, which must be submitted by January 25, 2013, can be sent by e-mail to
saurabh.vishnubhakat@uspto.gov or SMEpatenting@uspto.gov, or by regular mail
to:  Saurabh Vishnubhakat, Expert
Advisor, Office of Chief Economist, United States Patent and Trademark Office,
Mail Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313–1450.

The Office is seeking
comment regarding whether the definition of real-party-in-interest (RPI) information
should be broad (RPIs would correspond to those entities having the legal right
to enforce the patent and would likely require the disclosure of exclusive
licensees) or limited (RPIs restricted to legal title holders and
"ultimate parent entities"), and the timing of and mechanism for
collecting such information.

USPTO Requests Comments on
Grace Period Study

Last week, the U.S. Patent
and Trademark Office published a notice in the Federal Register (77 Fed. Reg.
73452) inviting
the public and other Federal agencies to submit comments regarding the Office's
grace period study.  The notice states
that:

The United States' grace period, which
permits exceptions to absolute novelty, figures centrally in the international
discourse on patent law harmonization.  The
grace period allows individuals to improve upon their ideas by sharing them
with the research and business communities without jeopardizing their intellectual
property interests.  Many European
countries, however, lack adequate grace periods.  The consequences of this are not fully
understood.  Few studies in the past ten
years have dealt with the grace period, and none of them have quantified the
effects of premature disclosure on researchers’ failure to apply for or receive
patents.

To examine this issue, the
Office will be conducting a study "to estimate the commercial
opportunities lost as a result of the lack of grace periods."  As part of the study, the Office will survey
scientific researchers affiliated with certain European universities who have
published journal articles disclosing potentially patentable materials during a
five-year period.

Written comments regarding
the collection of information with respect to the grace period study, which
must be submitted by February 8, 2013, can be sent by e-mail to InformationCollection@uspto.gov
(those submitting comments by e-mail should include "0651–00xx Grace
Period Study comment" in the subject line of the message); by regular mail
to:  Susan K. Fawcett, Records Officer,
Office of the Chief Information Officer, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313–1450; or using the Federal
Rulemaking Portal. 
Additional information, including the specific topics for which the
Office has invited comment, can be found in the Federal Register notice.

USPTO Seeks Comments on
Patent Small Claims Proceedings

On Tuesday, the U.S. Patent
and Trademark Office published a notice in the Federal Register (77 Fed. Reg.
74830) seeking comments
as to whether a small claims proceeding for patent enforcement should be
developed.  The Office is particularly
interested in obtaining comments regarding whether there is a need and desire
for this type of proceeding, the circumstances for which such proceedings would
be needed, and the features such proceedings should have.  The Office is also interested in collecting comments
regarding the characteristics of such proceedings, including subject matter
jurisdiction, venue, case management, appellate review, available remedies, and
conformity with the U.S. constitutional framework.  The Office's notice provides a list of
additional topics and questions for which the Office is seeking comments.

Written comments regarding
patent small claims proceedings, which must be submitted by March 18, 2013, can
be sent by e-mail to ip.policy@uspto.gov, or by regular mail to:  Mail Stop OPEA, P.O. Box 1450, Alexandria, VA
22313–1450, ATTN: Elizabeth Shaw.