This article has been reprinted with permission from IPLAC Newsletter, Volume 29, No. 1, Winter 2005. The Intellectual Property Law Association of Chicago can be found at http://www.iplac.org/.
Under revised 37 CFR 1.98(a)(2), copies of cited US patents and published US applications do not need to be submitted with an Information Disclosure Statement (IDS). Effective September 21, 2004, the requirements of 37 CFR 1.98 (a)(2)(iii) are waived such that copies of cited unpublished applications do not need to be submitted with an IDS when the cited applications have been scanned in and are available on the Examiner’s computers from the USPTO’s Image File Wrapper (IFW) system. For more information see: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/rule98waiverd.pdf.
Internet Access to USPTO Patent Application Files
This past summer, the USPTO launched Public PAIR (Patent Application Information Retrieval) to provide public access to the electronic images of file wrappers of published applications and patents that have been electronically scanned. Presently, more than 500,000 application files are available to the public electronically, and this number is expected to increase by 300,000 annually. Unlike Private PAIR, which has been available for the past year, Public PAIR does not require any special software or digital certificates. Public PAIR also has capabilities to allow the download of selected documents in a .pdf format from the file history. The Public PAIR portal is at http://portal.uspto.gov/external/portal/pair. From this portal, paper copies of assignments and non-electronic file histories can be ordered, as well as certified copies of patent applications. This past month, Public PAIR has been enhanced by making available copies of provisional applications that published applications and patents claim the benefit of. For more info on Public PAIR and provisional applications, respectively, see: http://www.uspto.gov/web/offices/com/speeches/04-13.htm; and http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/termprovcopies.pdf.
TC1600 Restriction Practice Training Materials Now Available
Last year, the PTO announced an action plan to improve quality and consistency of restriction requirements in applications for biotechnology, pharmaceutical and organic chemistry technologies. At the conclusion of phase one of that plan, the examiners have undergone special training on restriction requirements. Copies of the training materials (38 pages total) are now available on the PTO website.
New Cross Reference Digest for Nanotechnology
The USPTO has established Class 977 for nanotechnology related disclosures. Such disclosures relate to atomic, molecular and macromolecular developments having a length in one dimension between 1 and 100 nanometers, and have novel properties and functions because of the small size. The USPTO is first providing a cross-reference digest designated Class 977/Dig.1, which will later be replaced with a comprehensive classification schedule. For more info see: http://www.uspto.gov/web/patents/biochempharm/crossref.htm.
New Electronic Filing Options in Trademark Matters
The USPTO has provided two new electronic filing forms for use in filing documents online with the Trademark Trial and Appeals Board (TTAB). One form provides for notification of an address change. The submission of this e-form automatically updates the TTAB records. The other e-form is used for filing consented motions to suspend proceedings or to extend discovery and testimony dates. Upon the submission of this e-form, in most situations, the TTAB will automatically send out orders to both parties. A set of forms is now available for the submission of Madrid Protocol related documents to obtain foreign registration of a US filed application in up to 65 foreign countries. The USPTO announced that more than 73% of US Trademark filings are done electronically, and the new Madrid forms advances the agencies’ commitment to a fully electronic trademark operation. For more info on TTAB forms and Madrid forms, respectively, see: http://www.uspto.gov/web/offices/com/speeches/04-29.htm; and http://www.uspto.gov/web/offices/com/speeches/04-30.htm.