Issue 211 | June 7, 2004
USPTO Practice Update

New Rules on Patent Term Elongation
from http://www.uspto.gov/web/offices/com/sol/notices/69fr21704.pdf

Starting May 24, 2004, under certain circumstances, a panel remand by the Board of Patent Appeals and Interferences shall be considered "a decision in the review reversing an adverse determination of patentability" for purposes of Uruguay Round Agreements Act term "extensions" under 37 CFR 1.701(a)(3) and Patent Term Guarantee Act "adjustments" under 37 CFR 1.702(e). These changes apply retroactively to patents that are issued from applications filed on or after June 8, 1995. However, any request for retroactive reconsideration of the patent term extension or adjustment resulting from an application in which the notice of allowance was mailed before May 24, 2004 must be filed no later than July 21, 2004.

The remand in question must be the last action by a Board panel prior to the mailing of a notice of allowance. Therefore, if an Examiner allows a remanded application with or without further prosecution, then the extension or adjustment will include the time between the filing date of the Notice of Appeal and the mailing date of the remand. However, the provision does not apply when a Request for Continued Examination is filed before the Examiner issues an Office Action after the remand.

The USPTO is also discontinuing the practice of including patent term adjustment information on the Issue Notification. Furthermore, all requests for reconsideration of extension or adjustment calculation errors based upon activity prior to the mailing of a Notice of Allowance must be filed before or with the issue fee. Errors based upon post-allowance activities may must be addressed within two months of the issue date.

In addition, 37 CFR 1.704(d) has been clarified to require that certain references must be submitted with a statement that the submitted reference was "first" cited in a communication from a foreign patent office within 30 days in order to avoid adverse patent term adjustment consequences.

Deployment of E-Patent Reference System
from http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/nocopies.pdf

The USPTO will deploy the full E-Patent Reference program during the Summer of 2004 so that paper copies of cited U.S. patents and U.S. patent application publications no longer be included with Office Action that are mailed from

Technology Centers 1600, 1700, 2800 and 2900 starting June 2004,
Technology Centers 3600 and 3700 starting July 2004, and
Technology Centers 2100 and 2600 starting August 2004.

Paper copies of foreign patents and non-patent literature will continue to be included with office actions.

Lengthy Table Publication Changes
from http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/megatables.pdf

In view of processing problems caused by applications with lengthy tables, the Office is encouraging applicants to submit lengthy tables on compact disc in ASCII text format as provided in 37 CFR 1.52(e), or as an appendix to the specification as provided in 37 CFR 1.77(b)(4). The Office is also announcing that lengthy tables in an appropriate electronic form will not be published in patent application publications, patents, or Statutory Invention Registrations. Instead, these tables will be represented in published patent documents by hyperlinks to individual addresses within the "Publication Site for Issued and Published Sequences" at http://seqdata.uspto.gov.

A pilot program is also be launched where, in response to an Office request, applicants may submit such lengthy tables in electronic formats other than ASCII text so the lengthy tables can be posted on the sequence homepage instead of being published in the patent document itself.

New Mail Stop "L&R" for Licensing and Review
from http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/newmslnr.pdf

Under 37 CFR 1.6(d)(6), correspondence in patent applications that are subject to a secrecy order under 37 CFR §§ 5.1 through 5.5 and directly related to the secrecy order content of the application may not be transmitted via facsimile. As of April 23, 2004, applications subject to a secrecy order pursuant to 35 U.S.C.§ 181, or that are national security classified, and correspondence in such applications, are required to use the following address when the documents are submitted by mail:

Mail Stop L&R
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Correspondence may also be hand-carried to Licensing and Review:

Technology Center 3600, Office of the Director
2451 Crystal Drive, Room 3D07
Arlington, VA 22202

Petitions for a foreign filing license pursuant to 37 CFR 5.12(b), including petitions for a foreign filing license where there is no corresponding U.S. application (under 37 CFR 5.13), may be delivered to either address or faxed to (703) 305-7658, instead of the Central FAX number, (703) 872-9306.

Reminder on Filing Confidential Information
from http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice

Once private information is included in a patent application file by scanning a document and adding an image of the document to the patent application's Image File Wrapper, the document will only be removed for national security concerns. When filing trade secret information, proprietary information, or protective order materials is necessary to comply with the duty of disclosure in 37 CFR 1.56, applicants seeking to ensure that the information is not made public should follow the procedure set forth in MPEP 724.02. For example, a Confidential Information Disclosure Statement should be prepared, listing the confidential document on a separate paper and placed in an envelope or container clearly labeled


Street Address Change for Old USPTO Buildings
from http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice

Effective June 5, 2004, the street addresses for several of the old USPTO buildings in the old Crystal City complex will be changed as a result of "South Clark Place" being renamed as "20th Street." The Notice does NOT affect postal mailing addresses for USPTO correspondence. For the latest correspondence addresses and fax numbers go to http://www.uspto.gov/web/offices/pac/dapp

For more on the latest USPTO procedures contact the author of this "APLF Update," Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA and via the new "I/P Updates Blog" at http://billheinze.blogspot.com (RSS/Atom feeds).

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

APLF · PO Box 7418 · Washington, DC · 20044-7418