June 30, 2008

When the USPTO revises its fees from time to time, a common practice of mine is to “compare” the then-current fee schedule against the announced future fee schedule. The current USPTO fee schedule, with revisions effective May 15, 2008, will soon be replaced with a version with revisions effective tomorrow, July 1, 2008. For those of you planning on filing PCT applications within the next few days, you may wish to take particular note of the following changes effective July 1 and consider filing before the following fees changes take effect:

1. International filing fee (first 30 pages - filed in paper with PCT EASY zip file or electronically without PCT EASY zip file) – increasing $64 from $1,173 to $1,237

2. International filing fee (first 30 pages) - filed electronically with PCT Easy zip file – increasing $54 from $1,083 to $1,137

3. International filing fee (first 30 pages) – increasing $75 from $1,263 to $1,338

4. Supplemental fee (for each page over 30) – increasing $1 per page from $14 to $15

5. Handling fee – increasing $30 from $171 to $201

6. Handling fee – percentage reduction, if applicants meet specified criteria – DECREASING $18.65 from $38.75 (75% reduction from original fee) to $20.10 (90% reduction from original fee)

7. Sequence listing and/or sequence-related table on electronic medium only (PCT AI Section 801) – increasing $400 from $5,600 to $6,000

The fees for international searches using the European Patent Office or the Korean Intellectual Property Office will not changed, remaining at $2,496 and $244, respectively. Links to each respective USPTO fee schedule are provided below.

Fee Schedule (Effective May 15, 2008): LINK
Fee Schedule (Effective July 1, 2008): LINK

June 26, 2008

As noted within the June 18, 2008 Federal Register, the USPTO is proposing a PCT fee increase “to recover the estimated average cost to the Office of processing PCT international applications and preparing international search reports and written opinions for PCT international applications.” The proposal (included within the Federal Register link below) includes a revision to 37 CFR 1.445(a)(1) to include a $115 increase in the PCT transmittal fee (from $300 to $415), a revision to 37 CFR 1.445(a)(2) to increase the U.S. search fee by $425 (from $1,800 to $2,225), and a corresponding supplemental search fee under 37 CFR 1.445(a)(3) of the same amount ($425). The proposal notes that the previous increase in the PCT search fee took effect 7-8 months ago, increasing 80% from $1,000 to $1,800 in November, 2007. In the interest of full disclosure, the Federal Register also notes that “an applicant filing an international application under the PCT in the United States Receiving Office (the United States Patent and Trademark Office) is not required to use the United States Patent and Trademark Office as the International Searching Authority,” as “[t]he European Patent Office (except for applications containing business method claims) or the Korean Intellectual Property Office may be selected as the International Searching Authority for international applications filed in the United States Receiving Office. The current fee for a European search is $2,496, while the fee for a Korean search is only $244, less than 10% of the cost of Europe and just over 10% the cost of a U.S. search if the proposed increase takes effect.

So to start some discussion on this issue, if you have used an ISA other than the U.S. for PCT applications, please share your experiences by commenting on this particular blog post. I do monitor comments to cut out spam comments (which are very common), but I will approve your on-topic comment once it is received.

Federal Register Excerpt (PDF): LINK
USPTO Current Fee Listing: LINK

June 24, 2008

On July 1st and 2nd, the World Intellectual Property Organization (WIPO) will be hosting an Inter-Regional Forum in Geneva, Switzerland, to assist least-developed countries (LDCs) with building and growing their respective intellectual property (IP) offices. As noted by the WIPO press release (link below), “[t]he Forum will focus on practical measures that may be taken to improve and expand the range of value-added services available to all stakeholders, including the public, to forge relations with the IP user community and to ensure that IP administrations are better able to support national development objectives.” According to the press release, “[t]he Forum will examine the complexities of the development and service-oriented role of IP administrations and will provide an opportunity for officials who are at the front-line of IP system administration to exchange ideas and experiences,” and “[p]articipants will further have an opportunity to explore new approaches to the challenges currently facing IP administrations, in terms of workload, organizational efficiency and the delivery of value-added services.” Additional information regarding this seminar is provided within the various conference links below.

WIPO Announcement: LINK
Conference Webpage: LINK
Provisional Conference Agenda (PDF): LINK

June 23, 2008

Last Friday, the USPTO along with the Computing Technology Industry Association (CompTIA) held a joint seminar educating Maryland businesses with respect to intellectual property (IP) protection and the “growing threats of counterfeiting and piracy.” According to the USPTO announcement (link below), this seminar also “provid[ed] information on how businesses can protect and enforce their own intellectual property rights in the United States and overseas,” noting that inventors from Maryland obtained over 1,400 U.S. patents last year. According to Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, “Because more and more American intellectual property owners compete in a global marketplace, we must make sure that they have sufficient knowledge and legal tools to protect themselves from international pirates and counterfeiters who are robbing billions of dollars from the U.S. economy.” This seminar is one in a series presented by the USPTO as part of the Strategy Targeting Organized Piracy (STOP!) as noted within the links below.

USPTO Announcement: LINK
USPTO Stop! Webpage: LINK

June 19, 2008

In a recent announcement, the USPTO notified trademark practitioners that its practice regarding grace periods for certain affidavit and renewal filings will be changed during a test program. Traditionally, if a trademark owner does not file a §8 affidavit or §9 renewal prior to the end of the six-month grace period (re: 15 U.S.C. §§1058 and 1059), the USPTO traditionally provides a three-month grace period before it updates its records to notify the public that a trademark has either been cancelled or expired. According to the USPTO announcement (link below), the new pilot program will “shorten the additional waiting period before Office records are updated to thirty days after the expiration of the statutory grace period … resulting in prompter purging of registrations from the Register that are not in compliance with §§ 8 and 9 of the Act.” In addition, this change “also decrease the suspension period for those applications awaiting the disposition of registrations cited under Section 2(d) of the Act, where Office records do not show that a required maintenance filing was timely received.” Additional information on this pilot program, as well s comments regarding the purpose behind the traditional three-month waiting period, are provided in the link below.

USPTO Announcement: LINK

June 13, 2008

During that time, I will be visiting my grandparents to celebrate their 52nd wedding anniversary. Thanks for reading, and if you haven't already, please sign up for the DDIP e-mail list (see right).

June 12, 2008

Next Friday (June 20th), the USPTO will be hosting its next one-day seminar in Baltimore, Maryland, highlighting “practical information on how businesses can protect their own intellectual property rights both in the United States and overseas as well as discuss the growing threats of counterfeiting and piracy.” This seminar (main webpage link below) will be held at the Mt. Washington Conference Center, and will include sessions on copyrights (by Ben Hardman, Attorney Advisor, Office of Intellectual Property Policy and Enforcement (OIPPE), USPTO), patents (by Marina Lamm, Attorney Advisor, OIPPE), trademarks, and intellectual property enforcement. This is a free seminar, but prior registration is recommended and available through the last link below.

Seminar Webpage: LINK
Seminar Agenda: LINK
Seminar Registration: LINK

June 10, 2008

Yesterday, the USPTO announced that it will be publishing its “final rule” in an attempt to “improve the process of ex parte appeals before the USPTO’s Board of Patent Appeals and Interferences (BPAI)." Some of the new rules include new processes for Examiners to follow, including a requirement that the Examiner provide his or her reasons for rejection earlier in the process, noting that new grounds for rejection will no longer be permitted within the Examiner’s answers to an appellant’s brief. In addition, Examiners will no longer respond to reply briefs, and supplemental Examiner’s answers will not be permitted in response to an appellant’s reply brief. According to Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, “These new rules will benefit both the patent community and the USPTO by fostering an ex parte appeals process with improved efficiency and clarity. By exchanging information and crystallizing the issues of the dispute earlier in the process, the result will be more streamlined appeal process and more efficient decision-making.” Additional information regarding these rules changes is provided in the USPTO announcement link below, and a link to the new rules themselves is also provided below.

USPTO Announcement: LINK
New Rules: LINK

June 09, 2008

The European Patent Office (EPO) recently updated its website to include information regarding its latest Board of Appeals (BOA) decisions. This latest update, posted on June 5th, includes information on the next 127 BOA decisions, including links to the underlying patents and the decisions themselves. The prior update, posted on June 2nd, included only 58 decisions. Links to these latest decisions, including with internal links to decisions dating back to February, 2006, are included in the link below.


June 05, 2008

In a first of its kind ruling in France, eBay, Inc. has been ordered to pay 20,000 Euros (approximately $30,000) in damages to Hermes, a French company that manufactures and distributes high-end luxury consumer goods. At issue were a number of auctions held on eBay, including the sale of two counterfeit Hermes bags for 3,000 Euros, and according to the French court, “By selling Hermes bags and branded accessories on the eBay.fr site, and by failing to act within their powers to prevent reprehensible use of the site,” eBay, and the female seller of the fake bags, “committed acts of counterfeiting and imitation of French brand names ... to the detriment of Hermes international.” According to the Yahoo! news article (link below), eBay and the seller are jointly liable for the damages, and eBay is also required to post the court’s ruling on eBay.fr for three months.

Yahoo! Article: LINK
eBay.fr Anti-counterfeiting Webpage: LINK
Hermes Website: LINK

June 03, 2008

According to a recent USPTO press release (link below), Stephen Smith has been appointed as the new Chief Administrative Officer (CAO) of the USPTO. Mr. Smith’s responsibilities shall include leading the Offices of Civil Rights, Human Resources, and Corporate Services groups within the USPTO. As noted within the press release, Smith graduated from the U.S. Military Academy with a degree in Nuclear Engineering, and has a Masters degree in Management from Salve Regina University. He has recently handled similar duties to the ones mentioned above during his tenure with the International Broadcasting Bureau, and prior to that, he served in various military roles during his twenty-seven years with the U.S. Army. Additional information on Mr. Smith, as well as comments regarding his record of governmental service, is provided in the link below.

USPTO Press Release: LINK

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees


Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

EPO Updates

Trademark References

Click HERE to search issued and pending U.S. Trademarks

Click HERE to search TTAB proceedings (via TTABVUE)

Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


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