Resume of William F. Heinze

Free Pop-Up Blocker and (Beta) Spyware Remover on Yahoo! Toolbar. . .

available at http://companion.yahoo.com, similar to the Google Toolbar previosly available at http://toolbar.google.com/

Mary Harney: Community Patent 5-10 Years Away

"Without the political will, which is lacking at the moment, we're not going to see a patent -- certainly not in the next five years, and it could be as far away as a decade," said Mary Harney, president of the EU competitiveness council while Ireland holds the EU presidency (and Ireland's minister for enterprise, trade and employment)in a Reuters interview.

TGIF: USPTO Website Shortcuts (and a New "I/P Updates" Blog)

USPTO Assignments on the Web

USPTO Board of Patent Appeals and Interferences

USPTO Commissioner for Patents

USPTO Contacts and Addresses

USPTO Current Year OG Notices

USPTO Current Year Press Releases

USPTO Deputy Commissioner for Patent Policy

USPTO Electronic Business Center

USPTO Fees, How to Pay

USPTO Fees

USPTO Forms

USPTO Glossary

USPTO Home Page

USPTO MPEP - Table of Contents

USPTO Mail Stops

USPTO Maintenance Fee Status

USPTO News and Notices

USPTO Official Gazette Notices

USPTO Patent Application Info Retrieval (PAIR)

USPTO Patent Business Methods

USPTO Patent Electronic Official Gazette

USPTO Patent Maintenance Fee Status

USPTO Patent Personnel Roster

USPTO Patents Guidance, Tools and Manuals

USPTO Petitions Practice

USPTO Phone Directory (by Organization)

USPTO Provisional Application for Patent

USPTO Recent Patent-Related Notices

USPTO TMEP Index

USPTO TMEP

USPTO TTAB Filings and Documents

USPTO Trademark Electronic Application System

USPTO Trademark Trial and Appeal Board

 

Thank Goodness It's Friday (and I'm on vacation), 

 

--Bill 

 

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

New! I/P Updates Blog:  http://billheinze.blogspot.com (RSS/Atom feeds)

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.

ITC-TLA Luncheon June 23, 2004

On Wednesday, June 23, 2004, the ITC Trial Lawyers Association will sponsor a brown bag lunch featuring a dialogue with International Trade Commission Secretary Marilyn R. Abbott. Registration and the lunch will begin at noon in the basement Conference Center of Steptoe & Johnson, 1330 Connecticut Avenue, NW, Washington, D.C.

The discussion will cover "Current and Planned Capabilities for
Electronic Filing (including Confidential Documents) and Research, and Other User Issues." This is an excellent opportunity to become more active in the ITCTLA and to exchange information on the latest developments in Section 337 practice. Conference call participation is available upon request.

Reservations and a $10 payment at the door are required for the catered lunch (of a sandwich, salad, and dessert). There is no fee for those who bring a brown bag lunch, but reservations are strongly recommended beverages will be provided free of charge).

Seating is limited, so reservations will be honored on a first-come
basis. Please make your reservation by return email to
Eric.Fues@Finnegan.com

ASEAN Regional Patent Proposed

ABC News is reporting that the Philippines is set to host the first regional conference on the protection and enforcement of intellectual property rights where the Association of Southeast Asian Nations members will discuss the possibility of setting up regional systems for IPR protection that would pave the way for the establishment of an Asean Patent Office, as well as Asean Trademark Office. 

Off-Docket Reminders

Need an "off-docket" reminder?   The purpose of this free "Mail to the Future" website at http://www.mailtothefuture.com/ is to allow you to send mail to yourself or others at a specified date and time. . . in the future! According to the providers at UserLand Software "It's simple, it's fun, and it's futuristic! (Of course..)"

 

 

More on Ampex and Sanyo

A parallel district court infringement action styled Ampex Corp. v. Sanyo Electric Co. Ltd. was also filed on May, 25, 2004 as Delaware Docket No. 04cv335 involving U.S. Patent No. 4,821,121 for "Electronic Still Store with High Speed Sorting."  According to the Ampex press release, "The Company has been in active negotiations with Sanyo and other major manufacturers of digital still cameras in an attempt to negotiate commercially acceptable running royalties on future shipments as well as payment of royalties on shipments for prior periods" and "Sanyo is the world's largest manufacturer of digital still cameras, with sales accounting for approximately 30% of the global market."

 

Ampex Requests Import Investigation Against Sanyo

On May 25, 2004, Ampex Corporation filed a "Section 337" complaint at the U.S. International Trade Commission requesting an unfair import investigation involving "Digital Image Storage and Retrieval Devices." The proposed respondent named in the complaint is Sanyo Electric Co., Ltd., Osaka, Japan. The complaint has been designated as confidential and assigned Docket No. 337-2375 for indexing in the Commission's database at https://edis.usitc.gov/hvwebex//.

 

The Commission now has 30-35 days from the dates indicated above in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written initial determination, usually within about 10 months. Due to the expedited nature of these proceedings, it is important to notify any interested parties as soon as possible.

 

In other ITC news, Administrative Law Judge Bullock's determination in "Zero-Mercury-Added Alkaline Batteries," Investigation No. 337-TA-493, concerning infringement of U.S. Patent No. 5,464,709, by imports from China, Hong Kong, Indonesia, Japan, and Singapore, is expected to be published on June 2, 2004.  Various respondents, including Energizer Holdings and Eveready Battery, have already settled-out of that investigation with Consent Orders.  Sanyo has so far been able to remain out of the fray in that investigation, instead focusing on a technology collaboration with Rayovac for rapid-charging Ni-MH batteries based upon Rayovac's "in-cell charge" technology.

 

A new, searchable database of "Scheduled U.S. Tariff Reductions" is also available from the ITC at http://dataweb.usitc.gov/scripts/tariff_reduction.asp.  And, last but not least, exporters around the world can now benefit from a new practical guide on intellectual property for exporters published this month by the World Intellectual Property Organization and the International Trade Centre. "Secrets of Intellectual Property: a Guide for Small and Medium-sized Exporters" provides practical guidance on how to deal with some of the most common intellectual property issues encountered by exporters. This user-friendly guide is written in the form of questions and answers, and contains a large number of references for further reading at http://www.wipo.int/sme/en/documents/guides/guide_secrets_ip.html.

 

General information about Section 337 investigations is available from the APLF at http://www.aplf.org/events/roundtables/2002-06-20.shtml. For more information on these particular investigations, please contact Minh Nguyen (Minh.Nguyen@tkhr.com) and Bill Heinze (Bill.Heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley in Atlanta.

European Software Patents Directive Passes while Community Patent Regulation Fails

The European Council approved the Software Patents Directive which will now be sent back to the European Parliament for another vote in the Fall where reversing the Council's vote may be difficult.  The Community Patent Regulation, on the other hand, died when Spain demanded all 20 translations of the claims be considered legally binding and ministers would not compromise by leaving the issue for courts to decide.  For more information, see http://zdnet.com.com/2100-1104-5215020.html, http://news.bbc.co.uk/2/hi/business/3726375.stm, and http://www.siliconvalley.com/mld/siliconvalley/news/editorial/8695760.htm; and monitor European Patent Attorney Axel H Horns' Blog on Intellectual Property Law.

European Community Patent and Software Patentability Update

 On May 14, 2004  the European Union issued a press release entitled "Preparation of Competitiveness Council, Brussels, 17-18 May 2004" with the following updates on the Community Patent Regulation and Software Patentability Directive:

 

    Proposal for a Directive on the Patentability of Computer Implemented Inventions

 

The [competitiveness configuration of the] Council of the European Union is expected to adopt without discussion, on the basis of an Irish Presidency [unpublished] compromise text supported by the Commission, a political agreement on the proposed Directive on the Patentability of Computer Implemented Inventions. The compromise text includes 21 amendments proposed by the European Parliament at its first reading in September 2003 but restores the overall balance between the interests of the rights holders and other parties (competitors and consumers) struck by the original Commission proposal presented in February 2002.  

 

The proposed Directive aims to boost innovation by ensuring that those who invest in developing genuinely new products that depend on computer implemented technology could, like those who develop other products, get a fair reward. Such computer-implemented inventions account for about 15 % of new patent applications. The proposal would achieve its aim without stifling competition or sealing off the software market to new initiatives and new inventions. It would prevent patents being granted for computer programs or business methods as such in the current situation of legal uncertainty that the proposal seeks to remedy, there is a need to eliminate the possibility that such patents could be granted.

 

    Proposed Community Patent Regulation

 

The Presidency will [also] seek to achieve political agreement on the Regulation to establish a Community Patent and, if that is reached, approval of the proposal to revise the European Patent Convention in line with the Regulation.

 

An agreement on the broad outlines of the Regulation was reached in March 2003 and further progress was made towards overall agreement at the November 2003 Council. However, a small number of points remain outstanding, in particular on requirements for the translation of patents and on how infringements of patents which might arise as a result of mistranslations should be treated. These could not be resolved at the March 2004 Council and the Presidency will now make another attempt.

 

Mr. Bolkestein will again thank the Presidency for its unstinting efforts. He will remind Ministers that it is no good adopting Resolutions expressing the urgent need to boost EU competitiveness if they are not prepared to go the extra mile to achieve compromises that can achieve that in practice. European industry urgently needs more affordable patents covering the whole Union, if it is to compete better with the US and Japan.

 

Recent calculations show that the Community Patent will cost no more than a European patent covering five countries. That would represent a cost saving to around two-thirds (68 %) of all applicants for European patents, at least 30 000 granted patents a year. For full EU coverage the Community patent would cost only 50% of a European patent for the 25 individual member states a saving of at least €30 000 per patent over 10 years.

 

In addition to the lower costs, Community Patent holders would benefit from far greater legal certainty, because disputes over interpretation would be heard before a single Community Patent Court with pan-EU jurisdiction.  A European Patent can currently be challenged in each and every country in which it is valid, which can give rise not only to uncertainty and potentially divergent interpretations but also to higher costs.

 

For further details of the benefits that would flow from the introduction of the Community patent and also of the linked proposal to create a pan-EU jurisdiction, see a new set of frequently asked questions at http://www.europa.eu.int/comm/internal_market/en/indprop/patent/index.htm

 

For more on intellectual property in the EU, go to http://europa.eu.int/comm/internal_market/en/intprop/index.htm. 

For more on industrial property in the EU, go to http://europa.eu.int/comm/internal_market/indprop/index_en.htm. 

For more on the decision-making process in the European Union, go to http://europa.eu.int/institutions/decision-making/index_en.htm. 

 

And, for more of the latest information on multinational intellectual property issues, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

PCT Newsletter Highlights for April 2004

Brazil Relaxes National Phase Deadline

 

On April 30, 2004, Brazil withdrew its notification of the incompatibility of its national laws with PCT Article 22(1).  The new 30-month time limit for entering the National Phase in Brazil under PCT Article 22(1) applies to international applications for which the 20-month time limit expired on or after that date.  

 

Now that Brazil has withdrawn its notification of incompatibility, the only remaining designated Offices that do not yet apply the 30-month time limit Article 22(1) are 

CH Switzerland*

FI Finland*

LU Luxembourg*

SE Sweden*

TZ United Republic of Tanzania*

UG Uganda*

YU Serbia and Montenegro

ZM Zambia*

However, for regional designations of those States marked with an asterisk, the 31-month time limit under PCT Article 22(3) applies. 

 

A complete list of time limits applicable for each designated/elected Office for entering the national phase under Chapters I and II of the PCT is available at www.wipo.int/pct/en/access/legal_text.htm

 

            Practical Advice on Designation Withdrawals

 

There is no obligation to formally withdraw a designation if you do not intend to enter the national phase in the State concerned. However, under certain circumstances it may be advisable to withdraw certain designations because the of some States provide for automatic withdrawal of an earlier national application if a later international application claims priority of that earlier national application and designates the country concerned.

 

By not performing the acts necessary under PCT Article 22 (for National Phase entry) or Article 39(1) (for International Preliminary Examination) within the applicable time limit for entry into the national phase in that State, your international application will simply cease to have any effect in that State (under PCT Article 24(1)(iii)), with the same consequences as the withdrawal of a national application in that State.  Therefore, by simply not taking any action to enter the national phase within the prescribed time limit, you will avoid having to send a notice of withdrawal, and you will also avoid having to furnish the signatures of all the applicants which will be required to make such a withdrawal (unless they have previously appointed the agent or common representative submitting the withdrawal). By not withdrawing the designation, you will also be keeping your options open in case you change your mind and decide to enter the national phase in the designated State.    

 

Once a designation has been withdrawn, the effect of the international application in that State ceases (see PCT Article 24(1)(i)), and, although it would depend on the national law of the State concerned, you would normally not be able to enter the national phase in that State.  Nonetheless, under certain circumstances it may be advisable to withdraw designations.  

 

For example, some States provide for automatic withdrawal of an earlier national application if a later international application claims priority to that earlier national application and designates the country concerned. The earlier national application will therefore be withdrawn if the designations concerned are not withdrawn from the international application.  Germany, the Republic of Korea and the Russian Federation have notified WIPO under PCT Rule 4.9(b) that this situation applies to them. For these three States, a special check-box has been made available in Box No. V of the Request Form enabling applicants to exclude those States from the automatic and all inclusive coverage of designations, without having to specifically withdraw them.

 

However, Japan, and any other States which have similar provisions under their national law, cannot be excluded in the Request Form.  A separate notice of withdrawal of the designation must therefore be submitted, preferably preferably at the same time as the Request, in order to avoid the automatic withdrawal of the earlier filed national application.  In particular for Japan, the withdrawal should be made before within 15 months of the priority date. Information on such situations is published in the PCT Applicant’s Guide, Annex B1.

 

For more of the latest news about the PCT system, please contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

 

 

USPTO Launches Electronic Patent Assignment System

On May 10, 2004, the Office of Public Records at the U.S. Patent and Trademark Office launched its new Electronic Patent Assignment System (or "EPAS") at http://epas.uspto.gov/.  Similar to the Electronic Trademark Assignment System ("ETAS") at http://etas.uspto.gov/, EPAS allows users to create and submit a Patent Assignment Recordation Coversheet with supporting legal documentation uploaded in Tagged Image File Format ("TIFF"). 

 

Properties may be identified by U.S. Patent Application Serial Number, US Patent Number, or US PCT number.  However, only one such number should be entered for each property because, although the system will prevent duplicate entries of the same number, it does not have the ability to determine the relationship between numbers assigned to the same patent property. Data from a submission can also be downloaded as a template to re-use in future submissions.

 

Applicants may use preformatted designations for the nature of the conveyance -- "Assignment," "Merger," "Change of Name," "Nunc Pro Tunc"  -- or select "Other" and enter up to 120 characters that describes the transaction to be recorded. However, the USPTO does not examine the substance of documents submitted for recording.  In fact, according the the on-line help file, "The act of recording a document is a ministerial act, and not a determination of the document's validity or of its effect on title to an application or registration. The Office will determine the effect of a document only when an assignee attempts to take an action in connection with an application or registration (e.g., when an assignee files a statement of use or an affidavit or declaration of use under 15 U.S.C. §1058). 37 C.F.R. §3.54."

 

The TIFF files containing the conveyance must be letter size (8.5"x11"), 300 dpi, single-page, black and white images with portrait orientation. The size of an image file must be 2550 by 3300 pixels, within a 5% deviation. Most TIFF format encodings, such as Uncompressed, RLE, Packbits, Deflate, CCITT Group3 and Group4, are recognized by the system and transformed to CCITT Group 4 TIFF files.

 

During the submission process, when the system successfully recognizes an uploaded TIFF file, a thumbnail image will be displayed at the bottom of the attachments web page indicating successful attachment/upload of the file. If the server does not recognize the tiff image an error message will be displayed on the web page, indicating the file has not be uploaded as an attachment to the assignment.

 

Fees may be paid using a credit cards, electronic fund transfer, or through an existing USPTO deposit account. All forms will be marked with a U.S. Eastern Time timestamp when received on the USPTO server. Upon completion of the fee payment process, a Confirmation of Receipt will be displayed the time stamp will be applied to the submission. Once submitted, a filing can not be cancelled unless the request fails to satisfy the minimum filing requirements.

 

For more on the latest USPTO electronic filing procedures, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA. 

New Unfair Import Investigation Requests

 

On May 5, 2004, Thomas Baumgartner and Hillbilly Smokehouse, Inc. filed a "Section 337" complaint at the U.S. International Trade Commission requesting an unfair import investigation involving "Pet Food Treats." The proposed respondents named in the complaint are IMS Pet Industries, North Bergen, NJ; LLB Holdings, Aiea, Hawaii; Pet Center, Los Angeles, CA; TsingTao ShengRong Seafood, Columbus, OH; and Alan Lee Distributors, San Ramon, CA. The complaint has been designated as confidential and assigned Docket No. 337-2368 for indexing in the Commission's database at https://edis.usitc.gov/hvwebex//.

 

On May 5, 2004, Trend Micro Incorporated filed an unfair import complaint requesting an investigation involving "Systems for Detecting Viruses or Worms." The proposed respondent named in this complaint is Fortinet, Inc., Sunnyvale, CA. The complaint has been designated as confidential and assigned Docket No. 337-2369 for indexing in the Commission's database.

 

On May 6, 2004, Hewlett-Packard Development Company and Hewlett-Packard Company filed an unfair import complaint requesting an investigation involving "Personal Computers and Server Computers." The proposed respondent named in this complaint is Gateway, Inc. The complaint has been designated as confidential and assigned Docket No. 337-2370 for indexing in the Commission's database.

 

On May 6, 2004, OSRAM Gmbh and OSRAM Opto Semiconductors Gmbh filed an unfair import complaint requesting an investigation involving "Light-Emitting Diodes." The proposed respondents named in this complaint are Dominant Semiconductors Sdn. Bhd., (Malaysia); American Microsemiconductor Inc.; and American Opto Plus Inc. The complaint has been designated as confidential and assigned Docket No. 337-2371 for indexing in the Commission's database.

 

On May 7, 2004, Mobility Electronics, Inc. filed an unfair import complaint requesting an investigation involving " Power Adapters." The proposed respondents named in this complaint Formosa Electronic Industries, Inc. (Taiwan); Micro Innovations Corp., Edison, NJ; and SPS, Inc. (Korea). The complaint has been designated as confidential and assigned Docket No. 337-2372 for indexing in the Commission's database.

 

The Commission now has 30-35 days from the dates indicated above in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written initial determination, usually within about 10 months. Due to the expedited nature of these proceedings, it is important to notify any interested parties as soon as possible.

 

General information about Section 337 investigations is available at htp://www.aplf.org/events/roundtables/2002-06-20.shtml. For more information on these particular investigations, please contact Minh Nguyen (Minh.Nguyen@tkhr.com) and Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta.

Revised Procedures for Express Abandonment and Patent Publication Avoidance

 

On April 27, 2004, the United States Patent and Trademark Office announced revised abandonment and publication avoidance procedures along with a new "Mail Stop Express Abandonment" at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/msexabn.pdf.

 

The notice clarifies that, if an applicant files a letter of express abandonment under 37 CFR 1.138 without a petition to avoid publication under 37 CFR 1.138(c), then the application will be abandoned regardless of whether the application can be withdrawn from the publication process. Therefore, the application might be both published and abandoned.  Letters of express abandonment and/or petitions to avoid publication under 37 CFR 1.138 must be filed by:

(1) Mailing the petition or letter to:

Mail Stop Express Abandonment

Commissioner for Patents

P.O. Box 1450

Alexandria, Virginia, 22314-1450;

(2) Transmitting the petition or letter by facsimile directly to the Pre-Grant Publication Division at 703-305-8568; or

 

(3) Delivering the petition or letter by hand during business hours between 8:00 a.m. and 5:00 p.m. to 

Pre-Grant Publication Division 

2231 Crystal Drive, Room 905

Arlington, VA 22202

Applicants must also submit their petitions for express abandonment by facsimile or hand-delivery if projected publication date is within three months of the date when the petition will be filed. Otherwise, "they will bear the risk that the Pre-Grant Publication Division will not recognize the abandonment in sufficient time to avoid publication."

 

For more information on USPTO Practice, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

 

USPTO Launches "PAIR" Enhancements

The United States Patent and Trademark Office has added new features to its Patent Application Information Retrieval ("PAIR") system at http://pair.uspto.gov/cgi-bin/final/home.pl.

 

The PAIR system provides customers with direct access to patent application status information via the Internet.  There are two components of PAIR: Public and Private.  Public PAIR provides status and history information for issued patents and published applications to the general public.  Private PAIR provides independent inventors, registered patent attorneys, and patent agents with secure, real-time status information for unpublished patent applications.

 

Both Public and Private PAIR now offer the following features:

* Easier Publication Searches - Kind Codes are no longer required when conducting a publication number searches.

* Updated Documentation - The on-line "Help" and "Frequently Asked Questions" sections have been updated to include the newest features.

* Detailed Search Error Messages 

Private PAIR has also been further enhanced to include:

* Links to assignment data on the Application, Patent, and Publication details screen.

* "Printer Friendly" options for certain screens.

* Attorney Docket Numbers on Outgoing Correspondence Notifications.

* Expanded Publication Review Options.

To register for access to Private PAIR, customers must first obtain a Customer Number and a Public Key Infrastructure ("PKI") Certificate.  Once the Customer Number and PKI Certificate have been obtained, customers must also associate their current patent applications with the Customer Number.  Forms and instructions for registering for Private PAIR are available on the USPTO Internet's "PAIR New Users Page" at http://www.uspto.gov/ebc/digitalcert.htm.

For more on the latest intellectual property information resources on the Internet, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA

Courtesy of William F. Heinze
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
Profile:  http://www.tkhr.com/Bill.Heinze 
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
E-Mail:  4047290729@tmomail.net (100 characters max.)

. 

Certain US Patent Petitions Need Status Checks 

 

On April 28, 2004, the U.S. Patent and Trademark Office announced at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/petalert.pdf that there are a number of submissions for which the Image File Wrapper system has not sent a processing message to the Office of Petitions. Therefore, for certain types of petitions filed after June 30, 2003, the Office is requesting that applicants check the status and send an e-mail alert to the Office.

 

        Petitions Types Affected 

 

Petitions that are decided by the Office of the Deputy Commissioner for Patent Examination Policy, including the Office of Patent Legal Administration and the Office of Petitions.  Examples of the most common petitions of these types are petitions to revive applications that are abandoned due to failure to respond to an Office action, petitions to withdraw an application from issue, and petitions for patent term adjustments. Consult MPEP § 1002.02(b) for the full list of affected petitions.

 

        Petitions Types Not Affected

 

Petitions for other offices within the USPTO, such as those decided by the Technology Centers (listed in MPEP § 1002.02(c)) or the Office of Publications (listed in MPEP § 1002.02(r)), are not part of this program and applicants should not send an e-mail alert to the Office pursuant to this notice.    Temporary Procedures for Alerts

1. Confirm that a petition filed after June 30, 2003, of the types listed in MPEP § 1002.02(b), has not been answered, either by checking your records or checking the postings on the Office's Patent Application Information Retrieval (PAIR) system.

 

2. If a the applicant has not received a response to the petition, or seen a response posted on the PAIR system, send an e-mail alert to petitions@uspto.gov with the following information:

Serial number of the application in which the petition was filed

Filing date of the petition

Regulation under which the petition was filed, if known (e.g. 37 CFR 1.137(b), 37 CFR 1.183, etc.)

3. Only the information described in paragraph 2 should be provided in the e-mail. No attachments may be added to the e-mail and other information will not be considered. The email will not be acknowledged or answered.

 

4. This e-mail alert will NOT be considered a communication in the file under 37 CFR 1.4(a)(2) and will not be entered into the file contents. The alert is NOT considered a status inquiry.

 

5. A single e-mail alert may include information on more than one unanswered petition. However, do not send in more than one alert per unanswered petition.

Example [e-mail addressed to petitions@uspto.gov]:

The following petitions have not been answered to date:

Application No.     Petition Filed:             Reg:

10/111111            October 3, 2003         37 CFR 1.137(b)

10/222222            December 5, 2003     37 CFR 1.183

For more on the latest USPTO procedures, please contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

 

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
Profile:  http://www.tkhr.com/Bill.Heinze 
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Blog:     http://billheinze.blogspot.com

 

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.

 

New Weapons in the War on Cybersquatting

During its March 6, 2004 annual board meeting in Rome, the Internet Corporation for Assigned Names and Numbers ("ICANN") approved VeriSign's request to conduct a 12-month trial of a new wait-listing service for ".com" and ".net" domain names. However, under ICANN's Memorandum of Understanding with the U.S. Department of Commerce, the government must still approve the service, and several competing registrars have sued ICANN and Verisign over what they view as an unfair monopoly. ICANN is also fighting an antitrust lawsuit by Verisign over its proposed "SiteFinder" redirection service which would have sent mistyped domain names to VeriSign's search site.

While that dust settles, Verisign's Network Solutions subsidiary is continuing to offer "Pre-Orders" for its "Next Registration Rights" wait-listing service at https://www.nextregistrationrights.com/backorder.sn for $39 per year, per domain name. However, there is no guarantee that pre-orders will result in obtaining a Next Registration Rights subscription because only one back order is allowed for each domain name on a first-come, fist-served basis. But, if you do get the wait-listing for a domain name, and the domain name becomes available during your subscription, then the registration is yours, along with a 1-year registration that is included in the yearly fee. Subscribers can change their desired domain names at any time during their subscription and there is no limit to the number of times that the desired domain name can be modified. Existing wait-listing service subscriptions can also be searched at https://www.nextregistrationrights.com/search_results.jsp.

What's driving this push for domain name wait-listing services, you ask? Expiredtraffic.com, an Internet development company that markets its service to "professional domain speculators," and others, may have just the answer:

Expired traffic is all about making good on someone else's hard work, time, money and traffic. If someone gave you the keys to an abandoned 16-acre estate with a 10,000 square foot mansion, you'd keep it, right? I know I would. Expired traffic works on the same premise--finders keepers, losers weepers.

Of course, the best way to avoid becoming such a loser-weeper is simply to make sure that your clients' name registrations get renewed. In fact, many registrars are now offering automatic renewal and transfer prevention services that help prevent the most-common domain name management errors.

For more information on the latest techniques for domain name registration, recovery, and management, including domain name portfolio audits, contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

New, Revised, and Discontinued USPTO Mail Stops Effective Immediately

From http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/mspostissue.pdf on April 28, 2004:

 

Effective immediately, the United States Patent and Trademark Office (USPTO) has established a new mail stop, Mail Stop Post Issue, and several mail stops have been deleted, or changed.

 

Correspondence that should be directed to Mail Stop Post Issue includes correspondence in applications that have issued as a patent, such as requests for changes of address (other than a fee address, which should be addressed to Mail Stop M Correspondence), powers of attorney, revocations of powers of attorney, withdrawal of attorney, and submissions under 37 CFR 1.501.

 

The mail stops that should no longer be used are: Mail Stop Application Number; Mail Stop CPA; Mail Stop Design; Mail Stop Non-Fee Amendment; Mail Stop Patent Application; and Mail Stop Provisional Patent Application. Correspondence that would have been addressed to these mail stops no longer needs a specific mail stop.

 

Mail Stop Non-Fee Amendment has been changed to Mail Stop Amendment.

 

Mail Stop PGPUB-ABD has been changed to Mail Stop Express Abandonment and all requests and petitions for an express abandonment under 37 CFR 1.138 should be directed to this mail stop.

 

For the latest correspondence addresses and and fax numbers go to http://www.uspto.gov/web/offices/pac/dapp/opla/
preognotice/addresschange.htm and note that "Only the specified type of document should be placed in an envelope addressed to [any] of these special mail stops. If any documents other than the specified type identified for each special mail stop are addressed to that mail stop, they will be significantly delayed in reaching the appropriate area for which they are intended. If no mail stop is included on the list below, then no mail stop is required for the correspondence. The mail stop should generally appear as the first line in the address."

Licensing and Review Address, Filing Confidential Information and World I/P Day

Establishment of New Mail Stop L&R; FAX Number for Requests for Expedited Foreign Filing License

excerpted from http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/newmslnr.pdf

 

Effective immediately, applications subject to a secrecy order pursuant to 35 U.S.C.§ 181, or are national security classified, and correspondence to be filed in such an application, are filed in such an application, 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 to be filed in a patent application 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. See 37 CFR § 1.6(d)(6).  Applications subject to a secrecy order pursuant to 35 U.S.C. § 181, or are national security classified, and correspondence related thereto, may also be hand-carried to Licensing and Review. See 37 CFR §§ 5.1(c) and 5.2(c). The current location of Licensing and Review is:

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 a petition for a foreign filing license where there is no corresponding U.S. application (37 CFR 5.13), may be faxed to: (703) 305-7658 instead of the Central FAX number (703) 872-9306. Alternatively, petitions for a foreign filing license may also be hand carried to Licensing and Review, or mailed to Mail Stop L&R at the address specified above.

 

Reminder of the Proper Procedure for Filing Confidential Information Pursuant to MPEP 724.02

excerpted from http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/mpep724_02conf.pdf

 

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 IFW, the document will only be removed from the IFW for national security concerns.

 

When filing trade secret information, proprietary information, or protective order materials is necessary to comply with the duty of disclosure pursuant to 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 (Confidential IDS) should be prepared, listing the confidential document on an information disclosure statement (e.g., PTO/SB/08). The document to be maintained in confidence must be placed in an envelope or container clearly labeled, for example:

TRADE SECRET MATERIAL NOT OPEN TO PUBLIC. TO BE OPENED ONLY BY EXAMINER OR OTHER AUTHORIZED U.S. PATENT AND TRADEMARK OFFICE EMPLOYEE.

DO NOT SCAN

In re Application of

Application No.

Filed:

For: (Title of Invention)

TC Art Unit:

Examiner:

Materials submitted in compliance with MPEP 724.02 should be mailed to the Office or hand carried to the Customer Window as set forth in "Centralized Delivery and Facsimile Transmission Requirements for Patent Application Related Correspondence," 1275 Off. Gaz. Patent Office Notices 200 (Oct. 28, 2003), in order to ensure appropriate processing of the documents.

 

A Belated Happy World Intellectual Property Day, 

 

--Bill

 

William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

Tel.:  (770) 738-2382
Fax:  (770) 951-0933
Mobile:  (404) 729-0729
E-Mail:  BillHeinze@tkhr.com (business)
E-Mail:  BillHeinze@yahoo.com (personal) 
E-Mail:  BillHeinze@tmo.blackberry.net (mobile)
Profile:  http://www.tkhr.com/Bill.Heinze 

Blog:     http://billheinze.blogspot.com

*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.