USPTO News Briefs - February 2023

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USPTO Eliminates CFR Provisions Regarding Voluntary CLE Certification

In a notice published in the Federal Register (88 Fed. Reg. 4906) last month, the U.S. Patent and Trademark Office issued a final rule adopting an interim final rule that the Office published in the Federal Register in November, that eliminated provisions of the Code of Federal Regulations related to voluntary continuing legal education (CLE) certification and recognition for registered patent practitioners and individuals granted limited recognition to practice in patent matters before the Office.  The final rule will take effect on February 27, 2023.

The notice sets out a brief history of the voluntary CLE certification provision, recounting that in August 2020 the Office implemented 37 C.F.R. § 11.11(a)(3), which provided that patent practitioners could voluntarily certify completion of CLE to the USPTO Director for the Office of Enrollment and Discipline.  In October 2020, the Office published CLE guidelines, and then in June 2021, the Office published a notice that voluntary CLE certification would begin in the spring of 2022.  However, in December 2021, the Office published another notice that indefinitely delayed implementation of voluntary CLE certification, and in November 2022, the Office published the interim rule eliminating the voluntary CLE certification and recognition provisions from the CFR.  The most recent notice amends 37 C.F.R. § 11.11(a)(1) and (a)(3) to eliminate provisions concerning the voluntary CLE certification for registered patent practitioners and persons granted limited recognition to practice in patent matters before the Office under 37 C.F.R. § 11.9.

The notice, however, also states that "[i]n the future, the Office may reconsider CLE reporting for patent practitioners, and nothing in this notice is intended to restrict or prohibit such action at a later time."

USPTO, JPO, and KIPO Extend Expanded CSP Program

In a notice published in the Federal Register (88 Fed. Reg. 2892) last month, the U.S. Patent and Trademark Office announced that the USPTO, Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO) have agreed to extend the Expanded Collaborative Search Pilot (CSP) program through October 31, 2024.  The Expanded CSP program provides Applicants who cross-file with the USPTO and either the JPO or KIPO with search results from each partner IP office early in the examination process.  The Program is designed to accelerate examination and provide Applicants with more comprehensive prior art by combining the search expertise of USPTO, JPO, and KIPO examiners before issuing a first Office action.  The USPTO noted that requests to participate in the Expanded CSP program that were filed between October 31, 2022 and January 18, 2023 will be considered.

The USPTO also announced that in response to feedback provided by Applicants in the United States, Korea, and Japan that the petition process for the Expanded CSP program could be improved, specifically with respect to the requirement that Applicants petition each partner IP office separately, the USPTO, JPO, and KIPO developed combined petition forms:  PTO/437–JP for the USPTO/JPO pilot program and PTO/437–KR for the USPTO/KIPO pilot program.  Applicants wishing to participate in either the USPTO/JPO or USPTO/KIPO programs need only submit one petition to one of the two offices in each program.

The changes to the Expanded CSP program took effect on January 18, 2023.  The notice also indicated that each partner IP office will continue to grant no more than 400 requests per year per partner office for the duration of the pilot.  In addition, the notice indicated that the request for participation in the Expanded CSP program must be granted by both the IP office in which the request is directly filed and the partner IP office prior to any examination of the counterpart applications in either office.  For additional information regarding the Expanded CSP, Applicants should consult the Expanded Collaborative Search Pilot Program Extension (86 Fed. Reg. 8183) that was published on February 4, 2021.

USPTO Continues Email Address for PCT Questions

In a notice issued last month, the U.S. Patent and Trademark Office announced the extension of its pilot to provide an email address -- PCTHelp@uspto.gov -- for submitting inquiries about the Patent Cooperation Treaty (PCT) and international and national stage applications.  The email address will continue to be offered until January 1, 2024.

According to the Office's notice, the email address is being offered to improve the overall customer service experience of those needing information regarding the PCT and international and national stage applications.  The Office notes that since 1993, it has also maintained a PCT Help Desk for telephonic inquiries regarding PCT issues.  The annual call volume at the PCT Help Desk has been as high as 40,910 calls per year, with an average of over 22,000 calls annually over the last three fiscal years.  The email address was created in response to customer feedback, which sought a reduction in wait times with the PCT Help Desk, an extension in the hours of availability of the PCT Help Desk to accommodate customers on the West Coast and overseas, and to better utilize modern communication mechanisms such as email.

The Office notes that the email address is not intended for case-specific or time-sensitive inquiries, but rather is intended for general inquiries.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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