Notice of Public Hearing and Request for Comments on Matters Related to the Harmonization of Substantive Patent Law

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of Public Hearing and Request for Comments on Matters Related to the Harmonization of Substantive Patent Law.

SUMMARY:

The United States Patent and Trademark Office (USPTO) is seeking stakeholder input on certain matters relating to international harmonization of substantive patent law, in particular, information and views on: (1) The grace period; (2) publication of applications; (3) the treatment of conflicting applications and (4) prior user rights. To assist in gathering this information, the USPTO is holding a public hearing at which interested members of the public are invited to testify on the issues outlined above. In addition, interested members of the public are encouraged to complete an electronic questionnaire relating to the above-identified issues. Separate written comments may be provided through electronic mail, though completion of the questionnaire is strongly preferred in lieu of separate comments. Additional details may be found in the supplementary information section of this notice.

Public Hearing: A public hearing will be held on March 21, 2013, beginning at 8:30 a.m. Eastern Daylight Time (EDT) and ending at 12:00 p.m. EDT. The public hearing will be held at the USPTO, Madison Auditorium, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, Virginia 22314.

Those wishing to present oral testimony at the hearing must request an opportunity to do so in writing by email to IP.Policy@uspto.gov no later than February 28, 2013. Requests to testify at the hearing must indicate the following information: (1) The name of the person desiring to testify; (2) the person's contact information (telephone number and electronic mail address); (3) the organization(s) the person represents, if any; and (4) a preliminary written copy of their testimony. The opportunity to testify will only be for those physically present. Based on the requests received, an agenda of scheduled testimony will be sent to testifying respondents, and posted on the USPTO Internet Web site (address: http://www.uspto.gov/ip/global/aia_harmonization.jsp ). The number of participants testifying is limited to ensure that all who are speaking will have a meaningful chance to do so. Members of the public who wish solely to observe need not submit a request to attend.

Speakers selected to provide testimony at the hearing should provide a final written copy of their testimony for inclusion in the record of the proceedings no later than February 28, 2013. In addition, any member of the public may submit written comments on issues raised at the public hearing or on any issue pertaining to harmonization. However, users are strongly encouraged to fill out the questionnaire before the roundtable event in lieu of providing separate written comments. The questionnaire will also close on February 28, 2013.

The USPTO plans to make the public roundtable available via Webcast. Webcast information will be available on the USPTO's Internet Web site (address: http://www.uspto.gov/ip/global/aia_harmonization.jsp ) before the public hearing.

Written Comments: Written comments should be sent by email to IP.Policy@uspto.gov. Comments may also be submitted by postal mail addressed to: Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313-1450, ATTN: Bijou Mgbojikwe. Written comments should be identified in the subject line of the email or postal mailing as “Harmonization Issues.” Although comments may be submitted by postal mail, the USPTO prefers to receive comments via email. It is also strongly preferred that interested members of the public undertake the questionnaire in lieu of submitting written comments. The questionnaire will be available on the USPTO's Web site (address: http://www.uspto.gov/ip/global/patents/tegernsee_survey/index.jsp ). However, for those wishing to submit supplemental written comments, the deadline for receipt of those written comments for consideration by the USPTO is February 28, 2013.

Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments. It should be noted that the tenor of the questions posed in the questionnaire should not be perceived as an indication that the USPTO has taken a position on or is predisposed to any particular views.

Availability of Hearing Transcript and Written Comments: A transcript of the events at the hearing and the written comments will be available for public inspection at the USPTO's Office of Policy and External Affairs in the Executive Library located in the Madison West Building, Tenth Floor, 600 Dulany Street, Alexandria, Virginia 22314. Contact: Bijou Mgbojikwe at Bijou.Mgbojikwe@uspto.gov or 571-272-9300. In addition, the hearing transcript and the comments from the public will also be available via the USPTO Internet Web site (address: http://www.uspto.gov ). Contact: Bijou Mgbojikwe at Bijou.Mgbojikwe@uspto.gov or 571-272-9300.

FOR FURTHER INFORMATION CONTACT:

Bijou Mgbojikwe, Office of Policy and External Affairs, by phone 571-272-9300, by email at Bijou.Mgbojikwe@uspto.gov or by mail addressed to: Mail Stop OPEA, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, ATTN: Bijou Mgbojikwe.

SUPPLEMENTARY INFORMATION:

At a meeting convened in Tegernsee, Germany, in July 2011, leaders and representatives from the patent offices of Denmark, France, Germany, Japan, the United Kingdom, and the United States as well as from the European Patent Office (the “Tegernsee Group”) launched a new dialogue on the state of affairs concerning international harmonization of substantive patent law. Since that initial meeting, the Tegernsee Group has met twice to consider work done by patent experts from each office analyzing comparative aspects of each jurisdiction's patent law and practice. In addition, the Group mandated detailed studies on four issues of particular interest for international harmonization: the grace period, publication of applications, treatment of conflicting applications, and prior user rights.

Most recently, on October 4, 2012, Heads of Offices and experts from each of the patent offices in the Tegernsee Group met in Geneva, Switzerland, to review the results of the Group-mandated studies on these four issues. In reviewing these studies and contemplating the future of international harmonization, it was agreed that the next step in the process would be to solicit stakeholder views. To this end, experts from the Tegernsee Group offices were tasked to collaboratively develop a joint harmonization questionnaire to aid in the acquisition and analysis of stakeholder views across jurisdictions on the particular issues of: grace period, publication of applications, treatment of conflicting applications, and prior user rights. As such, each patent office in the Tegernsee Group will be separately administering the joint questionnaire to its respective stakeholders.

Accordingly, interested members of the public are encouraged to respond to the jointly-developed questionnaire being administered by the USPTO which is located at address: http://www.uspto.gov/ip/global/patents/tegernsee_survey/index.jsp . Further information and details concerning each of the above-identified topics may be found within the questionnaire.