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Patents Alert Archive 2009

October 2009


October 20, 2009 - USPTO’s 14th Annual Independent Inventors Conference

Register today while space is still available!

The United States Patent and Trademark Office (USPTO) invites you to attend the 14th Annual Independent Inventors Conference The Independent Inventors Conference provides an opportunity to learn about patents, trademarks and gather tips from experienced inventors. The conference will be held November 5-6, 2009 in Alexandria, VA, at the USPTO campus.

A pre-conference workshop (November 4, 2009 from 5 p.m. – 7 p.m.) is included with registration for anyone interested in learning patent basics and how they protect inventions. This workshop is for beginners and is a good foundation for the conference.

The two-day event will include breakout sessions by USPTO experts about patents, patent searching, claim drafting, trademarks, trademark searching, obviousness and tips for seasoned inventors.

Dynamic general sessions ranging in topic from commercializing intellectual property to lessons learned from successful independent inventors will also be offered each day with presentations by:

  • David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO),
  • Michael Lee, Vice President of the Licensing Executive Society (USA/Canada),
  • Thom Ruhe, Director of Entrepreneurship for Kauffman Foundation,
  • Louis Foreman, the founder and Chief Executive of Enventys® and the creator of the Emmy® Award winning PBS TV show, Everyday Edisons,
  • William Morris, III, trademark counsel for Under Armour®, Inc.,
  • Successful inventor Don Skomsky, winner of the NASA’s Create the Future Competition, and
  • Stephen Key, inventor of his patented Spinformation (rotating label technology).


To register for the 14th Annual Independent Inventors Conference, please visit: More information about the event is available at

If you have any questions, please contact the Inventors Assistance Program at 571-272-8850



July 2009


July 23, 2009 - New e-Office Action Program Launched

The United States Patent and Trademark Office (USPTO) is pleased to announce the launch of the e-Office Action Program, which provides patent applicants an alternative to receive e-mail notification of new Office communications that are available in Private PAIR, in lieu of receiving paper communications via postal mail. Participation in the e-Office Action Program will continue to be optional.

The e-Office Action program makes it faster and more efficient for participants to directly process and docket Office communications in electronic format. During the e-Office Action Pilot Program, participants stated that e-Office Action not only minimizes the possibility of lost or delayed postal mail, but also allows them to receive Office communications faster than postal mail.

To participate in the e-Office Action program, applicants must log in to Private PAIR. After selecting “View Customer Number Details” applicants can simply change their preference to “Receive Correspondence Notification via e-mail” on the Details for Customer Number screen.

Applicants can opt-in or out of the e-Office Action program at any time. For patent applicants who opt-out or do not choose to participate in the e-Office Action program, paper copies of Office communications will resume or continue to be mailed under current USPTO processing procedures. If e-Office Action participants have not accessed a new Office communication, which requires an applicant response, within seven calendar days after receiving e-mail notification, the USPTO will mail a courtesy postcard as a reminder

Requirements for e-Office Action program participation, training, program updates, and resource information are available at the USPTO’s e-Office Action Web site.



June 2009


June 30, 2009 - World Intellectual Property Organization (WIPO) Joins the Priority Document Exchange (PDX) Program

The United States Patent and Trademark Office (USPTO) is pleased to announce that the World Intellectual Property Organization (WIPO) has become the fourth foreign intellectual property office to participate in the Priority Document Exchange (PDX) program. Patent applicants now have the ability to electronically exchange priority documents, at no cost, between the USPTO and WIPO through the WIPO PATENTSCOPE® Priority Document Access Service (DAS).

The DAS enables a patent applicant claiming priority from an earlier application to rely on a copy of the priority document held in, or accessible via, the DAS, rather than providing a certified copy separately to each Patent Office when a patent application claiming priority is filed.

  • Please refer to the USPTO PDX Web site for guidance on using DAS to register U.S. priority documents to be accessible to the WIPO through DAS or to request the USPTO to retrieve registered priority documents from the WIPO through DAS.
  • Participation in DAS is voluntary for Patent Offices and applicants. Access the WIPO’s “Frequently Asked Questions” for additional user information regarding DAS.
  • For specific information on the WIPO’s participation in the PDX program, please access the USPTO Official Gazette Notice.
  • To learn more about DAS participating offices, please visit Priority Document Access Service.

For questions regarding PDX or the DAS programs, please contact the Patent EBC Customer Service Center by phone at 866-217-9197 (toll-free) or 571-272-4100 or send an e-mail the PDX support group at

Did You Know?

The United States Patent and Trademark Office (USPTO) has the ability to electronically exchange non-participating office priority documents between the Japan Patent Office (JPO) and the European Patent Office (EPO).

The following outlines this process:

  1. An applicant files a U.S. application claiming priority to an application previously filed with a non-participating office (e.g., an Australia national application filed with the Australian Patent Office).
  2. That applicant desires the USPTO to electronically obtain that priority document through the Priority Document Exchange (PDX) system from a corresponding JPO or EPO application file wrapper.
  3. A request to retrieve (e.g., form PTO/SB/38) is filed by the applicant, which identifies both the JPO or EPO application number and the application number of the non-participating office (e.g., Australia) priority application.
  4. 4. Non-participating office priority documents retrieved from the JPO or EPO will bear the IFW document title of "Priority documents electronically retrieved by USPTO from a participating IP Office."


For more information on priority document exchange between the JPO and USPTO, please access the Electronic Exchange of Non-Participating Office Priority Documents Between the JPO and the USPTO Official Gazette Notice. For PDX questions or user assistance, please e-mail the PDX support group at:



June 8, 2009 - Tips to Improve Your e-Filing Effectiveness

Most intellectual property (IP) firms are now filing their patent applications electronically, with many nearing the 100 percent e-filing rate, using EFS-Web. To assist our customers in fully adopting e-filing, and to more effectively e-file, we offer the following tips for using the United States Patent and Trademark Office’s (USPTO) e-Commerce tools.

  • Tip 1 – Review Applications in Private PAIR. Simple, preventable errors in patent applications cause unnecessary delays in processing applications. Reduce errors and rework in your submitted patent applications by reviewing the correctness of your submission directly online in Private PAIR. All patent applications submitted through EFS-Web are entered into Private PAIR and available for secure online viewing generally within minutes of submission if the application is associated with a customer number.
  • Tip 2 – Use Document Descriptions. Ensure prompt USPTO processing of submitted documents by using the correct document description on all electronically submitted documents. For more information and general rules on document description indexing, access the Document Description information via the USPTO Internet site.
  • Tip 3 – Register for Recovery Codes. Register for recovery codes in the event your Digital Certificate profile becomes expired or corrupt and receive a set of up to seven (7) recovery codes. Access the Digital Certificate Management home page and click on 'Register for Recovery Codes' to initiate the process.
  • Tip 4 – Fully Utilize e-Commerce Tools. Many leading IP firms have practically eliminated filing paper patent applications. Those firms have incorporated USPTO’s e-Commerce tools, such as EFS-Web and PAIR, in their electronic patent filing process to achieve the most benefits. For firms that are still filing paper applications, it may be time to take full advantage of e-filing, and share the benefits of going paperless:
    • Increased productivity and cost savings from reduced paper-based processing
    • Easy online access to important patent information
    • Increased customer responsiveness and service levels



February 2009


February, 10 2009 - Acting Commissioner Focarino Looks Forward to the Upcoming Year

Dear Patents e-Commerce Customer

Thank you for using and championing the United States Patent and Trademark Office's (USPTO) e–Commerce systems throughout 2008. Your initiative to participate in pilot programs and provide valuable feedback has led to the successful systems and programs in use today: EFS–Web, PAIR, Accelerated Examination, and Patent Prosecution Highway.

I am excited for the year ahead as the USPTO continues to refine and expand our e–Commerce programs to meet your needs. In addition to scheduled updates to existing systems, the USPTO plans to launch the e–Office Action program in March 2009.

In the e–Office Action program, applicants no longer receive outgoing correspondence related to a patent application in paper via postal mail. Instead, they receive an e–mail notifying them to directly access new outgoing correspondence in Private PAIR. In this program, participants can receive outgoing correspondence up to three days faster than those who receive their correspondence in paper, depending on their location. If you are interested in learning more about e–Office Action, please send an e-mail to

Throughout 2008, the USPTO has sent you updates through e–Commerce e–Alerts. The USPTO has also trained you on new and existing systems through new training materials available on In the coming year, the USPTO hopes to make these materials more accessible by updating the EFS–Web's Tools and Tutorials page on and releasing new computer–based training modules on EFS–Web and PAIR.

If you have not yet tried one of our e–Commerce systems, I encourage you to do so and let us know what you think. The USPTO's systems were created based on feedback from customers, and these systems continue to evolve. The USPTO wants to know what will make it easier for you to manage your patent applications electronically. Please send an e–mail to if you have any suggestions.

Once again, thank you for your use and support of our e–Commerce systems.

Best wishes for a prosperous new year.


Peggy Focarino

Acting Commissioner for Patents
United States Patent and Trademark Office



February 10, 2009 - Clarification of USPTO e-Commerce e-Alert dated February 10, 2009

The USPTO has received several inquiries about the e–Alert that was sent out February 10, 2009. Specifically, callers were concerned about the paragraph describing the e–Office Action program and the proposed March 2009 deployment.

e–Office Action has been a pilot program for two years. During that time, pilot participants have provided valuable input to improve the program. In March 2009, the e–Office Action program will no longer be a pilot program, and will be available to all USPTO applicants.

Even after March 2009, participation in the e–Office Action program remains optional, and you will continue to receive your Office Actions in paper unless you choose to participate. 

This was not clear in the original e–Alert. Most of the e–Office Action pilot participants have recognized significant benefits in the paperless environment. We certainly hope that all of our applicants choose to participate in e–Office Action, but it is not mandatory. If you are interested in learning more about e–Office Action, please send an e–mail to

We apologize for any confusion that the original e–Alert may have caused.


Don Levin
Program Manager, e–Commerce Division

United States Patent and Trademark Office
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Last Modified: 8/29/2011 2:20:43 PM