Smith Hopen IP Weblog

Stricter Examination of Trademark Specimens

The USPTO has issued a final rule giving trademark examiners the option to require additional specimens for allegations of use, statements of use, declarations of continued use and renewals. 

This is a sensible and long due change to trademark prosecution.  For example, a trademark registration may claim use of the ACME brand for soap and toothpaste.  However, under past practice, the owner of the registration need only submit evidence that ACME was used with soap.  However, a second company may be unfairly restricted from use and registration of ACME for toothpaste….depending on whether the first company was actually using it or not.  This resulted in substantial wasted resources including TTAB proceedings.

Practice Tip:  We have for many years required submission of evidence for each product or service listed in a recitation.  This not only avoids conflict by third parties in the future but also establishes the validity and veracity of the registration should it ever require assertion.

USPTO Limits Daily Credit Cards to $50k

Government fees such as filing, search fees, issue and maintenance fees may be paid by AMEX, VISA and MasterCard at the United States Patent & Trademark Office.  Effective, June 20, 2012, the maximum daily limit per credit card will be reduced from $99,999.99 to $49,999.99.  USPTO Notice.

Determining if a Product is Patented

While there is no affirmative obligation to search for potentially infringing patents, there is very clear precedent that imposes a duty to investigate whether any patents exist on a product to be emulated. The U.S. Supreme Court addressed this very issue in Global-Tech Appliances v. SEB in 2011. Not only does the holding affect the liability of the company that may infringe an existing patent for the product to be copied, but if they patent an improvement, failure to investigate whether the product that inspired the design was patented may lead to claims of inequitable conduct.  Read more here.

U.S. Inventors to Pay it Forward

The USPTO has set an admittedly aggressive budget plan to raise fees again in October.  Fee increases on October 1, 2012 are a common occurrence but not after a recent 15% surcharge fee schedule that was imposed ten days after the September 16, 2011 Patent Reform legislation signed into law by President Obama.

USPTO Director David Kappos (right) plans to introduce a new fee schedule the first quarter of 2013.  See full press release here.

After-Final Rejections Have Hope

The recently announced After Final Consideration Pilot (AFCP) is part of the USPTO’s on-going efforts towards compact prosecution and increased collaboration between examiners and those seeking patents. 

Patent applicants simply submit a response after final.  The examiner will use his/her own judgment to determine whether an additional three (3) hours of work can wrap of the prosecution of the case with an allowance or if an RCE needs filing.  The pilot runs through June 16, 2012 but may be extended.

Read more at: http://www.smithhopen.com/news_detail/552/After-Final_Rejections_Have_Hope

Please No Patent Office Competitions

First let me say that David Kappos is the best thing that happened to the USPTO in a long while.  He is brings many common sense approaches and a new energy that has long been lacking.  However, I would respectfully request that the USPTO exercise some restraint in its outreach, even if noble.

We should not trivialize a venerated system of innovation with well-intended USPTO competitions like Patents for Humanity.  The program awards certificates for accelerated examination as a “prize.” It diminishes the respect and reputation of the USPTO’s quasi-judicial role in the administration of justice. Justice should have a blind eye….to both the inventor and whether the invention fits a particular agenda.

Russian Patent Office Offers Inexpensive ISR for PCT Applicants

U.S. inventors and companies filing PCT patent applications may have a new opportunity to save money and obtain expanded search results for biotechnology.  Rospatent and the USPTO finally hammered out electronic document delivery issues and the long-awaited partnership between the two offices has finally gone online (USPTO Press Release).

See our full article and analysis here.

Accelerating Trademarks Applications

There are a number of procedures to accelerate trademark and patent applications before the U.S. Patent & Trademark Office. 

Trademarks may be accelerated by two methods. Consider the minimum requirements for post-registration maintenance:

If these deadlines are missed, there is no opportunity to revive the registration.   A new application must be filed.  However, accelerated examination may be requested with no extra fee under TMEP 702.02.  However, the application must be for the identical mark and the goods/services must be the same or narrower.

A second method (TMEP 1710) of accelerating trademarks requires a $100 fee and a showing of cause such as (1) threatened infringement; (2) pending litigation; (3) basis for securing foreign registration.  Insufficient reasons for accelerating under this basis are (1) forthcoming advertising campaign; (2) substantial investment; and/or (3) situations that apply to a substantial number of applicants.

China Joins PPH

WASHINGTON – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu, announced the start of the Paris Route and PCT Patent Prosecution Highway (PPH) pilot programs beginning on December 1, 2011. 

PPH will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country.  Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

Full Press Release.

Electronic Terminal Disclaimer

The United States Patent and Trademark Office announced the beta release of eTerminal Disclaimer in EFS-Web which permits the automatic filing and grant of a terminal disclaimer in a patent application. The new eTerminal Disclaimer provides applicants with many advantages and promotes greater efficiency in the patent examination process. This web-based eTerminal Disclaimer can be filled out completely online through web-screens and no EFS-Web fillable forms are required. eTerminal Disclaimers are auto-processed and approved immediately upon submission if the request meets all of the requirements.

Fees must be paid immediately which will then provide users more financial flexibility. A paper filed Terminal Disclaimer requires a fee but does not guarantee a Terminal Disclaimer approval. Each eTerminal Disclaimer filed requires a single terminal disclaimer fee, but can include up to 50 “reference applications” and 50 "prior patents".

During the beta period, eTerminal Disclaimers cannot be filed to a patent application that has yet to be docketed to an examiner. Applicants can check the Transaction History Tab of Public or Private PAIR to determine if their application has been docketed to an examiner. To file a terminal disclaimer to an undocketed application, please complete form SB/25 or SB/26 and submit the forms for manual review.

The Quick Start Guide for eTerminal Disclaimer is available at:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp

For assistance with filing an eTerminal Disclaimer, or to suggest improvements, please call the Patent Electronic Business Center at (866) 217-9197 (toll free) or send an email to EBC@uspto.gov