Smith Hopen IP Weblog

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.

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

A Chilly Veteran’s Day on the Water

Smith & Hopen attorneys took to the water this Veteran’s Day heading south from Home Port Marina to Clearwater Beach.  Although the high was only 66 degrees fair weather and great wind made for a rousing sail.

Smith & Hopen Sailing Day - Veteran's Day 2011 VIEW SLIDE SHOW DOWNLOAD ALL

University of South Florida Spinnaker Sail

That’s one great looking boat :-)

Walk to Defeat ALS

Many thanks to our firm sponsors that helped us walk to defeat ALS yesterday.

Walk to Defeat ALS - Smith & Hopen Team VIEW SLIDE SHOW DOWNLOAD ALL

Sanford’s Dangerous Appeal to the Supreme Court

The Supreme Court on November 1, 2010, advised that it will review a Federal Circuit decision that a previous assignment of a university inventor to a private company trumped an employment agreement with the university and the university’s rights in the invention under the Bayh-Dole Act (Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., U.S., No. 09-1159, 11/1/2010).  Stanford's petition to the Supreme Court is available here.

In the author’s view, this is a dangerous issue to give to the U.S. Supreme Court.  Read why…Full Article Here.

PTO’s 2010-2015 Strategic Plan–Details versus Rhetoric

The United States Patent & Trademark Office (USPTO) released its 2010-2015 Strategic Plan.  Separating the rhetoric from real changes is not always easy.  There are plenty of statements about diversity, cooperation, outreach and the like.  All those objectives are important.  However, what meaningful changes can patent practitioners, inventors, universities and companies expect?

The USPTO identified a number of well-known challenges to operation:

• Funding authority to support agency performance objectives
• The volume of applications
• Rapid advances in technologies
• Necessity for global cooperation and protection
• Antiquated and decaying IT infrastructure
• Hiring, retaining, and training examiners
• Balancing competing objectives
• The need for greater transparency in defining accountability
• metrics for agency objectives and performance.

Now for the numbers.  The objectives by 2014-2015:

• Patent pendency time reduced to 10 months for a first office action.
• Trademark pendency times reduced to 2.5 and 3.5 months for a first office action.

To put these numbers in perspective, the expected average wait for a first office action this will is forecasted to be 25.4 months.  Reducing that to the goal of 10 months would be dramatic.

New Hiring of Patent Examiners

The USPTO is seeking to hire 1,000 new patent examiners in 2011 and 2012.  Whereas USPTO’s previous hiring has been focused on scientific background and experience,this new model places more emphasis on recruiting candidates with significant IP experience, such as registered patent attorneys and patent agents, former examiners, as well as skilled technologists having experience with the USPTO as inventors.

Telecommuting

The USPTO will develop a nationwide workforce using teleworker other appropriate measures that will allow them to hire experienced IP professionals interested in joining the USPTO, but who do not want to relocate to the Washington, D.C. region.  This is popular at the USPTO and we frequently have both our attorneys and the patent examiners "meeting" at the USPTO office in Arlington for interviews.  In one of my last interviews, the patent examiner took the train from his home in Boston.

Fee Increases

The USPTO wants more authority to set fees noting that the U.S. patent is "cheap" in comparison to other countries:

XML-Based Patent Applications

The USPTO wants to move patent applications to an XML standard.  In this context, it will simply mean that the document will identify the context of the sections (i.e., this is the invention title, this is the invention summary, these are the invention claims, etc...).  It is an ideal concept for streamlining the process.  However, it was attempted several years previously under the ABX system and was a disaster.  We would often spend more time getting the format in compliance than drafting a simple provisional patent application.

Other Objectives

The full report can be viewed here and includes a number of other sensible ideas.  Cloud computing, revisions to the examiner count system and other long-needed changes to USPTO operations are anticipated.  While no informed practitioner would agree with every objective proposed by Director Kappos, the direction appears to be positive and at least carefully considered.

Smith & Hopen Supports Research and Innovation at USF

The University of South Florida celebrated the work of its faculty, staff and student researchers, scientists, scholars and inventors during ResearchOne, USF's third annual research week, sponsored by the Office of Research & Innovation, Oct. 11-15.

This year's theme recognized the tradition of excellence the USF System has established in research, innovation and creativity, across all colleges and disciplines, and showcased a wide range of activities, including speakers, poster presentations, displays, lab tours, award ceremonies and more.

We were honored and grateful to play a part in this worthy event.

Smith & Hopen team members Kari McDermott, Robert Varkonyi and Michele Lawson attend ResearchOne.

Anton Hopen is inducted into the National Academy of Inventors as an honorary member.

2010 STEM Educator Workshop at Clearwater Beach

I’m pleased that USF, FLATE and many others have come together to hold a workshop to teach young children about innovation.  Workshop details:

Saturday, November 6th, 2010, 11 AM to 2 PM
Clearwater Beach Marriott on Sand Key
1201 Gulf Boulevard, Clearwater Beach, Florida 33767  (PDF Event Flyer)

The third annual USF Young Innovator Cup judges hundreds of K-12 student invention submissions and selects 15 finalists for a live competition at MOSI every February 11th (Thomas Edison’s birthday). This workshop gives STEM educators new ideas and resources to foster creativity and entrepreneurship in their students. Participation in the USF Young Innovator Cup is an excellent student/class project that engages both student and educator to think “outside-the-box.” All participants receive awards and grand prize winners (and their schools) receive thousands of dollars in cash prizes.  The workshop will take place at the Marriott at Clearwater Beach overlooking beautiful Clearwater Bay and steps from the beach. Lunch will be provided to attendees. Please RSVP by November. 1, 2010 with Kari McDermott at 813-925-8505 or email info@innovationexpress.org. Free for Educators in: Hillsborough, Pinellas, Pasco, Hernando, Citrus, Manatee, Sarasota and Polk Counties

Workshop Agenda

• 11:00 to 11:30 AM Keynote introduction
• 11:30 to 12:00 AM Introduction to the USF Young Innovator Competition and Slideshow of Past Events.
• 12:00 to 12:30 AM Lunch and Networking
• 12:30 to 1:00 PM Prior grand prize winners present their inventions.
• 1:00 to 2:00 PM Moderated session—integrating STEM with the USF Young Innovator Competition.

Sponsored By:

“Faster” e-Copyright Filings now take Two Years

Believe it or not another patent firm was copying our marketing materials so when we developed a new PCT process flowchart we filed a copyright deposit on the design July 14, 2008.  Last week we finally received the copyright certificate by mail….well over two years later.  Prior to the electronic filing system copyright applications usually took about eight (8) months to complete.  Hopefully we will see a reduction in copyright application pendency soon.

The good news is that the “effective date” of the copyright deposit is the date when it was filed.