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Category: Business

Fee Changes at the Trademark Office

Piestewa Peak, Phoenix

In October, the Patent and Trademark Office raised most of its patent-related fees. Now, the other side of the building is raising its fees on trademark actions. The changes will become effective January 2, 2021. As with patent fees, these are the first trademark fee increases in almost three years, but they are being instituted in during a pandemic where many are struggling to meet their financial obligations.

The fee changes may reflect higher processing and examination costs for certain types and phases of applications, but they also incentivize certain behaviors. Fore example, the Office has long differentiated the fees between paper applications, electronic applications presenting customized information (“TEAS Standard” applications), and electronic applications adopting standardized or suggested wording (“TEAS Plus” applications). These changes continue that trend.

All fee changes can be viewed here.  Below I cover the fees for some of the more-commonly used actions.

Adjusted Fees

  • TEAS Standard trademark application filing fee increases from $275 to $350 per class
  • TEAS Plus trademark application filing fee increases from $225 to $250 per class
  • TEAS Plus applications that fail to meet the Plus standards will be assessed $100 penalties per class instead of $125 penalties per class
  • The fee to file a paper application increases from $600 to $750. Nobody should be filing paper applications anymore.
  • Petitions to revive an abandoned trademark application increase from $100 to $150
  • Ex Parte Appeals to the Board increase from $200 to $225 per class
  • Section 8 maintenance filing fee increase from $125 to $225 per class
  • Petition to cancel fee increases from $400 per class to $600 per class
  • Notice of opposition fee increases from $400 per class to $600 per class
  • 90-day extension requests for filing a notice of opposition increase from $100 to $200

New Fees

  • Deleting a class, or goods or services from a class, will now incur a $250 fee per class, if that deletion is made after a Section 8 filing is made. There is no fee if the deletion is made in a Section 7 filing before the Section 8 filing.
  • Filing a letter of protest against a third-party trademark application now incurs a $50 fee

 



Fee Changes at the Patent Office

Florida River, Colorado

The Patent Office has raised many of its fees.

The Office attempted to soften this fee increase by explaining that it is the first raise in almost three years, it nevertheless comes in the midst of a pandemic where many are struggling to meet their financial obligations. Larger companies may not be greatly affected, but smaller companies, start-ups (especially self-funded ones), and independent inventors are disproportionately impacted by these fee changes. It is somewhat disappointing to see Office continue with these changes despite the current economic situation of most Americans.

Nevertheless, the Patent Office is largely self-funded and budgeted, and it is not immune to rising operational costs. As a consequence of mandated internal reviews of fees, costs, and revenues, the Office determined that fee adjustments were necessary to adjust to increasing costs and to provide necessary resources for its internal operations. In setting fees, the Office attempts to not just cover its current costs but its projected costs for the next several years. Thus, the hike feels steep now because it is, in part, set to off-set future fees. Most fees increased by approximately 5 percent, though some increased by quite a bit more.

Below I cover the fees for some of the more-commonly used actions. There are a number of changes to fees that I have not included here (more info is available at this link).  I’ve quoted the below fees at the small entity rate.

Adjusted Fees

  • Provisional Application Filing Fees increased from $140 to $150
  • Utility Patent Application Filing Fees increased from $785 to $830
  • Track One Requests for Expedited Examination increased from $2,000 to $2,100
  • Rocket Docket requests increased from $450 to $800
  • Design Patent Application Filing Fees increased from $480 to $510
  • International Application Transmittal Fees increased from $120 to $130
  • International Application Search Fees increased from $1,040 to $1,090
  • International Preliminary Examination Fees increased from $300 to $320
  • Extensions for Responses increased $10 to $80, depending on the length of extension
  • Terminal Disclaimers increased from $160 to $170
  • RCE fees increased from $650 to $680
  • Notice of Appeals increased from $400 to $420
  • Petitions to Revive Abandoned Applications increased from $1000 to $1050
  • Utility Patent Issue fees increased from $500 to $600
  • Design Patent Issue fees increased from $350 to $370
  • 3.5 Year Maintenance Fees increased from $800 to $1,000
  • 7.5 Year Maintenance Fees increased from $1,800 to $1,880
  • 11.5 Year Maintenance Fees increased from $3,700 to $3,850
  • Maintenance Fee Surcharge (for late maintenance payments) increased from $80 to $250

New Fees

  • Non-DOCX Filing Surcharge is a new fee at $200. The Office is beginning to require patent application documents be filed in DOCX format. This surcharge will not go into effect into 2022, however.

Discontinued Fees

  • The Office dropped fees for a bunch of actions and reports that are very infrequently used.


Always Stay Humble And Kind

Sometimes a prospective client calls in need of help prosecuting his or her patent application. Sometimes, the caller informs me that they wrote the patent application themself (a “pro se applicant”), that it has been rejected, and that they now want to consult an attorney.  I get about ten of these calls a month.  The caller usually wants me to write a response to the Patent Office.

Overend Park, Durango, Colorado

I do responsive work all the time; it is called patent application prosecution. I know pretty well what my average cost is for this kind of work, and I have found that, unfortunately, it often exceeds a pro se applicant’s budget. I usually try to explain the likely cost of such a response, and I try to explain why the costs can be so high.  In my experience, patent applications written by inventors require far more work than ones written by attorneys; one response is usually not sufficient – the first response is succeeded by one or more rejections.  Unfortunately, there usually aren’t ways to fix all the issues in a pro se application in one blow.

There are a lot of rules and pitfalls that an inventor doesn’t know about and will usually run afoul of when writing an application, and these then have to be fixed if the application has any hope of maturing into a patent. For that reason primarily, I don’t take on clients who have written their own applications anymore. I do caution them, however, that it will be difficult and expensive to get a patent, and so they should make sure that attorney they do hire discloses this to them.

I am fairly direct when I deal with clients. I always try to set expectations from the outset, because I don’t want them to be surprised with an outcome later on.  Sometimes, my directness is too blunt, and is interpreted as rudeness.  My wife likes to remind me of this.  I’m always trying to improve and better appreciate and understand each client and their unique position. While I will always tell clients only the truth, I am reconsidering my manner of delivering that truth.



Podcast: Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Windy Point on Mt. Lemmon

Aaron Moncur of Pipeline Design & Engineering recently interviewed me for his podcast Being an Engineer.  We talk a little about my early engineering time, but mostly about the transition from engineering to law and the basics of patent protection. Please have a listen:

Being an Engineer – First to File, Secrecy & Fast-Tracking Patents

Pipeline Design and Engineering designs elegant products for its customers.  They are experts in the fields of mechanical engineering & product development.  Aaron hosts the Being an Engineer podcast as a forum for engineers and those who work with them to share and learn about how others solve problems engineers face each day, and about the delightful idiosyncrasies that make engineers breed unique.  Aaron graced me in as a past engineer.  I share some ideas about when you may think it is time to jump the engineering ship, how much fun Laplace Transforms can be, how to protect a new soda bottle design, and why the Patent Office expedites patent applications for those over 65.

 



Is the U.S. Patent and Trademark Office Affected by the 2018 Government Shutdown?

The U.S. Patent and Trademark Office is not affected by the shutdown which has closed many government offices and agencies after Congress failed to pass a funding resolution.  Navigate to www.uspto.gov and you’ll be greeted by the banner announcing the Office is still open.

While other agencies are dependent upon immediate funding for their continuance, the USPTO maintains a reserve account of funds. The funds allow the Office to continue operating at nearly full capacity for at least a few weeks. These are collected, in part, from the applicants that have filed and prosecuted patent and trademark applications in the United States in previous years.

In December 2017, the Commerce Department issued a shutdown plan which noted: “The USPTO anticipates that it will have sufficient funds from other than current year appropriations to continue full operations for a brief period after a general lapse in appropriations commences. Therefore, all employees of the USPTO will be excepted for such period following a lapse in appropriations.” Commerce Secretary Wilbur Ross emailed USPTO employees on Friday, January 19, 2018 directing them to continue reporting for work until they were notified otherwise.

Collections from previous years enable the USPTO to operate despite furloughs at other federal agencies. The USPTO is well-funded; in fact, it generates far more money in fees than it consumes in expenses. However, fee diversion moves much of its revenue to other governmental agencies. The 2011 America Invents Act allows the Office to trap some of those fees into the reserve account before they can be diverted outside the agency.

Should the shutdown continue and the reserve funds be consumed, employees would begin to be furloughed. A small staff would nevertheless remain to accept new applications and to maintain the IT infrastructure. The electronic filing systems through which most patent attorneys and agents correspond with the USPTO would continue to operate, allowing filing dates to be established and deadlines to be met. The shutdown does close down the File Repository Warehouse, where the paper files for older patent applications are maintained. That warehouse is not operated by the USPTO and so is affected by the shutdown. As such, requests for copies of paper files (which normally take 1-4 weeks for production) will likely be delayed. This would not affect electronic files, of course.

In 2013, the government shut down lasted for two and a half weeks. The USPTO stayed open then, too, using the same reserve fund.



Intellectual Property Lawsuit Between Google/Waymo and Uber

Trial is moving forward in the Google/Waymo v. Uber intellectual property case. It has been thought that this lawsuit might help crown an early king of the self-driving vehicle industry, which Uber describes as potentially “the most lucrative business in history.”

In February 2017, Google spin-off Waymo sued Uber for misappropriation of trade secrets and patent infringement, stemming from the actions of former Google employee Anthony Levandowski. Levandowski was a high-level engineer in Google’s self-driving car division. He downloaded nearly 10GB of Google’s data – over 14,000 files – a few weeks before leaving Google to start his own company in January 2016. His company, Otto, was focused on autonomous truck technology. Just six months after he started the company, Uber acquired it for $680 million, and Levandowski was named to head Uber’s self-driving car work.

Not long after, one of Uber’s supplies mistakenly emailed information to Waymo about a circuit board Uber had ordered. Waymo looked at the board, thought it was a little too similar to the technology it had been working on while Levandowski was part of its team, and filed suit for a preliminary injunction against Uber.

A preliminary injunction is, essentially, a temporary restraining order. It is an order from a court temporarily preventing an entity from taking certain actions until more evidence can be gathered and a lawsuit filed (or not filed) or settlement reached. Here, Waymo requested that Uber’s work on self-driving cars be halted until Waymo could figure out possible damages and how to proceed next. Waymo won that injunction, showing a likelihood of prevailing in an eventual lawsuit and the danger of irreparable harm.

The case revolves primarily around LiDAR, which is a laser-based radar technology that allows a computer to map or “see” an environment. LiDAR has been used extensively for decades, but has recently come to prominence with autonomous vehicle developments. The trade secrets and patent claims revolve around this technology. The trade secrets claims rest, in part, on things like the designs for the printed circuit boards that Waymo developed, the position and orientation of the diodes and photodetectors on the boards, the selection and placement of optical elements for modifying LiDAR laser beams, and the laser pulse rate in the LiDAR system to create a precise resolution profile of objects in the environment. The patents (U.S. Patent Nos. 8,836,922, 9,368,273, and 9,086,273) also cover LiDAR technology. For instance, the ‘922 patent claims protection in a LiDAR device including a rotatable housing including transmit blocks and receive blocks, with a number of transmitters and detectors in them, such that light is emitted from the device and return light is gathered and collimated, or aligned, and focused back into the detectors. This technology assists in three-dimensional mapping of the environment.

Uber has several different types of LiDAR devices, and the patent claims reflected actions against them. However, in July, most of the patent claims were dropped after the judge encouraged the parties to narrow the issues, and after Uber stopped work on its “so-called” Spider technology on one of the LiDAR devices.

Last week, Waymo’s case grew more tenuous with the release of a due diligence report Uber commissioned before it acquired Otto. Although report includes dark details like Levandowski’s deletion of files and then destruction of the hard drives holding those files. Levandwoski tried to talk with Uber CEO Travis Kalanick about the hard drives, but Kalanick put up a brick wall to the discussion. Together with the report, documents regarding Uber’s designs were released, and even the judge noted that “the product is dissimilar. In many ways, it may be a vast improvement of what was going on at Waymo. So [Waymo has] come up a little short there.” In light of the documents release, trial, set to begin yesterday, has been postponed now to early December.



Not Invented Here!

Inventors often dream big.  Nothing wrong with that – progress is made by dreamers.  Dream right, though; not everyone can take an idea, turn it into a great product or service, and sell it to someone.  There are a lot of reasons why a great idea might never buy an inventor his own private island in the South Pacific.  Just one of them is called the Not Invented Here syndrome.

Not Invented Here, or NIH, refers to a cultural resistance to ideas or products that were developed outside that culture.  There are a number of reasons it may be present.

Some companies follow NIH because they are worried about compatibility issues.  An outsider will almost certainly lack total knowledge about a company’s product.  If that lack of knowledge means the product won’t function properly, problems will arise.  Thus, bringing in a solution from the outside can mean a lot of reverse-engineering, debugging, and problem fixing, while if the product had been developed internally, it is possible those problems could have been avoided.

For some, NIH is based in hubris.  “We’re the best, and we can do it better than you.”  A company that consistently chooses to re-invent the wheel may do so because it feels it can make and improve the wheel, simply because its people are better and smarter than the rest, and something made by someone outside the company is likely inferior.

Other companies adopt NIH polices because they’re worried about patent litigation.  I’ve been involved in lawsuits where two companies met to discuss a merger or patent purchase, disclosures were made to each other, the deal fell apart, and then the patent-holding company sued the other for patent infringement when the other later released a product very similar to the patent.  This is a common occurrence, and one that many companies try to avoid.  It is symptomatic of the left hand not knowing what the right is doing.  In large corporations, it is entirely possible that R&D is working on a product while deal markers are considering acquiring an entity outside the company that makes a very similar product, but the deal makers simply don’t know every scheme that R&D is working on.  One approach that large companies lacking the ability to track information like this will therefore take is to simply establish a policy that no outside information comes in.  They simply don’t entertain outsiders.

NIH is a problem for small inventors because it can mean they can’t get their foot in the door.  It can force an inventor to take his idea to market and show that it can command a powerful presence.  Hopefully, the NIH companies then come to the inventor.



Who owns my logo? The graphic design company that developed it or me?

You may have hired a graphic artist or agency to develop your company’s logo. Do you know who owns the rights in it?

There are two main types of intellectual property rights that can reside in a logo: copyright and trademark. Copyright protects an original work of authorship fixed in tangible means of expression; typically, a creative or artistic piece that is drawn, painted, saved, or otherwise recorded. Trademark rights protect the use of a symbol or identifier in connection with the sale or advertisement of a product or service.

Copyright usually vests in the person that created the work. However, when someone is hired by another to develop a work, the copyright may be owned by the employer or hiring party. Generally, in standard salary-based employment relationships, the employer will own copyright in works produced by the employee. But a graphic artist hired to develop a logo isn’t a standard employee – he or she is an independent contractor. The fact that the work is being produced expressly for the company’s use as an emblem for its identity likely weighs toward finding that the company is the owner of the copyright in the work, but it doesn’t provide a guarantee. A contract should be in place between the company and the graphic artist defining the relationship, and it should also cover the copyright in the work(s) produced.

Why is copyright a concern? Technically, if it were determined that the graphic artist retained ownership in the copyright, then the company would be infringing that copyright each time it used the work as its logo (absent a licensing agreement). Ouch. Or, if the company wanted to make a similar logo with a few slight differences, that newer logo could be considered an infringing derivative work of the original. Losing control of the copyright effectively equates to a loss of the ability to use and develop the logo.

Trademark rights are more clear-cut. Trademark rights arise only where there is use. While the graphic artist may have developed the logo, she did not use it in a trademark sense; in other words, she did not advertise a product with the mark affixed or sell an item that carried the logo. She has merely created the mark, and creation alone does not spawn trademark rights. Therefore, trademark concerns shouldn’t be too problematic when using a graphic artist to develop a logo.

Nevertheless, make sure that the contract with the graphic artist deals with trademark rights. There isn’t a reason for the graphic artist to hold onto any copyright or trademark rights that might arise in the work she creates. Her business isn’t holding copyright and trademark lawsuits over people’s heads; it is helping people develop creative and effective logos for their businesses.



Past Future of Computing

With the D: All Things Digital conference going on right now, there is a great video posted over on Kara Swisher’s digital column: an interview of Bill Gates and Steve Jobs at the D5 conference back in 2007.  Interesting to look at future projections from the past.



Why register a federal trademark?

A trademark registered with the federal government carries a number of advantages over one that has not been registered.

First, only federally registered trademarks can be enforced in federal court – so if someone is using your mark illegally, you can use the federal courts and federal law to get them to stop.

Second, if you’re successful in such a lawsuit, you may be able to get damages for their use of your trademark.

Third, if you register your mark federally, you are presumed to have used it across the entire nation and thus are presumed to have superior rights over anyone else that starts to use the mark after you.