• Find the point of novelty
  • Broadcast your rights
  • Turn ideas into assets
  • Drive forward
  • Draw the future

Category: Patent

New Specimen Rules in Trademark Applications

On Friday, February 15th, a number of new rules governing trademark applications went into effect.

All trademark applications, and all correspondence in trademark applications and registrations, must now be filed electronically expect in limited circumstances.  The Trademark Office had been pushing stakeholders in this direction for years, most recently by significantly raising the cost of paper filing versus electronic filing.  However, now nearly all communications with the Trademark Office must be through the TEAS filing system or email (in certain limited circumstances).

In situations where the electronic filing system is unavailable (the Patent Office filing system frequently does down; the Trademark Office’s system does so less often), then submissions may be made via fax.  Yes, fax.

As part of this change, the Trademark Office proposed that applicant’s personal email addresses would have to be submitted and would be made public.  While we have always placed our firm email address on trademark applications as the official correspondence address for communications, this change is significant.  It spurred concern from many practitioners, who were worried that their clients would be spammed to no end.  Before last week, applicants receive spam paper solicitations, often with false information, fake deadlines, and large fee requests.  However, publishing a personal email address for each applicant would open the doors to widespread spamming.  So last week, I joined 198 other trademark attorneys in sending a letter to the Trademark Office explaining the consequences of this rule.  Thankfully, the Trademark Office rescinded this rule change on Thursday.  However, there has been talk since then that other systems at the Trademark Office are nevertheless requiring applicant email info.

The rule change has also affected specimens in trademark applications.  For specimens showing use of the mark with goods, the specimen must show use on the goods, on packaging for the goods, on labels or tags affixed to the goods, or on displays associated with the goods.  Previously, one could submit a photograph of a label or tag in isolation; that will only work now if the tag clearly shows the mark in actual use in commerce, such as by showing information like net weight, volume, UPC bar codes, ingredients.  Better practice is to simply show the goods with the tag of label affixed thereto.  As before, the specimen must show actual use; printer’s proofs, artist renderings, computer or digital illustrations, and similar mockups will still not be sufficient.  For screengrabs or screenshots, specimens must now show the URL and print date.

It is possible that these rules will change.  I expect the Trademark Office to issue a revised rule regarding applicant email addresses soon, and hopefully it will maintain the privacy of that information.  Check back for updates.



Attorney Fees not Available in Appeals from Patent Office

The Supreme Court has recently ruled, in Peter v. Nantkwest, Inc., that in appeals from proceedings at the Patent Office, the patent applicant will not be responsible for the fees of the Patent Officer’s attorneys and paralegals. This decision provides clarity in an important factor when considering how to seek review of a patent application.

A patent application is initially filed with the Patent Office. Generally, all applications are rejected, and the process of receiving and responding to rejections is called prosecution. Prosecution can take quite a bit of time, but in certain cases, an applicant can appeal an Examiner’s decision in prosecution to the Patent Trial and Appeal Board. If the Board finds against the applicant, the applicant has the opportunity to request further review of the decision, either to District Court or the Federal Circuit. When this occurs, the applicant hires an attorney on its behalf, and the Patent Office is represented by in-house attorneys who argue its case against the applicant.

Recently, a district court held that an applicant, after losing its appeal, would have to pay the attorney and paralegal fees incurred by the Patent Office. This amounted to about $80,000. The applicant, not too excited, appealed that decision to the Federal Circuit and then to the Supreme Court.

The Supreme Court denied the Patent Office, finding that it should follow the “American Rule,” which has litigants bearing their own costs whether they win or lose. While patent statutes do allow the Patent Office to recover some expenses – expert costs, travel costs, docketing fees, for example – that did not extend so far as to cover attorney and paralegal fees.

Of course, attorney’s fees can be substantial in an appeal, and so the potential imposition of those fees could present a chilling effect on the pursuit of a patent grant. The Supreme Court recognized this, noting that such a rule would limit access to methods of redress from unfavorable Patent Office decisions.



The Patent Office is Not (Yet) Affected by the Government Shutdown

Nearly a month into the government shutdown, the United States Patent and Trademark Office continues to run at full capacity.  The Patent Office is somewhat self-funded, in that the fees that applicants pay to file and prosecute patent applications are used to pay examiners and other staff.  However, the Patent Office is not allowed to spend all of that money willy-nilly; its budget is set by Congress, and the Office is permitted to spend up to that budget limit assuming sufficient fees are collected. 

In past years, sufficient fees have been collected, and with great foresight, the Patent Office has funded an operating reserve account with some of those fees.  While the Patent Office has a separate reserve fund which is supplied by fees paid in excess of the budget, the money into the operating reserve represent fees siphoned from the budget, perhaps the delta between the budget and the operating costs of the PTO.  And, while the reserve fund is empty, the operating reserve has about $300 million.  This is enough to keep the Patent Office running for a short time, about five weeks.

The operating reserve is not exhausted, but is being steadily consumed with this shutdown.  As it drains further, “non-essential” activities will be suspended.  Examiners will likely pause their reviews of applications.  However, the filing systems – and the staff necessary to support them – will remain online so that application filing deadlines can continue to be met.  It is not clear what will happen if the shutdown continues to the point where there aren’t even fees to keep the filing systems up….



Patent Office Transitions to MyUSPTO Login

For many years, registered patent attorneys, patent agents, and some pro se inventors have been able to log into a secure portal at the Patent Office website to file and monitor patent applications. The portal is protected by both a password and a digital key that requires a lengthy certification process with the Patent Office, so it has mostly just been used by attorneys and agents.

This past month, the Patent Office introduced MyUSPTO.gov, which it billed as a “new, simpler, and safer USPTO.gov account” through which you can access patent and trademark files, monitor a docket, create watches to keep track of competitive patents or your own, and to access the search databases for both patents and trademarks. It is an attempt to unify patent and trademark records, as well as the filing and monitoring systems previously available through the Patent Office only.

Practitioners were asked to link their old portal accounts to their new MyUSPTO.gov accounts by the end of October. Fearing that the old portal would become inaccessible come November, I did this at the beginning of October. What I’ve learned is that while MyUSPTO.gov does offer all the things mentioned above, it also additionally requires two-step verification each day, after completing a prolonged CAPTCHA. This is annoying and unnecessary. I’m not aware of any other provider that requires daily two-step verification; even WIPO doesn’t have it.

As a result, I haven’t been using the MyUSPTO.gov login at all. All of the old services are accessible, and more easily accessible than MyUSPTO.gov. The USPTO is reporting that the digital keys will be officially retired in December, and that a new Patent Center software suite will be rolled out in 2020. As long as the Office continues to provide the old portal login system, I will probably use it, unless they ease this two-step requirement.



How to Reinstate An Expired Patent

This article covers reinstatement of an expired patent – not revival of an abandoned patent application. They are very different, and I’ve previously written about the reviving an abandoned patent application.

After a patent issues, regular maintenance fees must be paid to keep it alive. At the each of 3.5 year mark, 7.5 year mark, and 11.5 year mark, a six-month window opens in which the patent owner can pay the required maintenance fees. The fees are different in each window, and they increase over time. If the fees are timely paid, the patent will remain in force until the next window. If the fees are not paid, however, the patent will expire.

As such, it is crucial that patent owners create reminders for these windows. They should probably create reminders on two separate calendar systems, as deadlines years in the future can be difficult to track.

Nevertheless, sometimes a maintenance fee is missed, and the patent does expire. There is a limited avenue to bring the patent back to life, however. A petition can be filed with the Patent Office requesting the delayed payment of a maintenance fee, if the delay was unintentional.

Any petition to accept an unintentionally delayed payment of a maintenance fee must include the missed maintenance fee, a petition fee, a statement that the delay in payment of the maintenance fee was unintentional. Sometimes, with long delays, the Patent Office will request require additional information regarding the delay, to determine whether it was truly unintentional or not.

If multiple maintenance fees are missed, it is possible to still reinstate the patent. However, each maintenance fee must be paid along with the petition fee, and this could be quite expensive. At the time of this writing, the petition fee only is $2,000 for large entities and $1,000 for small entities. And, if multiple maintenance fees have been missed, the delay is likely quite long, and the Patent Office will almost certainly inquire about the delay.



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.



Patent Prosecution Highway to Expedite Examination of a Patent Application

The Patent Prosecution Highway, or “PPH,” speeds up the examination process for patent applications filed in participating intellectual property offices around the world. In most countries, patent prosecution can take quite a long time, on the order of 1-3 years or more.

However, under the Patent Prosecution Highway, participating patent offices have agreed that when an applicant receives a final ruling from the patent office of one country, and that office determines that at least one claim is allowed, the applicant may then request fast tracked examination of corresponding claims in a corresponding patent application that is pending in the patent office of another country. For example, if you file a US patent application and a Chinese patent application, and the Chinese patent application receives favorable examination first, indicating that four of the claims are allowed, you can expedite examination of those four claims in the US application.

PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

There is no fee under the PPH programs, and often, applications advanced under the Patent Prosecution Highway receive favorable examination. This creates considerable cost and time savings in what is otherwise a very expensive multi-national filing.

Many countries or bodies participate in the Patent Prosecution Highway and have reciprocity with the US. Most notably, Australia, the European Patent Office, Canada, China, Japan, Germany, Korea, and the UK all participate. Further, the results of a favorable written opinion or examination of a PCT application can be used as the basis for a PPH request.



Utility and Design Patent Issuances Up in 2017

Nearly every year for the past decade, the Patent Offices have issued more utility and design patents.  2017 was no exception.  While former Director Kappo’s guiding hand has often been praised for increasing patent quality, the patent numbers during his oversight improved as well.  The Office was without an official director during most of Trump’s first year and is now headed by acting Director Joseph Matal.  Despite the uncertainty, in 2017, there were approximately 5% more issued utility patents and roughly 10% more issued design patents than in 2016.  Charts from Patently-O can be seen here.



Making Corrections to an International Patent Application under PCT Rule 91

A PCT application is a special tool created by international treaty which lets applicants secure international patent protection. It does not create an “international patent,” but it does establish a foundation from which patent applications may later be filed all around the world. Most countries in the world subscribe to the PCT treaty, with a few exceptions (Taiwan, notably). One advantage of a PCT application is that it allows an application to be centrally searched, examined, amended, and if needed, corrected, rather than having to take those steps in X countries at X times the cost.

Making amendments and corrections one time, to one application, is much easier and cheaper than making them several times for several applications (and usually through several foreign associates). Changes to the claims can be made in various ways, but normally through Article 19 or Article 34 amendments, which have specific timing and formatting requirements and also involve payment of a submission fee.

If the changes are very minor, they could potentially be submitted through a Rule 91 Rectification requests. These requests are reserved for “obvious mistakes,” and the bar for such mistakes is quite high. However, there is no fee involved with lodging a request under Rule 91, and so it can provide an attractive alternative to making an amendment under Article 34, which has about a $400 fee. Rule 91 requests are limited to changes that are so obvious that is becomes clear that “nothing else could have been intended than the proposed rectification.” After speaking with PCT Office specialists who handle these requests, I’ve learned that the requests are granted for things like misspellings and other typographical errors, like capitalization. However, even in some circumstances, capitalization of may considered to give that word a special meaning, and some examiner may refuse such requests. Incorrectly identifying the parts of your invention by typing the wrong reference character (widget 4 instead of widget 44, for example) is not an obvious error, even when the part is correctly identified in every other instance.

If in doubt about the acceptability of the correction, a Rule 91 request can be filed. It may be rejected, or refused, and then an amendment under Article 19 or 34 will have to be filed.



Prompt Information Disclosure Statements

Applicants and agents appearing before the Patent Office are obligated by a duty of candor and disclosure to the Office. This means, when you file a patent application, you must continually update the contents of that application with anything that may be or become relevant to patentability. This most frequently arises in the form of submitting Information Disclosure Statement, or an IDS. An IDS is often submitted with the initial filing of an application; it will disclose a list of patents, patent application publications, foreign references, and non-patent literature that the applicant was aware of before filing, usually either because of a patentability search, pre-filing due diligence, or knowledge and experience in the industry. However, the duty to disclose relevant prior art continues during prosecution, and applicants will generally disclose prior art that surfaces. Failing to disclose does expose a patent that eventually issues from the application to the risk of invalidation.

IDSs submitted during prosecution are often spurred by parallel foreign prosecution. Because the US Patent Office can be quite slow in prosecution, foreign offices frequently will produce relevant prior art before the US. If a PCT application is filed, the International Searching Authority will usually provide its search report before the US Patent Office has begun examination. The results of such a search report should be disclosed in the US. Some foreign offices move very quickly, and examination results there should also be disclosed. This disclosure duty is not limited to prior art revealed before US examination; it continues throughout prosecution. And there are timing requirements for disclosure. The results of foreign offices should be disclosed within 3 months of production.