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Category: Patent

Coronavirus: US Patent and Trademark Office Extends Deadlines Further

Drive Back from Solitude Ski Resort

The CARES Act gave the US Patent and Trademark Office the authority to toll, waive, adjust, or modify deadlines related to patent and trademark owners in light of the coronavirus pandemic.  At the end of March, the USPTO announced it would do just that.  As I summarized here, certain deadlines falling between March 27 and April 30 would receive 30-day extensions when accompanied by a statement regarding the effect of the pandemic on the deadline.

The Office has now modified that deadline extension.  Yesterday, the USPTO announced that deadlines falling between March 27 and May 31 will now be extended up to and including June 1, provided that the filing or fee payment is accompanied by a specific statement that the delay was due to the COVID-19 outbreak.

Please note – this is not an additional extension.  It does not grant another 10, 15, or 30 days to file.  Rather, it simply says that eligible deadlines can now be extended (under the right circumstances) up to a specific day – June 1.  If your deadline was originally due March 27, this gives you two additional months.  But, if your deadline fell on May 31, this only gives you a single extra day.  It s unclear at this time why the Office chose to create an extension running to a specific day rather than an extension of all deadlines by X number of days, as it previously had.

It is possible that this extension allowance will be modified again.



Vagaries of Design Patent Practice

Sunset in Phoenix

Design patents protect the ornamental and aesthetic aspects of a functional item.  Whereas a utility patent protects the parts of the item, the way its parts cooperatively move or operate together, how they are structured and arranged, etc., design patent protection how that item actually looks.  They do this by presenting drawings of the item and then claiming protection in the design shown in those drawings.  As such, the bulk of a design patent application is the drawings, and there is relatively little written text accompanying those drawings.

Because of this, design patents can often seem to be simple.  But there is a subtlety in each application that requires anticipating the prior art, the course of examination, and the need for expansion of design protection in the future.  Complicating this subtlety is the relative scarcity of practical information regarding design patents.  This is a systemic problem, created by a few factors.

First, there just aren’t many design patents out there.  Pretty consistently, less than 10% of the patents issued each year are design patents.  In recent years, that is about 30,000 issued design patents.  About 40 to 45,000 are filed each year, so very roughly, we can say that a third of filed design applications go abandoned (design apps generally have a pendency of about 6-18 months, meaning they are likely to issue in the same or next calendar year, if they issue at all).

Not only are practitioners not filing a lot of design patents, but the ones that are filed don’t provide much feedback.  Design patent applications are never published, so the 15,000 or so applications that abandon each year do so in secrecy.  This is a tremendous loss of learning opportunity from these abandoned applications.  For comparison, around 600,000 utility patent applications are filed each year and about 300,000 issue; though utility patents have a much longer pendency than design patents, we might safely say that at least one hundred thousand utility patent applications are abandoned each year.  A majority of these are published, and the file histories can be reviewed to see what went wrong.  From that, patent attorneys can determine how not to write and prosecute patent applications.  But because abandoned design patent applications are not publicly available, we can’t study what goes wrong in them.  Instead, we have to rely on what went right.  Moreover, it is not uncommon for a well-written design patent application to receive a first action allowance – in other words, no rejections.  While this is a good thing, it does not help expand a practitioner’s understandings to the edges of design patent practice – could more have been claimed, could the claims have been broader, would there have been a reason to claim differently or present different drawings or more drawings or several embodiments, etc.?  Answers to questions like these are just not available except to perhaps – perhaps – the largest entities with tremendous legacy knowledge and systems developed to pass that knowledge to its team (and almost certainly a large team) of lawyers who may be spread and isolated across different and often competing large law firms.

The Manual of Patent Examining Procedure – the Patent Office’s guidebook for reviewing patent applications – is mostly written to utility patents.  Often decried as a manual for Examiners to craft rejections against patent applications rather than a guidebook for level prosecution (defining the limits of rejections and response arguments), the MPEP pays scant little attention to design patent applications.  This means that examination consistency suffers among Examiners and that practitioner’s counsel to clients becomes more nebulous.  Design applications are then written from a few perspectives: not just based on objective rules in the MPEP and case law (few design cases are ever appealed), but the particular client’s tolerance to risk and cost involved in preparing and arguing an application with an Examiner who may or may not read the rules in the same manner as the last Examiner, or even as they did six months ago.  Principled and rule-based arguments that may win in the well-defined arena of utility patent prosecution may descend into pleading negotiation with an Examiner in light of a refusal in a design patent application.

 

 



CORONAVIRUS: Patent Frequently Asked Questions

Lost Dutchman State Park during Coronavirus Outbreak

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The Patent Office is allowing certain filing and fee deadlines to be extended due to the coronavirus pandemic in the US.  Below are common questions about this change:

Question 1: Coronavirus has prevented me from meeting my deadline. What can I do?

The US Patent and Trademark Office has instituted a 30-day extension of time for some patent deadlines. You may be able to benefit.

Question 2: How do I take advantage of the 30-day extension of time?

If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered timely when made within 30 days of the original due date. However, to qualify, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Only certain situations will qualify as delays due to the outbreak. More information is available at the official  Notice of Waiver of Patent-Related Timing Deadlines under CARES.

Question 3: Are there any requirements about how the statement has to be made or presented?

The statement does not have to be verified or submitted in the form of an affidavit or declaration. It must, of course, be truthful, and it is recommended that you keep detailed internal records should there later be a question as to the nature of the delay.

Also, rather than including the statement within a normal filing, it is recommended that the statement be included in a separate paper. While the statement can be included in the paper lodged with the Patent Office, it may be initially missed by the Office and delays could result before it is accepted. If included within a filing, it should be made in a conspicuous manner.

Question 4: What qualifies as “a delay due to the outbreak?”

At this time, it is not clear exactly which situations will qualify as being due to the outbreak.
The applicant, agent, owner, petitioner, inventor, or attorney must be personally affected by the outbreak, so being sick will certainly qualify. However, it is less certain whether they actually have to be sick themselves. The rule identifies that one must be affected by the outbreak, not necessarily the disease. So it is possible that having to stay home to take care of a kid whose school was closed could be a qualifying reason (though it should be noted that the Office has not specifically identified this as qualifying reason). If an office closure, cash flow interruption, travel delays, or inaccessibility of files or other materials causes the delay, this will also qualify. The new rule further states that “similar circumstances” to the above will qualify if they materially interfered with the on-time filing or payment. While it does not appear that the Office requires details regarding how the outbreak delayed the filing, it may be a good idea to provide some basic information about the delay

Question 5: When does an extension start??

Day 1 of the 30-day extension of time is the first day after the original due date, in other words, the first day after the original due date.

Question 6: What if the 30-day extension of time ends on a Saturday, Sunday, or federal holiday?

If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the extended deadline falls on the next regular business day.

Question 8: Are there any fees associated with extension?

No. The extension does not cost anything. The only fees that may be due are those associated with the filing or fee payment which is being extended.

Question 9: What appeal-related filings are eligible for a 30-day extension of time?

The following appeal-related filings are eligible for a 30-day extension of time:

  • notice of appeal
  • appeal brief
  • reply brief
  • appeal forwarding fee
  • request for an oral hearing before the PTAB
  • response to a substitute examiner’s answer
  • amendment in connection with a new ground of rejection by the PTAB
  • request for rehearing of a PTAB appeal decision

Question 10: Are all entities entitled to all CARES Act extensions?

No. Certain forms of relief are limited to small and micro entities.

Question 11: Which filing and fee extensions are only available to small and micro entities?

  • replies to an Office notice issued during pre-examination processing, e.g.:
  • reply to a notice of omitted items
  • reply to a notice to file corrected application papers
  • reply to a notice of incomplete application
  • reply to a notice to comply with nucleotide sequences requirements
  • reply to a notice to file missing parts of application (including, without limitation, the payment of the filing fees)
  • reply to a notification of missing requirements
  • a maintenance fee payment

Question 12: What PTAB filings are eligible for a 30-day extension of time?

  • request for rehearing of a PTAB decision in an AIA trial or interference proceeding
  • petition to the Chief Judge
  • patent owner preliminary response in a trial proceeding, or any related responsive filing

In the event that the USPTO extends a deadline for a patent owner preliminary response or any related filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request for an extension of time can be made by contacting the PTAB.

Question 13: What PTAB filings are not eligible for an extension of time?

At this time, PTAB is not extending any statutory deadlines for filing an AIA petition under either 35 U.S.C. §§ 315(b) or 321(c).

Question 14: Has the Patent and Trademark Office provided any other relief in view of the COVID-19 outbreak?

Yes. The USPTO has waived the fee for petitions to revive applications that became abandoned because applicants could not meet the deadline for responding to an Office communication due to the COVID-19 outbreak. The Office has also waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.

Question 15: Will the USPTO extend the CARES Act relief beyond April 30?

At the time of this writing, the Patent and Trademark Office has not announced further extensions. However, I believe another 30-day extension is highly likely to be granted should the virus continue to keep the economy depressed for a few more weeks.

Question 16: If I have a question about CARES Act extensions, whom do I contact?

The USPTO has a help email dedicated to COVID, but I have found that emails sent to general email addresses at the USPTO never get returned. You can also contact the Office of Patent Legal Administration at 571-272-7704 (or 571-272-7703 for reexamination), or contact Arizona patent attorney Tom Galvani at 602-281-6481.



CORONAVIRUS: Patent Office Not Requiring Original Handwritten Signatures

The Patent and Trademark Office will not be requiring handwritten signatures during COVID-19 outbreak.  Correspondence with the Patent Office requires a signature of some form.  Generally, an electronic or S-signature is sufficient to submit a document to the Patent and Trademark Office.  However, in a few situations, an actual, pen-to-ink, handwritten signature is required.

For the seemingly foreseeable future, however, that requirement has been waived.  The United States Patent and Trademark Office considers the effects of COVID-19 to be an “extraordinary situation” for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.

The waiver applies mostly to attorney and agent issues, such as new licensing applications to practice before the US Patent and Trademark Office and disciplinary matters in front of the Office of Enrollment and Discipline.  Additionally, some credit card payments apparently must be accompanied by handwritten signatures, though in a decade of practice, I’ve never encountered this.

While the requirement for a handwritten signature has been waive, the requirement for a signature has not.  Indeed, where handwritten signatures were once required, corresponding parties must now submit photocopies of original signatures and S-signatures will satisfy during waiver.



CORONAVIRUS: US Patent and Trademark Office Response

Quail eggs in our backyard

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates during the coronavirus pandemic. Read more here.

The US Patent and Trademark Office has made extensions available to filing, response, and fee deadlines in certain patent and trademark matters. The Office recognizes that the outbreak, and the economy impact thereof, have made it difficult or impossible for some entities to meet their deadlines. Applicants have been affected. Patent and trademark owners have been affected. Law firms and legal personnel have been affected. The Office is allowing some deadlines to be extended for 30 days under certain circumstances.

In all cases, a deadline can be extended only if the outbreak materially prevented or interfered with an on-time trademark filing, response, or fee payment. “Materially prevented” or “materially interfering” includes situations such as office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances. Further, only certain people can claim the extension: the person affected by the outbreak must be a practitioner, applicant, registrant, or other person associated with the filing or fee.  Lastly, only deadline falling within certain dates will qualify.

If you request an extension, you need to do so explicitly and conspicuously; if the request is hidden, it will probably be delayed or may even

be missed completely. This will require further follow-up by you with the Patent and Trademark Office to make sure it gets processed – just extra work from you during a time when you don’t need more on your plate, if you’re being truthful that the outbreak has affected you. And of course, you must be truthful when making the statement. It is a good idea to at least internally and carefully document the circumstances that are preventing the filing from being made on time, and then to keep those detailed records in case a question about their veracity ever arises. I predict that in five to ten years, some patents and trademarks could be invalidated in litigation because a COVID-19 extension was taken but shouldn’t have, or because the legitimacy of the conditions around the delay could not be shown.

An extended deadline window starts the day after the original deadline. That is day 1. Day 30 – the end of the window – is 30 business days afterward, so long as day 30 is not a weekend or federal holiday. If it is, then the extended deadline falls to the next regular business day.

I’m publishing more information about the US Patent and Trademark Office’s response to coronavirus this week. In the meantime, you can contact patent and trademark attorney Tom Galvani at 602-281-6481.  During the pandemic, Tom is working remotely and will likely return your call from a 435 number.  Videoconferencing is also available.



New Specimen Rules in Trademark Applications

On Friday, February 15th, a number of new specimen 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.