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On October 10, 1999, first went live on the Internet. It has been an honor and privilege to get to know so many wonderful people in our industry over the last 15 years, to talk to many industry leaders on the record, and to in some small way continue to push the debate forward. Thanks to our readers and contributors we have been recognized as as one of the top 100 legal blogs by the American Bar Association for 5 years in a row. For 3 of the last 4 years (2010, 2012, 2013) we were recognized as the top intellectual property law blog according to the ABA. In January 2014 we were also honored to be inducted into the ABA Blawg Hall of Fame. CLICK HERE to read more.

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Trademark Skullduggery: Lawsuit Challenges Publication Service

Posted: Thursday, Feb 2, 2012 @ 5:23 pm | Written by Gene Quinn | 21 comments

After all these years I am finally getting around to registering various trademarks associated with IPWatchdog.  Recently I received a rather official looking notice in the mail from Global Business Option, Inc., which solicited payment of $960 per trademark for publication in the “The Global Trademark and Servicemark Selection of the USA” catalog.  Why would I want or need to have my trademarks published in some catalog?

The notice, which at the bottom says that it “is an offer, not an invoice,” stated:

The law considers a trademark to be a form of property.  Your above registration provides a notice to others that your described trademark/servicemark is already taken.  Our publication contains a depiction of your registered mark, the identification of goods and/or services, year of the registration and owner information as well.

Interesting, because there is no requirement that trademarks be published this way, and if folks were interested in searching and did even a basic trademark search using the USPTO system they would find our pending applications.  So the filing of a trademark application and receipt of a trademark already provides notice that the mark is taken.  I wonder how many people have fallen prey to this solicitation?

Exclusive Interview Part 2: USPTO Deputy Director Teresa Rea

Posted: Thursday, Feb 2, 2012 @ 5:35 am | Written by Gene Quinn | 6 comments

USPTO Deputy Director Theresa Rea in her office on January 17, 2012.

On January 17, 2012, I sat down with Terry Rea, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. We met in her office, which is on the 10th floor of the Madison Building adjacent to Director Kappos’ office and overlooking Dulany Street.

In part 1 of the interview we discussed USPTO hiring and Director Rea told me that the plan “this fiscal year was to hire approximately 1,500 examiners.” The Office, according to Rea, is also looking to hire another 80 Administrative Patent Judges during this fiscal year and the salary is approximately $165,300. With respect to APJs the Office is looking for “talented examiners to promote from within” but is “also interested in talented attorneys from outside of the agency,” said Rea.

Part 2 of my interview with Deputy Under Secretary Rea picks up with discussion of the America Invents Act. We generally discussed the rulemaking process, the fact that the post-grant proposed rules are a bit late in coming, comments and what the USPTO will do with them, as well as the upcoming Road Show the USPTO is taking across America for the purpose of discussing implementation of the America Invents Act.

Former PTO Deputy Sharon Barner Leaves Foley & Lardner

Posted: Tuesday, Jan 31, 2012 @ 11:06 pm | Written by Gene Quinn | Comments Off

Cummins Inc. (NYSE:CMI),  announced today that Sharon R. Barner, formerly a top official in the United States Patent and Trademark Office and a leading intellectual property litigator, has joined the Company as Vice President and General Counsel.  Cummins Inc. designs, manufactures and distributes engines and related technologies, including fuel systems, controls, air handling, filtration, emission solutions and electrical power generation systems.

Barner served as the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the United States Patent and Trademark Office for approximately 15 months, being appointed on October 2, 2009 and resigning effective January 14, 2011.

Exclusive Interview: USPTO Deputy Director Teresa Rea

Posted: Tuesday, Jan 31, 2012 @ 6:00 am | Written by Gene Quinn | 8 comments

USPTO Deputy Director Theresa Rea in her office on January 17, 2012.

I have known for a while now that I would be doing an in-depth look at the Senior Management Team at the United States Patent and Trademark Office. The series is currently in progress, and this is the second installment – my interview with Theresa Rea.  Rea is a long time patent attorney and former President of the AIPLA.  Currently, however, she is the person in the federal government with the longest title — Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. Her title is longer than her boss’ title thanks to the inclusion of the word “deputy” twice.

When I interviewed USPTO Director David Kappos in December 2011, after the interview was concluded I asked him to give me some thoughts on his Senior Management Team. “When I say ‘Theresa Rea’ what are the first things that come to mind,” I asked. Kappos responded: “Tremendous background knowledge, energy, fun person to work with and to team with, deep knowledge of the life sciences sector…” Director Kappos would go on to say that with Rea at the agency “we’ve got all the bases covered. I’m the corporate guy, she’s the litigator. I’m the IT guy, she’s the Pharma person.”  Indeed, Deputy Director Rae is the real deal and a nearly ideal compliment to Director Kappos.

Patent Drawings: An Economical Way to Expand Disclosure

Posted: Monday, Jan 30, 2012 @ 5:45 am | Written by Gene Quinn | 1 Comment »

From U.S. Patent No. 6,655,077, titled "Trap for a mouse."

The patent applicant is required to furnish at least one patent drawing (sometimes referred to as a patent illustration) of the invention whenever the invention is capable of illustration by way of a drawing. Said another way, whenever a drawing would assist in the understanding of an invention you need at least one patent drawing. Based on my experience I can say that a patent drawing is almost always required, or at the very least you would do well to understand the rule as a patent drawing is virtually always required.

The only time patent drawings are not required is when the invention relates to a chemical compound or composition.  You can also get away without a drawing sometimes with method inventions, but I wouldn’t advise it.  There is almost always at least some illustration that could assist the reader (and patent examiner) and the drawings are a part of the overall disclosure. For example, just take a look at the illustration below, taken from U.S. Patent No. 6,618,977, which relates to a method and device for harvesting earthworms. 

How Your Telephone System Impacts Your Brand

Posted: Saturday, Jan 28, 2012 @ 10:24 am | Written by Renee C. Quinn | 2 comments

If you are a small business owner, you are located in a small personal office or you work from home, you probably use either a cell phone or personal landline as your business phone.  When you call a potential client, what shows up on their called ID?  What do potential clients hear when they call and want to leave you a voicemail?  What if they simply want to know your hours of operation or fax number?  You may not realize this but your telephone system’s features, including your caller ID display and voicemail greeting, have a major impact on how others see your brand.

Unless you are part of a company that has the resources to allow for a rather expensive professional telephone system, you probably have just the basics. Most small businesses do not have the resources or even the need for such an elaborate telephone system.  But it would be nice, right?  So chances are you are using the voicemail system offered as part of your landline or personal cell phone package.

Using US Patent Classifications to Enhance Key Word Searching to Achieve Higher Quality Patent Search Results

Posted: Friday, Jan 27, 2012 @ 8:00 am | Written by Brad Chassee | 5 comments

Over the last year, while building ArchPatent, I have spent a lot of time speaking with inventors and lawyers about various aspects of prior art research, and I learned a few great tricks along the way which I wanted to share. In particular, I wanted to write this article to explain how a key word patent search can be enhanced by filtering the results using US classifications and subclassifications. First, I’ll provide some background about the U.S. Patent Classifications Systems (USPC), discuss how filtering key word search results by US classifications and subclassifications fits within the seven step prior art search strategy outlined by the USPTO and provide specific instructions for how this type of search can be conducted to find highly useful results and save significant time over the current manual process.

Overview of US Classification and Subclassifications

In June of 2011, The USPTO published a helpful 15 page report titled, “Overview of the U.S. Patent Classifications Systems (USPC).” This report provides a very thorough overview for anyone seeking a deep dive into the US Classifications system.

Proposed Rules for Supplemental Examination, Revised Reexamination Fees and Deadline for Satellite Office Comments

Posted: Thursday, Jan 26, 2012 @ 4:21 pm | Written by Gene Quinn | 1 Comment »

USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

Changes will implement provisions of the America Invents Act

Washington – The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.

Examining the Appealed Patent Allowances from Art Unit 3689

Posted: Thursday, Jan 26, 2012 @ 3:35 pm | Written by Gene Quinn | 30 comments

Last week I wrote an article titled Business Methods by the Numbers, which took a look at the allowance rates for a variety of Art Units assigned to examine patents in class 705, the primary class where business methods and financial data processing inventions are classified in the United States.  The article has raised a few eyebrows and has caused some to question whether there is disparate treatment among Art Units at the United States Patent and Trademark Office.

The fact that there is disparate treatment between and among various Art Units and patent examiners shouldn’t catch anyone by surprise.  Everyone in the industry knows that some patent examiners feel they work for the Patent Granting Authority while others work for the Patent Rejection Office.  Notwithstanding, there are some who are excusing what can only be characterized as truly alarming statistics as having something to do with the various types of patent applications assigned to each Art Unit.  Allow me to call that out for what it is – hogwash!  Class 705, including the applications handled by Art Unit 3689, is dominated by a who’s who of the largest technology and financial companies in the world.  These companies hire some of the best attorneys in the world, they well understand how to write a patent application to articulate allowable subject matter and yet these large, well-funded companies represented by some of the best and brightest legal minds are incapable of obtaining a patent?  If you believe that I have a bridge I want to sell you!

Chief Judge Rader Swears In New Administrative Patent Judges

Posted: Wednesday, Jan 25, 2012 @ 7:13 pm | Written by Gene Quinn | 3 comments

Chief Judge Rader with Director Kappos at USPTO

The United States Patent and Trademark Office earlier today welcomed 10 new Administrative Patent Judges of the Board of Patent Appeals and Interferences.

At 10:00am this morning in the North Auditorium of the Madison Building on the campus of the USPTO, Federal Circuit Chief Judge Randall Rader administered the oath of office to Jacqueline Wright Bonilla, Erica Franklin, James Housel, Deborah Katz, Neal Abrams, George Best, Andrew Caldwell, Thomas Giannetti, Andrew Metz and Grace Obermann.

The ceremony lasted approximately 45 minutes.  It was well done, together with several musical numbers.  After USPTO Director David Kappos’ brief opening remarks, Laverne Smith, a Board Supervisory Paralegal, sang “My Country, ‘Tis of Thee.”  The program was then concluded with “God Bless America,” which was sung by April Mosby, a Board Patent Attorney.