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Posts Tagged ‘ USPTO ’

Game of Patent Thrones

Posted: Wednesday, Sep 10, 2014 @ 8:00 am | Written by Sue D. Nym | 14 comments
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Patents, USPTO

Just as in the land of Westeros, there is turmoil and intrigue in our government as to who is to lead the United States Patent & Trademark Office (USPTO).  Indeed, the top position of Under Secretary of Commerce for Intellectual Property and Director of the USPTO has been vacant since the resignation of David Kappos on February 1, 2013.  His deputy, Teresa Stanek Rea, became Acting Director, but she was not elevated to his post.  She resigned on November 21, 2013, which left both positions unfilled.

On January 13, 2014, Michelle Lee, former head of Patent and Patent Strategy at Google, was appointed Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, and in the ongoing absence of a Director, she holds the fort as Deputy Director, but with her position in administrative law limbo.  Despite the clear need for leadership at the USPTO, the search for the next Iron Throne holder is mired in ideology and lobbying.



USPTO Launches Redesigned KIDS! Web Pages

Posted: Tuesday, Sep 9, 2014 @ 8:00 am | Written by U.S.P.T.O. | No Comments »
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Posted in: Government, IP News, IPWatchdog.com Articles, Kid Tech, Technology & Innovation, USPTO

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced the launch of its newly redesigned KIDS! Web pages aimed to encourage students of all ages to learn about the importance of intellectual property (IP) creation and protection. In addition to featuring young inventor profiles, activities, and videos, the pages also offer curricula that link Science, Technology, Engineering, and Math (STEM) education to IP and innovation through downloadable lesson plans, hands-on instructions for building inventions, USPTO career information and other useful resources.

“The USPTO looks to our children—the doers, makers, and tinkerers of the future—to reimagine the world and, as the Constitution calls for, ‘to promote the progress of Science and the useful Arts’ like never before,” said Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. “As schools across the country ramp up their STEM programming, we look forward to putting even more tools in teachers’ hands that will ensure our next generation is well-versed in concepts of making, inventing, and creating the high-value intellectual property that drives our economy.”



Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution

Posted: Friday, Sep 5, 2014 @ 10:55 am | Written by U.S.P.T.O. | No Comments »
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Posted in: Government, IP News, IPWatchdog.com Articles, Trademark, USPTO

The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about this proposal to allow amendments to identifications of goods and services due to technology evolution. Please send comments regarding the proposal to TMPolicy@uspto.gov, with the subject line “Technology Evolution.” Comments may be posted on the USPTO website. In order to ensure that your feedback may be considered, please submit it no later than November 3, 2014.

Based on user input, including at a recent roundtable, the USPTO proposes to amend its current practice to permit amendments in limited circumstances to identifications of goods/services based on changes in the manner or medium by which products and services are offered for sale and provided to consumers due to evolving technology if the underlying content or subject matter has not changed. This change in practice takes into account the goal of preserving trademark registrations and applications in situations where technology in an industry has evolved in such a way that amendment of the goods/services in question would not generate a public-notice problem.



USPTO to Host AIA Roadshow in Seven Cities Nationwide

Posted: Wednesday, Aug 27, 2014 @ 11:10 am | Written by U.S.P.T.O. | 1 Comment »
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Posted in: America Invents Act, Government, IP News, IPWatchdog.com Articles, Legislation, Patents, USPTO

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced that it will host seven roadshows across the country between September 16 and October 9, 2014, to increase understanding of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). The public meetings will serve as an opportunity for USPTO subject matter experts and stakeholders to discuss the FITF provisions and updates since its implementation in March 2013.

The USPTO specifically wants to broaden public knowledge of the FITF provisions and assist understanding of the provision’s administrative processes to aid inventors and their representatives in the filing and prosecuting of patent applications under the FITF system. At each roadshow, panelists will discuss FITF statistics to date, the applicability of the FITF provisions on patent applications filed today, the FITF statutory framework and its exceptions, and AIA evidentiary declaration practice useful to invoke these exceptions. The experts will present a variety of sample scenarios to illustrate both the applicability of the FITF provisions as well as tips for prosecuting applications filed under the FITF provisions.



PTO Seeks Comment on AIA Post Grant Administrative Trials

Posted: Wednesday, Aug 20, 2014 @ 11:41 am | Written by Gene Quinn | No Comments »
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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patent Litigation, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

Earlier this summer the United States Patent and Trademark Office published a Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board. This request for comments pertains to the new administrative trial proceedings ushered in by the America Invents Act (AIA), which President Obama signed into law on September 11, 2011. The administrative trial proceedings at the USPTO did not go into effect immediately, but rather went into effect on September 16, 2012, the first anniversary of the signing of the AIA.

The administrative trial proceedings created by the AIA are:  (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.



Another Summer Without a USPTO Director

Posted: Monday, Aug 18, 2014 @ 10:14 am | Written by Gene Quinn | 1 Comment »
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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patents, USPTO

Back on June 2, 2014, Senator Orrin Hatch (R-UT) wrote to President Obama expressing concern with the fact that the United States Patent and Trademark Office has been without a director for more than 16 months. A further 11 weeks has passed and we are still without a presidential nominee to run the USPTO. The letter from Senator Hatch to President Obama is reproduced below.

In the letter, Senator Hatch also questions whether USPTO Director Michelle Lee was appointed consistent with 35 U.S.C. § 3(b)(1). Dennis Crouch and Hal Wegner have covered that issue with some detail, so there is no need to rehash that here, but suffice it to say that the Director is supposed to nominate the Deputy Director for the position, but there has not been a Director of the Office since David Kappos left in January 2013. At the time Lee was nominated Peggy Focarino, the Commissioner for Patents, had been vested with the powers and duties of the Director by the Obama Administration, although not given the title.



PTO Proposes Rule Changes to Enable Electronic File Sharing

Posted: Friday, Aug 15, 2014 @ 11:54 am | Written by Gene Quinn | No Comments »
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Posted in: Gene Quinn, Government, International, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

Earlier this summer, on July 11, 2014, the United States Patent and Trademark Office published a request for comments regarding electronic filing sharing with other Patent Offices around the world. See Changes To Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices. Written comments must be received on or before September 9, 2014. Comments should be sent by email to: AC95.comments@ uspto.gov.

In the Federal Register Notice the USPTO explains that electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. It is hard to argue with this statement given the worldwide growth of patent applications. Truthfully, whenever there is a public forum at the USPTO of leaders from patent offices around the world it almost seems like everyone is overwhelmed. Working together in bi-lateral fashion has given us various Patent Prosecution Highway pilot programs that seek to accelerate applications. The United States worked with the European Patent Office to streamline and update patent classification systems. Sharing files electronically is another step toward streamlining the process for applicants and Offices alike.

Standing in the way of file sharing with other offices is the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122. An applicant now must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.



Deadline Approaches for Public Comments on Patent Term Adjustment

Posted: Thursday, Aug 14, 2014 @ 4:21 pm | Written by Gene Quinn | No Comments »
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

Recently, the United States Patent and Trademark Office proposed changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee.

Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of 35 U.S.C. § 154(b)(1)(B).  As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.



USPTO Retention Efforts – Tuition Reimbursement Returns but No Loan Repyament

Posted: Thursday, Aug 14, 2014 @ 8:05 am | Written by Gene Quinn | 3 comments
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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patents, USPTO

By agreement signed with the Patent Office Professional Association on June 24, 2014, the United States Patent and Trademark Office is once again providing tuition reimbursement for employees who are enrolled in law school seeking a Juris Doctor degree. See 2014 Supplemental Agreement on the Non-duty Hours Legal Study Program. To qualify the employee must have at least 2 years of USPTO experience and sign a continuing service agreement.

The continuing service agreement requires an employee who received tuition reimbursement to provide continued service with the federal government for 30 days for each credit paid for by the USPTO. If the employee leaves the federal government prior to completing the required length of the continued service, the employee’s tuition reimbursement obligation will be on a pro rata basis (based on thirty-day increments).



PTO Seeks Public Comment on Patent Pendency

Posted: Wednesday, Aug 13, 2014 @ 8:00 am | Written by Gene Quinn | No Comments »
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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

The United States Patent and Trademark Office (USPTO) is seeking public input to determine the optimal first action and total pendency target levels for patents. See Request for Comments on Optimum First Action and Total Patent Pendency. Written comments must be received on or before September 8, 2014, and should be sent via email to: patent_pendency2014@uspto.gov.

Currently, the USPTO targets of 10 months on average to a first office action, and an average of 20 months for total pendency were established with stakeholder input in the previous USPTO 2010–2015 Strategic Plan. In an effort to continue to take into consideration industry realities the USPTO would like to ensure a balance between workload, production capacity and the requirements of the stockholder community.