Posts Tagged: "USPTO"

New rules governing all trademark filings with the United States Patent and Trademark Office (USPTO) went into effect two days ago, on February 15. Although the headline is a move to mandatory electronic filing for virtually all trademark applications, some of the rules have caused significant controversy within the trademark bar, especially a requirement that applicants provide a contact email address for the applicant, not just their counsel. The USPTO’s shift to mandatory electronic filing is relatively uncontroversial, since more than 99% of applications under Section 1 or Section 44 of the Trademark Act are already filed electronically. There are certain exceptions under the rule for foreign applicants under international agreements, and for non-traditional scent and flavor marks, where a physical specimen will still need to be mailed to the USPTO. But for all other applicants, electronic filing will now be mandatory unless the USPTO’s filing system – the Trademark Electronic Application System (TEAS) – goes down.

Are you bullish or bearish on the 2020 patent market? That is the question I asked a panel of experts recently. Each of the experts surveyed will participate on the faculty at IPWatchdog CON2020, which will take place in Dallas, TX from March 15-18. All those industry insiders who responded are bullish, which is an interesting change after many years of insiders being bearish, or at best cautiously optimistic. Indeed, the sentiment expressed across the board by experts from both the monetization / licensing world and litigation world is surprising, at least at first glance. And, as you will read below, while at least several people cited the uncertainty around patent eligibility in the United States, there is real optimism because license deals are getting done and policy changes show evolutionary changes in the IP ecosystem.

Climate activist Greta Thunberg is reportedly planning to register her name as a trademark based on her fears that third parties will exploit her identity for commercial gain. While registering a trademark has many advantages under U.S. law, she can likely accomplish her goal of protecting her name without the cost, delay, and uncertainty associated with the trademark registration process. As an initial matter, a trademark does not exist in the abstract. It is only protectable in connection with particular identified goods and services. Consequently, her trademark (or service mark) application would need to identify the goods or services she offers or intends to offer under the mark. To obtain registration, she would ultimately need to provide specimens showing technical trademark (or service mark) use. 15 U.S.C. § 1051.

As you’ve most likely heard, Prince Harry and Meghan Markle have decided to become financially independent of the Crown. No small task when your security costs are reported to be $1.3 to more than $7 million per year. Ouch! So, what are they planning to do? One hint can be found in the trademark application for “Sussex Royal” that they filed in England on June 21, 2019. This trademark filing provides the opportunity for many lessons to be learned.

With cannabis now legal in some form across more than 30 states, the cannabis industry is on the rise and expected to achieve a market size of more than $60 billion by the end of 2025. As with any new and growing industry, intellectual property protection will be central to innovation and investment. Several unique challenges emerge at the intersection of cannabis and intellectual property law, the first of which is obtaining protection for a cannabis-related business or invention. Two characteristics of cannabis make intellectual property protection challenging—its status as a Schedule I drug under the Controlled Substances Act and the fact that many cannabis species are naturally-occurring. Applications for cannabis trademarks, for instance, have encountered resistance at the U.S. Patent and Trademark Office (USPTO) due to cannabis’s illegal status under federal law. Unlike trademarks, however, a patent does not require an applicant to show that the product is lawfully used in interstate commerce. Rather, a patent provides the right to exclude others from the invention, and there is nothing unlawful about obtaining such a right.

Andrei Iancu, the Director of the United States Patent and Trademark Office (USPTO), has a real mess on his hands. This particular mess relates to the Patent Trial and Appeal Board (PTAB) and the astonishing reality that the Administrative Patent Judges (APJs) on the PTAB are not bound by any Code of Judicial Conduct, as is applicable to Article III federal judges. Instead, PTAB Judges are only bound by the same ethics standard that applies to all other employees, which requires them to recuse themselves from any decisions relating to former employers for one year. That is how several PTAB Judges have been able to adjudicate inter partes review (IPR) and covered business method (CBM) challenges filed by a former litigation client – Apple, Inc. What is scandalous is the dismissal of this behavior in the recently filed amicus brief filed at the United States Court of Appeals for the Federal Circuit by the United States Department of Justice (USDOJ) in the matter of Apple, Inc. v. Voip-Pal, Inc., Nos. 2018-1456, 2018-1457. In this case there are no clean hands, although you can certainly feel for the patent owner.

Last night, February 4, the U.S. Chamber of Commerce Global Innovation Policy Center (GIPC) held a reception to launch its eighth annual International IP Index, Art of the Possible. The event featured remarks from U.S. Patent and Trademarks Director Andrei Iancu, who touted the results as a win overall for the United States in particular, as well as for the global economy, but also explained to attendees that the upcoming WIPO elections for Director General will be key in signaling to the global community that respect for IP protections and enforcement is paramount to economic development. While Iancu stopped short of endorsing any of the ten candidates the WIPO General Assembly is considering, he said the next Director General must come from a country and respects intellectual property rights. Read his remarks in full below.

I recently became frustrated after reading an essay in the AIPLA newsletter by an attorney with Taft Stettinius & Hollister LLP on the topic of the new USPTO-DOJ-NIST Joint Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments. I have seldom seen a writing where I disagree with everything a man writes, with the exception of a joke and his name. I took it apart paragraph by paragraph; my comments follow in red, while the author’s original text is in black.

The U.S. Patent and Trademark Office (USPTO) announced today that Secretary of Commerce Wilbur Ross has appointed David Gooder to be the new USPTO Commissioner for Trademarks, replacing Mary Boney Denison, who retired from the position in December 2019 after eight years with the Office. Since Boney Denison’s retirement, Deputy Commissioner for Trademark Operations Meryl Hershkowitz has been acting in the role of Commissioner. Gooder most recently served as Chief Trademark Counsel for Brown-Forman Corporation, which is among the largest American-owned spirits and wine companies. According to the USPTO press release, at Brown-Forman, “Gooder directed the company’s global intellectual property work, including managing its large trademark portfolio, rights clearance, brand protection (including anti-counterfeiting), licensing, and entertainment deals for the brands.”

For the past several years, the patent offices in the United States and Mexico have operated under a type of patent examination fast-tracking and work-sharing agreement known as a Patent Prosecution Highway (PPH). This agreement between the United States Patent and Trademark Office (USPTO) and the Mexican Institute of Industrial Property (IMPI) was set to expire in June of this year, and the status of the program going forward was uncertain. But on January 28, the Offices announced a new agreement that promises to improve upon the PPH system by creating an even “more streamlined approach” to obtaining a Mexican patent once a corresponding U.S. patent is granted than that presently offered under the PPH.

An IPR petition must be based “only on a ground that could be raised under [35 U.S.C. §§] 102 [anticipation] or 103 [obviousness] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). The “printed publication” basis for IPRs seems as fundamental an issue as one can imagine. But until late December 2019, the Patent Trial and Appeal Board (PTAB) offered no precedential decision explaining “[w]hat is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage.” The Board presented that broad question in an April 2019 order announcing it would answer that question through its Precedential Opinion Panel (POP). Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 15 (PTAB Apr. 1, 2019).

There is a window open for legislative action on patent reform, and the innovator community is blowing it. Google fired its lobbyists in Washington, D.C., and then rehired all new lobbyists with an antitrust and economic background. Meanwhile, the Trump Administration has held roundtable talks about how to combat counterfeits in online marketplaces, which have been thinly veiled forums asking what, if anything, the government can do to punish Amazon for rampant counterfeits. Facebook has few friends in Washington, D.C. after the last election and its privacy issues, and its recent quarterly report shows expenses significantly up, that revenue growth slowed significantly and the CFO suggests that is likely to continue into the future. The time is right for a legislative fix for the patent eligibility crisis facing real innovators in the life sciences and software industries. There is a unique opportunity for a legislative fix for 101, with many of those who have favored a weakened patent system no longer focused on the issue the way they once were, and partners in the Senate IP Subcommittee who actually, truly understand patents, the patent system and innovation.

Much has been written about how artificial intelligence (AI) and machine learning (ML) are about to transform the global productivity, working patterns and lifestyles and create enormous wealth. Gartner projects that by 2021, AI augmentation will create $2.9 trillion of business value and $6.2 billion hours of worker productivity globally. McKinsey forecasts AI potentially could deliver additional economic output of around $13 trillion by 2030, boosting global GDP by about 1.2 percent a year. Companies around the globe are all racing to adopt and innovate AI and ML technologies. Indeed, by any account, much progress has been made and the adoption and innovation rates are quickening. But who is winning or leading in the race? A quick review of U.S. patent data may provide a glimpse into the state of the race.

Jamie Holcombe, Chief Information Officer at the U.S. Patent and Trademark Office (USPTO), seemed surprised to learn on Wednesday that both the Public and Private versions of the USPTO’s Patent Application Information Retrieval (PAIR) System have serious issues that are making workflows untenable for users.

Holcombe was participating in a public Forum on the PAIR system, where USPTO staff listened to stakeholders’ experiences since the Office implemented major security changes to the system on November 15, 2019. “The USPTO disabled the ability to look up public cases outside of a customer number using Private PAIR,” explained Shawn Lillemo, Software Product Manager at Harrity LLP, who attended the Forum. “Most patent professionals prior to the change could retrieve all the PAIR information they needed from Private PAIR. That is no longer true.”

The Federal Circuit recently denied a petition by BioDelivery Sciences International, Inc. (BioDelivery) for a rehearing en banc following a refusal by the Patent Trial and Appeal Board (PTAB) to apply the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). See BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., Nos. 2019-1643, 2019-1644, 2019-1645, 2020 U.S. App. LEXIS 1030 (Fed. Cir. Jan. 13, 2020) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, and Hughes, Circuit Judges) (Opinion for the Court, Lourie, Circuit Judge) (Dissenting opinion, Newman, Circuit Judge). The petition for rehearing arrived at the Federal Circuit following a decision by the PTAB to disregard a remand order by the Federal Circuit ordering the PTAB to apply the Supreme Court’s holding in SAS Institute and decide all of the claims and grounds challenged in an inter partes review. Rather, the PTAB, on remand, withdrew all of its past actions as to the proceedings at issue and denied the petition in its entirety. BioDelivery then petitioned the Federal Circuit for a rehearing en banc, but the Federal Circuit voted to deny the rehearing, with Circuit Judge Newman offering the only dissenting opinion.