rethink(ip)

Interim Procedures For Implementing The April 1, 2007, Changes To The Regulations Under The Patent Cooperation Treaty And Status Of Proposed Fee Changes [signed 30 March 2007]

Posted by Kristen Cichocki at March 31, 2007 09:50 AM

Interim Procedures For Implementing The April 1, 2007, Changes To The Regulations Under The Patent Cooperation Treaty And Status Of Proposed Fee Changes [signed 30 March 2007]

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pct_interim_procedures.pdf

Confirming signatory authority

Posted by Stephen M. Nipper at March 29, 2007 12:28 AM

Confirming signatory authority. On March 3, 2007, the USPTO modified the TEAS response to Office action form and the petition to revive for failure to submit a timely response to Office action form to require filers to check one of three options, indicating the nature of the signatory's authority to sign and submit the response. When an unauthorized person signs and submits a response to an Office action, the USPTO does not accept or consider the substance of the response.

The USPTO intended these new options to help filers recognize where a proposed signatory lacks authority, so as to prevent situations where the USPTO cannot accept and consider the substance of the response. Examples of unauthorized persons include the following:

* non-attorneys who lack authority under Rule 10.14 to practice before the USPTO in trademark cases, except as an applicant representing himself/herself;

* foreign attorneys who are not members of the bar of any U.S. state and who do not qualify under the limited exception for reciprocally recognized Canadian attorneys/agents under Rule 10.14(c); and

* attorneys who attempt to replace another attorney of record without the appropriate filings for the substitution of counsel.

By requiring the confirmations directly within the new signature options, the USPTO seeks to ensure the legitimacy and propriety of the responses submitted. See Examination Guide NO. 3-06 Representing an Applicant/Registrant Before the USPTO (November 13, 2006).

The USPTO acknowledges that the changes introduced on March 3rd generated some confusion and concern. As an initial matter, the USPTO notes that the language for the new signature options had been posted in full under "Upcoming Enhancements" since January 3, 2007. The USPTO received no comments prior to the March 3rd deployment, and therefore was surprised by the outcry over the new options upon their implementation. Based on feedback received, the USPTO plans to modify the language for the three (3) buttons in the response signature section within an up-coming deployment, currently planned for March 24th, 2007 (see further information, below).

However, the USPTO maintains that, when the options as currently posted are considered in their entirety, including the bold heading that is part of each option, they comprehensively address the appropriate signatory situations. In particular, many commenters have expressed concern that no option seemed to apply to an authorized U.S. attorney who has represented the applicant since the filing of the application. The proper option is #2, which reads: "Attorney - No Other Attorney Has Previously Appeared: I hereby confirm that I am either (1) an attorney who is a member in good standing of the bar of the highest court of a U.S. state; or (2) a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO's Office of Enrollment and Discipline. I further confirm that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) I am the applicant’s attorney or an associate of that attorney."

In focusing solely on the confirmation that "the applicant has not previously been represented in this matter by an authorized attorney," the commenters seemed to overlook both that the statement for the second option is made under the heading "No Other Attorney Has Previously Appeared" (emphasis added), and that the only two choices that apply to attorneys are "New Attorney -- Change of Attorney Has Occurred" and "Attorney -- No Other Attorney Has Previously Appeared." In context, the selection of the second option, where no other attorney has previously appeared, is appropriate and truthful for an authorized U.S. attorney who has represented the applicant throughout.

In any event, in an effort to address the confusion and concern with the new options, the USPTO posted both on the "Important Notices" section of TEAS and on the "News and Notices" section of the USPTO website a Notice on March 8, 2007, namely, “Clarification of ROA Signature Options,” which includes among its guidance the instruction that "If you are an authorized attorney, and either you or an associated attorney or firm have appeared in this matter (e.g., by filing the original application), and the applicant was not previously represented by any other authorized attorney or agent, you should select Option 2. Option 2 is also proper where another attorney who is a member of the firm is filing the response on behalf of the attorney of record." The USPTO also plans to publish clarifying information in a Notice in the Official Gazette, as some attorneys have expressed a desire that the clarification be memorialized more formally.

As part of a deployment currently planned for March 24, 2007, the USPTO will modify the language within the form as shown below. In the future, the USPTO plans to expand this approach to all other forms requiring a similar authorized signature.

O Unrepresented Applicant,: I hereby confirm that

* No authorized attorney or Canadian attorney/agent represents me in this matter, and that I am either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and
* If an authorized U.S. attorney or Canadian attorney/agent previously represented me in this matter, either I have filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of my prior representative to withdraw.

ADVISORY: You may click this first button only if you are the applicant or legally authorized to bind the applicant, e.g., an officer of the applicant corporation or association, or a general partner of the applicant partnership. See TMEP §§712.01.

O Authorized U.S. Attorney: I hereby confirm that

* I am an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and
* I am currently the applicant’s attorney or an associate thereof; and
* To the best of my knowledge, if prior to my appointment another U.S. attorney or a Canadian attorney/agent not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing me as an associate attorney in this matter.

O Authorized Canadian Attorney/Agent: I hereby confirm that

* I am a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO’s Office of Enrollment and Discipline to represent Canadian applicants before the USPTO; and
* I am currently the applicant’s Canadian attorney/agent, or an associate thereof; and
* To the best of my knowledge, if prior to my appointment another Canadian attorney/agent or a U.S. attorney not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing me as an associate attorney in this matter.

ADVISORY: Foreign attorneys (other than authorized Canadian attorneys/agents) cannot sign this response and are prohibited from representing an applicant before the USPTO in trademark matters.

Post Registration forms

Post Registration forms.
On March 3, 2007, the USPTO enhanced the functionality of all Post Registration forms, to display the heading of “U.S. Class” for registrations issued on the basis of applications filed on or before August 31, 1973 (currently, the forms improperly use the heading of “International Class,” whereas what is actually being displayed is the U.S. Class number). NOTE: Although intended to be part of the most recent release, the following enhancement has been temporarily postponed: At a later time, the filing of these forms will automatically change both the "Attorney of Record" and "Correspondence Address" data fields in the USPTO's TARR database. I.e., once the enhancement is deployed, it will no longer be necessary to file a separate “Appointment of Attorney” form or “Change of Correspondence Address” form to update those specific fields.

PDF files accepted

PDF files accepted
A reminder that the Response to Office Action form and the initial application form (both “regular” and TEAS Plus versions) were enhanced (July 22, 2006 and March 3, 2007, respectively) to accept PDF files, for specimens, evidence, foreign registration certificates, miscellaneous statements, consents, and handwritten pen-and-ink signatures. However, a mark image will still only be accepted in JPG format.

Clarification of TEAS Response to Office Action Response Signature Options

Clarification of TEAS Response to Office Action Response Signature Options1

The purpose of this notice is to clarify the options on the Response Signature section of the TEAS Response to Office Action form2 entitled Unrepresented Applicant (Option 1); Attorney - No Other Attorney Has Previously Appeared (Option 2); and New Attorney - Change of Attorney Has Occurred (from attorney previously recognized by USPTO) (Option 3).

The term “attorney” refers to an individual who is a member in good standing of the bar of the highest court of any “state,” which includes the District of Columbia, Puerto Rico, and other federal territories and possessions. See 37 C.F.R. §10.1(c). References in the signature section to “authorized” attorneys and agents refer only to such U.S. attorneys or Canadian attorneys or agents authorized to practice before the USPTO under 37 C.F.R. §10.14.

If a foreign attorney (other than an authorized Canadian attorney/agent) is the only representative who has appeared on behalf of the applicant in this matter (e.g., a foreign attorney who is listed as the correspondence address in a §66 application), the foreign attorney is not authorized to practice before the USPTO under the rules, and the Office considers the applicant to be unrepresented. In this scenario, if you are either the applicant or a person(s) with legal authority to bind the applicant and you are not an authorized attorney, you should select Option 1; if you are an authorized attorney or agent, you should select Option 2.

If you are an authorized attorney, and either you or an associated attorney or firm have appeared in this matter (e.g., by filing the original application), and the applicant was not previously represented by any other authorized attorney or agent, you should select Option 2. Option 2 is also proper where another attorney who is a member of the firm is filing the response on behalf of the attorney of record.

If an authorized attorney or agent has been appointed or otherwise appeared on behalf of the applicant, the USPTO will not recognize a different attorney or agent who is not associated with that attorney or agent, until a new power of attorney, naming the new authorized attorney or agent and signed by the applicant, is submitted. Option 3 is intended to apply to scenarios in which a change of attorney has occurred from an authorized attorney or agent previously recognized by the USPTO. Changes to a firm’s name do not constitute a change of attorney.
____________________________________________________________________

1Changes were made within the signature section as part of a TEAS update on March 3, 2007. The form now requires for successful validation that the signatory “check off” one of three different options, to confirm that the signatory is authorized pursuant to the rules governing representation of others before the USPTO to sign this response. 37 C.F.R. Part 10. See Examination Guide 03-6 (Representing an Applicant/Registrant before the USPTO, issued November 13, 2006).
2The Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action was similarly modified.

USPTO Releases New Five-Year Strategic Plan (26Mar2007)

Posted by Kristen Cichocki at March 26, 2007 12:44 PM

USPTO Releases New Five-Year Strategic Plan
Plan builds on record breaking progress in 2006

The Department of Commerce’s United States Patent and Trademark Office (USPTO) today released the agency’s “2007-2012 Strategic Plan,” which lays out goals and objectives to guide the agency in accomplishing its mission of fostering innovation and competitiveness by providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy and delivering intellectual property information worldwide.

The plan builds upon the record-breaking progress the USPTO made during fiscal year 2006 in the areas of quality production, electronic filing and processing, teleworking and hiring.

The Strategic Plan has three complementary strategic goals: (1) optimizing patent quality and timeliness; (2) optimizing trademark quality, and (3) improving intellectual property protection and enforcement domestically and abroad. The plan outlines approaches toward attaining these goals, articulates underlying challenges and opportunities, and identifies steps that can be taken toward implementation. It provides a framework for continuing to make measurable quality improvements, reducing patent application pendency, increasing the percentage of patent applications filed electronically and improving worldwide intellectual property expertise.

The five-year plan also has a management goal of achieving organizational excellence. As part of this goal, the agency will strive to become an employer of choice with a culture of high performance and to enhance organizational communication, prerequisites to achieving the strategic goals focused on the agency’s core mission.

The plan is the outcome of a collaborative process that included input from the public, stakeholders and employees. A draft Strategic Plan was released in September 2006 and comments were solicited. Through public comment, employee focus sessions and the input of the Patent Public Advisory Committee and the Trademark Public Advisory Committee, the plan’s ambitious goals are more clearly stated.  Further, the final plan seeks to outline transformational strategies that balance the short-term needs of today’s applicants with strategic changes needed to deal the increasing complexity and numbers of patent applications.

The “2007-2012 Strategic Plan” is available at Strategic Plan .

 

COMING SOON: E-Mail with Direct Link to Issued Trademark Office Action to Replace E-Mailed Office Actions(19Mar2007)

Posted by Kristen Cichocki at March 19, 2007 03:31 PM

COMING SOON: E-Mail with Direct Link to Issued Trademark Office Action to Replace E-Mailed Office Actions(19Mar2007)

Beginning in late spring, the USPTO will notify applicants who have authorized e-mail communication with the USPTO of each issued Trademark Office action by an e-mail message containing a direct link to the Office action in Trademark Document Retrieval (TDR) (http://portal.uspto.gov/external/portal/tow ). The USPTO will not send a separate e-mail with the Office action attached.

This new approach should benefit both applicants and the USPTO. For example, discontinuing the sending of an e-mail with the Office action attached will eliminate problems stemming from very large e-mails, when, for example, the Office action includes voluminous evidence. Currently, such situations require dividing the Office action and its evidentiary attachments into multiple e-mails to ensure delivery, which, in turn, necessitates opening different e-mails and files. TDR will provide direct access to the complete Office action and all attachments, either for direct viewing or downloading. Also, TDR gives easy access to all other information in the application file. TDR is available 24 hours a day, seven days a week, 365 days a year.

USPTO Grants First Patent Under New Accelerated Review Option (15Mar2007)

Posted by Kristen Cichocki at March 16, 2007 08:28 PM

USPTO Grants First Patent Under New Accelerated Review Option (15Mar2007)

Patent Issues in 6 months, 18 Months Sooner Than Under Regular Process

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has issued the first patent under its accelerated examination program that began in August 2006. The patent, for a printer ink gauge, was filed with the USPTO on September 29, 2006, and was awarded to Brother International, Ltd. on March 13, 2007.  Average review time for applications in the ink cartridge technology area is 25.4 months.  This patent issued in 6 months, a time savings of 18 months for the patent holder.

"Accelerated examination allows any innovator in any technology to get a full patent review and decision within twelve months,” noted Jon Dudas, under secretary of Commerce for Intellectual Property.  In return for cutting the time to obtain a patent decision by 25-75%, the agency asks the applicant for a better application and process.  Inventors who want speedy results can get them, so long as they help improve the process."

To be eligible for accelerated examination, applicants are required to provide specific information, known as an examiner support document, so that review of the application can be completed rapidly and accurately. In return, the USPTO issues a final decision by the examiner within 12 months on whether their application for a patent will be granted or denied.

Any invention that is new, useful, non-obvious, and which is accompanied by a written description disclosing how to make and use it can be patented.  Applicants’ submissions enjoy a presumption of patentability.  Thus, to reject an application the USPTO is responsible for ensuring that any evidence indicating that the invention is not new or is obvious (known as “prior art”) is identified and explaining why the invention is not patentable in view of the evidence.

Applicants have a duty to disclose to the USPTO relevant prior art of which they are aware.  However, applicants are not required to search for prior art. Under the USPTO’s accelerated examination procedure, applicants are required to conduct a search of the prior art, to submit all prior art that is closest to their invention, and explain what the prior art teaches and how their invention is different.
 
In addition to providing and explaining any prior art references, applicants must explicitly state how their invention is useful and must show how the written description supports the claimed invention. 

Under the accelerated examination program, the number of claims allowed in each application is limited and time periods for responding to most USPTO communications are shortened.

The accelerated examination procedure is designed to give applicants quality patents in less time. In exchange for quick examination, patent examiners will receive more focused and detailed information about the invention and the closest prior art from the applicants.  This increased disclosure upfront by applicants will help examiners more quickly make the correct decision about whether a claimed invention deserves a patent

 

USPTO DEPUTY UNDER SECRETARY PINKOS TO LEAVE USPTO (14Mar2007)

Posted by Kristen Cichocki at March 14, 2007 04:51 PM

PRESS RELEASE
Contact:
Brigid Quinn or Ruth Nyblod
(571) 272-8400 or
brigid.quinn@uspto.gov
Ruth.nyblod@uspto.gov

USPTO DEPUTY UNDER SECRETARY PINKOS TO LEAVE USPTO (14Mar2007)

Will Move to Private Role in IP Policy

Stephen M. Pinkos, deputy under secretary of Commerce for Intellectual Property and deputy director of the United States Patent and Trademark Office (USPTO), has announced that he will be leaving the USPTO at the end of March.

"My time here has been very rewarding and a tremendous opportunity to work with dedicated people who appreciate the importance of intellectual property (IP)," remarked Deputy Under Secretary Pinkos who will be moving with his family to Fort Worth, Texas . "It was difficult for me to decide to leave the USPTO before the end of President Bush's term, but this is the right time for our family." 

Mr. Pinkos said he is just beginning to look at the next step of his professional career. "I'll continue to work in the area of IP policy and law. I've enjoyed working on IP issues over the last decade and I believe IP will continue to play a key role in America 's economic future." 

"Steve Pinkos is a true leader in the intellectual property world who has earned the respect of Members of Congress, international IP policymakers and his colleagues at the USPTO," said Jon Dudas, under secretary of Commerce for Intellectual Property. "Steve was a critical part of the team that last year achieved record low error rates, an 18 percent gain in production and the highest level of electronic filing and processing in the history of the agency. He also has been a leader in the United States ' successful efforts to increase protection of intellectual property throughout the world. On behalf of the USPTO's 8,500 dedicated employees who have made our agency the most vital intellectual property office in the world, we are grateful for Steve's dedicated service and accomplishments."

Reflecting on his time at the USPTO, Deputy Under Secretary Pinkos noted that he has never seen a government agency so focused on producing real results. "The people here have great ideas, great enthusiasm and great dedication." The expectations for the office have grown far beyond just examining patents, he emphasized, but the people here, with Under Secretary Jon Dudas at the helm, are ready to meet the challenges of the future. The USPTO had a "fantastic year in 2006 and is poised to accomplish even more," added Pinkos. 

The Secretary of Commerce appointed Mr. Pinkos to the position of Deputy Under Secretary in August 2004. As a leader in intellectual property (IP) policy, he has helped develop and articulate Administration positions on all patent, copyright, and trademark issues, both domestic and foreign. He also has promoted strong IP policy globally, including strategies to thwart the theft of U.S. IP around the world. As an agency leader, he implemented policies and initiatives that provide innovators with quality and timely patent and trademark examinations. Before coming to the USPTO, Steve served as Staff Director for the House of Representatives Committee on the Judiciary.

 

Examination of Patent Applications Containing Nucleotide Sequences [signed 22 February 2007] (12Mar2007)

Posted by Kristen Cichocki at March 12, 2007 01:51 PM

Examination of Patent Applications Containing Nucleotide Sequences

[signed 22 February 2007] (12Mar2007)

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/sequence02212007.pdf

Clarification of TEAS Response to Office Action Response Signature Options (08Mar2007)

Posted by Kristen Cichocki at March 9, 2007 10:00 AM

Clarification of TEAS Response to Office Action Response Signature Options

(08Mar2007)

The purpose of this notice is to clarify the options on the Response Signature section of the TEAS Response to Office Action form² entitled Unrepresented Applicant (Option 1); Attorney - No Other Attorney Has Previously Appeared (Option 2); and New Attorney - Change of Attorney Has Occurred (from attorney previously recognized by USPTO) (Option 3).

The term “attorney” refers to an individual who is a member in good standing of the bar of the highest court of any “state,” which includes the District of Columbia, Puerto Rico, and other federal territories and possessions. See 37 C.F.R. §10.1(c). References in the signature section to “authorized” attorneys and agents refer only to such U.S. attorneys or Canadian attorneys or agents authorized to practice before the USPTO under 37 C.F.R. §10.14.

If a foreign attorney (other than an authorized Canadian attorney/agent) is the only representative who has appeared on behalf of the applicant in this matter ( e.g ., a foreign attorney who is listed as the correspondence address in a §66 application), the foreign attorney is not authorized to practice before the USPTO under the rules, and the Office considers the applicant to be unrepresented . In this scenario, if you are either the applicant or a person(s) with legal authority to bind the applicant and you are not an authorized attorney, you should select Option 1; if you are an authorized attorney or agent, you should select Option 2.

If you are an authorized attorney, and either you or an associated attorney or firm have appeared in this matter ( e.g ., by filing the original application), and the applicant was not previously represented by any other authorized attorney or agent, you should select Option 2. Option 2 is also proper where another attorney who is a member of the firm is filing the response on behalf of the attorney of record.

If an authorized attorney or agent has been appointed or otherwise appeared on behalf of the applicant, the USPTO will not recognize a different attorney or agent who is not associated with that attorney or agent, until a new power of attorney, naming the new authorized attorney or agent and signed by the applicant, is submitted. Option 3 is intended to apply to scenarios in which a change of attorney has occurred from an authorized attorney or agent previously recognized by the USPTO. Changes to a firm's name do not constitute a change of attorney.

---

¹ Changes were made within the signature section as part of a TEAS update on March 3, 2007. The form now requires for successful validation that the signatory “check off” one of three different options, to confirm that the signatory is authorized pursuant to the rules governing representation of others before the USPTO to sign this response. 37 C.F.R. Part 10. See Examination Guide 03-6 (Representing an Applicant/Registrant before the USPTO, issued November 13, 2006) . .

² The Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action was similarly modified .

Notice of the Removal of the Paper Search Collection of Registered Word-Only Marks From Trademark Search Library (06Mar2007)

Posted by Kristen Cichocki at March 6, 2007 09:39 AM

Notice of the Removal of the Paper Search Collection of Registered Word-Only Marks From

Trademark Search Library in Arlington, VA (06Mar2007)

 

View and/or download a PDF of this notice at the following url:

http://www.uspto.gov/web/offices/com/sol/notices/72fr9932.pdf

USPTO Report Finds That Inadvertent Filesharing Threatens Personal, Government and Corporate Data (06Mar2007)

USPTO Report Finds That Inadvertent Filesharing Threatens Personal, Government and Corporate Data (06Mar2007)

Users May Be Unaware of Threats from Filesharing Programs

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has released a report that concludes that the distributors of five popular filesharing programs repeatedly deployed features that they knew or should have known could cause users to share files inadvertently. The report, Filesharing Programs and “Technological Features to Induce Users to Share,” identifies five features in recent versions of five popular filesharing programs that could cause users to inadvertently distribute to others downloaded files or their own proprietary or sensitive files.
 
“Computer programs that can cause unintended filesharing contribute to copyright infringement, and they threaten the security of personal, corporate, and governmental data,” noted Jon Dudas, under secretary of commerce for intellectual property—the Bush Administration’s point person on copyright policy.

The report shows that distributors of filesharing programs deployed features that could cause inadvertent sharing even after repeated warnings that these features could facilitate identity theft and breaches of personal and national security.  For example, in 2003, two Congressional hearings were prompted by research indicating inadvertent sharing could be caused by search-wizard and share-folder features.  After the hearings, many distributors adopted a Code of Conduct that prohibited use of these features.  Nevertheless, in 2004 and 2005, many of these same distributors kept deploying more aggressive versions of search-wizard or share-folder features.  Many distributors also deployed other features, like partial-uninstall and coerced-sharing features, that also had a known or obvious potential to cause inadvertent sharing. 

The report also shows that inadvertent sharing has had severe consequences for governments, corporations and individuals.  In a 2005 Information Bulletin, the Department of Homeland Security warned that inadvertent filesharing could compromise national security: “There are documented incidents of P2P file sharing where Department of Defense sensitive documents have been found on non-US computers with no protection against hostile intelligence.” 

Individuals have also been affected.  On November 30, 2006, the Denver District Attorney indicted a gang of identity thieves who had used the program LimeWire “to access names and account information from personal and business accounts across the country, and then use that information to open new bank accounts in the Denver area.”  The indictment alleges, “The group’s common goal was to obtain and use methamphetamine as well as steal money and merchandise for personal use.”

“A decade ago, no one would have thought that copyright infringement could threaten personal or national security,” continued Dudas. “Today, that threat is a reality; we need to understand its causes and find solutions.”

Copies of the report have been forwarded to the Department of Justice, the Federal Trade Commission and the National Association of Attorneys General.”  A copy of the report can be found at http://www.uspto.gov/main/profiles/copyright.htm.

(05MAR2007)