12th Annual Independent Inventors Conference Comes to Raleigh, NC (11Sep2007)

Posted by Kristen Cichocki at September 24, 2007 10:13 PM

12th Annual Independent Inventors Conference Comes to Raleigh, NC  (11Sep2007)

MEDIA ADVISORY Contact: Jennifer Rankin Byrne or Ruth Nyblod (571) 272-8400 or Jennifer.Rankin_Byrne@uspto.gov; ruth.nyblod@uspto.gov

USPTO, U.S. Chamber Team with U.S. Representative Earl Blumenauer to Educate Oregon Businesses about the Risks of Counterfeiting and Piracy (11Sep2007)

USPTO, U.S. Chamber Team with U.S. Representative Earl Blumenauer to Educate Oregon Businesses about the Risks of Counterfeiting and Piracy and the Importance of Intellectual Property Protection  (11Sep2007)

MEDIA ADVISORY Contact: Jennifer Rankin Byrne or Ruth Nyblod (571) 272-8400 or Jennifer.Rankin_Byrne@uspto.gov; ruth.nyblod@uspto.gov

April 2007 Revision of Patent Cooperation Treaty Procedures, Final rule [PDF] (10Sep2007)

April 2007 Revision of Patent Cooperation Treaty Procedures, Final rule [PDF] (10Sep2007)

 

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr51559.pdf

United States and Swedish Patent Offices to Cooperate on International Search and Examination Services (17Sep2007)

United States and Swedish Patent Offices to Cooperate on International Search and Examination Services (17Sep2007)

United States and Swedish Patent Offices to Cooperate on International Search and Examination Services
Trial project part of USPTO efforts to reduce U.S. national patent application backlogs

 

The Commerce Department’s U.S. Patent and Trademark Office (USPTO) and the Swedish Patent and Registration Office (PRV) announced today that they have begun a pilot project to test the feasibility of the PRV performing search and examination services for the USPTO on international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).

The pilot is part of ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.

Each year, the USPTO receives over 50,000 PCT international applications in addition to over 400,000 national applications. The USPTO is testing whether, by having international applications processed elsewhere, it can dedicate more resources to examining the approximately 750,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.

Under the terms of the pilot project, the PRV will process 50 PCT Chapter I applications covering a range of technologies. The USPTO will review the PRV’s work to ensure that it meets USPTO standards for quality and accuracy.

“We look forward to working with our Swedish colleagues to achieve our mutual goals of expediting review of patent applications while maintaining high quality examination” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “Taking advantage of work completed by another office allows the USPTO to focus more of its resources on decreasing the time it now takes between the filing of an application and a final examiner decision.”

“The PRV is a competent PCT Authority since the start of the PCT system in 1978 and we have a long experience of patent search and examination” said Lars Björklund, acting Director General of the PRV. “We look forward to cooperating with the USPTO and thereby also taking responsibility to support and maintain the functionality of the PCT system.”

The PCT is an international agreement that simplifies the filing of patent applications in its 135 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and the PRV are among the national patent offices authorized to conduct PCT searches and examinations.

Error in GPO August 28 Printed TM Official Gazette (19Sep2007)

Error in GPO's August 28 Printed TM Official Gazette (19Sep2007)

OMISSION OF MARKS IN AUGUST 28, 2007, GOVERNMENT PRINTING
OFFICE PRINTED EDITION OF THE TRADEMARK OFFICIAL GAZETTE

Due to an error by the Government Printing Office (GPO), GPO's August 28, 2007 printed version of the Trademark Official Gazette (TMOG) published incorrectly. In particular, Book 2 of GPO’s printed August 28, 2007 TMOG omitted the content intended for publication in that volume, and instead mistakenly contained the content designated to print in Book 2 of the following week’s edition.

All of the content mistakenly omitted from GPO’s printed TMOG was timely and properly included in the USPTO’s electronic TMOG dated August 28, 2007. While the USPTO regrets the inconvenience to GPO’s customers as a result of the GPO printing error, the USPTO’s electronic TMOG is the official version. See 68 FR 37803 (June 25, 2003). The five most recent electronic editions of the TMOG are always easily accessible on the USPTO website at http://www.uspto.gov/web/trademarks/tmog/.

Because the marks in question correctly appeared in the official version of the August 28, 2007 TMOG, the opposition period for these marks remains unchanged, regardless of their omission from GPO’s printed TMOG.

Lower-Cost Trademark Bulk Data from U.S. Patent and Trademark Office (18Sep2007)

Lower-Cost Trademark Bulk Data from U.S. Patent and Trademark Office (18Sep2007)

The United States Patent and Trademark Office (USPTO) announces plans to provide Trademark bulk data at lower cost. Effective January 1, 2008, the USPTO will change its distribution model for Trademark bulk data by eliminating all charges for downloadable daily files and reducing the price of retrospective data distributed on optical disc.

The following Trademark data files, currently available only by purchased subscription, will be downloadable at no cost as of January 1, 2008:

• Trademark Daily/XML files:
• Trademark Daily Applications file
  (containing text data of applications filed, published for opposition, registrations issued, registrations renewed, registrations cancelled, registrations amended or corrected, registrations issued new certificates)
• Trademark Daily Assignments file
  (containing text data of ownership transfers)
• Trademark Daily TTAB file
  (containing text data of Trademark Trial and Appeals Board adversary proceedings)


• Trademark Daily Application Image 24 Hour Box
  (containing images processed through the Trademark Image Capture and Retrieval System (TICRS) in a 24-hour Period, in JPEG (black and white, grey-scale, or color)) and TIFF (black and white) formats)

In order to improve access to these downloadable data files, USPTO will implement a new account management and file retrieval system. New customers will be able to establish their own accounts online beginning January 1; existing customers will be transitioned to the new system.

The USPTO also offers optical discs containing Trademark Retrospective/XML files (Applications, Assignments, and TTAB), which are updated annually. After January 1 these discs will be available at a substantially lower cost; the ordering process for all optical discs will remain as described in the products and services catalog at http://www.uspto.gov/web/offices/ac/ido/oeip/catalog/index.html.

Additional details will be provided later this fall - for the latest information, see “What's New at CIS” on the USPTO website at http://www.uspto.gov/web/offices/cio/cis/prodsvc.htm. Please direct any questions or comments to Electronic Information Products Division, 571-272-5600 or ipd@uspto.gov.

USPTO and United Kingdom Intellectual Property Office to Pilot Patent Prosecution Highway (04Sep2007)

Posted by Kristen Cichocki at September 9, 2007 04:18 PM

USPTO and United Kingdom Intellectual Property Office to Pilot Patent Prosecution Highway  (04Sep2007)

September 4, 2007

USPTO and United Kingdom Intellectual Property Office to Pilot Patent Prosecution Highway
Fast-track examination trial program will enhance quality and efficiency

 

The Commerce Department's U.S. Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UK IPO) today announced that they are now accepting applications for participation in a pilot Patent Prosecution Highway project established between the two offices. The Patent Prosecution Highway will leverage fast-track patent examination in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently. It also will permit each office to benefit from work previously done by the other office, in turn reducing examination workload and improving patent quality.

"Patent offices worldwide must increase the depth and effectiveness of their cooperation. Our collective goal is to reduce duplication of work, speed up processing, and improve quality," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. "This pilot project with the UK IPO builds on our work with the Japan Patent Office, and contributes to a more rational international patent system."

"The Patent Prosecution Highway (PPH) with the U.S. Patent and Trademark Office builds on a similar pilot scheme with the Japan Patent Office which is already showing great promise," said Chief Executive of the UK Intellectual Property Office Ian Fletcher. "The UK Intellectual Property Office has high standards in efficiency and quality as reflected in our ISO 9001:2000 accreditation, and the PPH agreement with the U.S. Patent and Trademark Office will make a contribution to raising these standards further. I am especially pleased that the improved efficiency and quality expected to arise from this PPH agreement is a direct result of the strong relations that exist between the UK Intellectual Property Office and the U.S. Patent and Trademark Office. The PPH helps both offices in their goal of stimulating and rewarding invention and innovation and is a further step towards a global patent prosecution highway network," Fletcher continued.

Under the Patent Prosecution Highway, an applicant receiving a ruling from either the UK IPO or the USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in corresponding applications. Full requirements for participation in the trial program at the USPTO can be found at www.uspto.gov/web/patents/pph/pph_ukipo.html.

The purpose of the trial program is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at the USPTO and the UK IPO. The trial period is set to expire September 4, 2008, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. Both offices will provide notice of any adjustment in the trial period.

.

Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the United Kingdom Intellectual Property Office [signed 30 August] [PDF] (04Sep2007)

Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the United Kingdom Intellectual Property Office [signed 30 August] [PDF] (04Sep2007)

 

View comments at the following url:

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

Claims and Continuations Final Rules to Publish in Late Summer (25Jul2007)

Posted by Kristen Cichocki at July 28, 2007 04:14 PM

Claims and Continuations Final Rules to Publish in Late Summer  (25Jul2007)

On July 9, 2007, OMB concluded its review of the Continuations and Claims rule changes. The final rules will be made public when they are published in the Federal Register, which is expected to be later this summer. The rules will become effective at least 60 days after publication in the Federal Register, and no earlier than October 1, 2007.

The abstracts of the rules currently available on the Federal Regulatory Information Web site (http://www.reginfo.gov/public/do/eoViewRule?ruleID=273406 and http://www.reginfo.gov/public/do/eoViewRule?ruleID=273407) reflect the abstracts of the Continuations and Claims notices of proposed rule-making that were published in January, 2006.

Draft KSR Training Guidelines Under OMB Review (20Jul2007)

Draft KSR Training Guidelines Under OMB Review  (20Jul2007)

The USPTO has sent to the Office of Management and Budget (OMB) for review draft final guidance for use by patent examiners in determining if an invention is obvious in view of the U.S. Supreme Court’s decision in KSR v Teleflex.

The USPTO will post the final guidance document on its website after OMB concludes its review. In the interim, the agency will begin training for examiners on implementation of KSR.

Comments Regarding the International Effort to Harmonize the Substantive Requirements of Patent Laws (11Jul2007)

Posted by Kristen Cichocki at July 17, 2007 10:41 PM

Comments Regarding the International Effort to Harmonize the Substantive Requirements of Patent Laws (11Jul2007)

View comments at the following url:

http://www.uspto.gov/web/offices/dcom/olia/harmonization/index.html

Addition of Japan Patent Office as Participating Foreign Intellectual Property Office in Electronic Exchange of Priority Documents [signed 10 July 2007] [PDF] (10Jul2007)

Addition of Japan Patent Office as Participating Foreign Intellectual Property Office in Electronic Exchange of Priority Documents [signed 10 July 2007] [PDF] (10Jul2007)

 

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

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

Patent Cooperation Treaty Update [signed 28 June 2007] [PDF] (09Jul2007)

Patent Cooperation Treaty Update [signed 28 June 2007] [PDF] (09Jul2007)

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

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/pctfeeupdate07.pdf

Extension of the Patent Prosecution Highway Pilot Program between the USPTO and the JPO(28Jun2007)

Posted by Kristen Cichocki at July 4, 2007 12:55 PM

Extension of the Patent Prosecution Highway Pilot Program between the USPTO and the JPO(28Jun2007)

 

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

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

 

Notice of the Removal of the Paper Search Collection of Registered Marks That Include Design Elements from Trademark Search Library in Arlington, VA (28Jun2007)

Notice of the Removal of the Paper Search Collection of Registered Marks That Include Design Elements from Trademark Search Library in Arlington, VA (28Jun2007)

 

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr35429.pdf 

A Victory for Inventors

A Victory for Inventors
Disciplinary Action Affirmed by CAFC

Recently the United States Court of Appeals for the Federal Circuit (CAFC), affirmed disciplinary action taken by the USPTO against a registered patent attorney, who became involved in the activities of one invention promotion company and represented more than one thousand inventors. This important decision lends critical support to the USPTO's efforts to protect unsuspecting inventors from unscrupulous invention promoters. If you have questions please call Harry Moatz, Director of the Office of Enrollment and Discipline, 571-272-6069.

The USPTO urges all independent inventors to read the court's decision

Notice of Change of Address for Fastener Quality Act Correspondence (21Jun2007)

Posted by Kristen Cichocki at June 24, 2007 11:19 AM

Notice of Change of Address for Fastener Quality Act Correspondence (21Jun2007)

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr30703.pdf

 

Notice Regarding the Trademark Official Gazette (22Jun2007)

Notice Regarding the Trademark Official Gazette (22Jun2007)

The Office expects the size of each of the July issues of the T rademark Official Gazette (OG) to be somewhat larger than usual.   During the last six months, issues of the OG have generally included between 4,000 and 5,000 marks published for opposition.  The Office expects that 6,000 - 7,000 marks may publish for opposition each week during July.  In addition, the number of registration certificates issued each week in July will be larger than normal.

The larger OGs arise out of the Office's elimination of an unnecessary review of OG data, a cost-cutting, efficiency measure in the production of the OG.  This measure decreases  the time between approval for publication by the Examining Attorney and publication in the OG by about one week.  The larger OGs in July result from a temporary overlap of work processed  under the old and new production systems.  After July, the size of the OG is expected to decrease, and will reflect work processed only under the new production system.

 

USPTO, U.S. Chamber Team with NC Secretary of State to Educate Local Businesses about the Risks of Counterfeiting and Piracy and the Importance of Intellectual Property Protection (08Jun2007)

Posted by Kristen Cichocki at June 10, 2007 08:21 PM

MEDIA ADVISORY Contact: Jennifer Rankin Byrne (571) 272-8400 or Jennifer.Rankin_Byrne@uspto.gov

June 08, 2007 #07-23

USPTO to Test Impact of Public Input on Improving Patent Quality in the Computer Technologies (07Jun2007)

 

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

June 07, 2007 #07-21

Pilot Concerning Public Submission of Peer Reviewed Prior Art [signed 04 June 2007] [PDF] (06Jun2007)

Pilot Concerning Public Submission of Peer Reviewed Prior Art [signed 04 June 2007] [PDF] (06Jun2007)

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

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

Simplification of the Electronic Exchange of Priority Documents [signed 04 June 2007] [PDF] (06Jun2007)

Simplification of the Electronic Exchange of Priority Documents [signed 04 June 2007] [PDF] (06Jun2007)

 

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

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

REPORT OF THE UNITED STATES PATENT AND TRADEMARK OFFICE CONCERNING THE PAPER SEARCH COLLECTION(08Jun2007)

REPORT OF THE UNITED STATES PATENT AND TRADEMARK OFFICE CONCERNING THE PAPER SEARCH COLLECTION
OF REGISTERED MARKS THAT INCLUDE DESIGN ELEMENTS

(08Jun2007)

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

http://www.uspto.gov/web/trademarks/reports/reportcongress20070604.pdf

USPTO CELEBRATES A DECADE OF TELEWORK (04June07)

Posted by Kristen Cichocki at June 4, 2007 09:38 PM

PRESS RELEASE
Contact:
Jennifer Rankin Byrne or
Ruth Nyblod
(571) 272-8400 or
jennifer.rankin_byrne@uspto.gov
ruth.nyblod@uspto.gov

USPTO CELEBRATES A DECADE OF TELEWORK

The Department of Commerce's United States Patent and Trademark Office (USPTO) today celebrated the ten-year anniversary of its Trademark Work at Home program, the agency's first telework initiative. Based on this successful model, the USPTO expanded its telework offerings to include business units across the agency, with more than 3,000 of the USPTO's approximately 8,500 employees currently participating in some form of telework. Over the past decade, USPTO has received accolades as a leader in the federal government for its successful and innovative telework programs.

The Trademark Work at Home program started as a small pilot project, with 18 trademark examining attorneys working from home three days per week and sharing office space with other program participants two days a week. The hope was that current technology could be leveraged to allow employees to enjoy the benefits of working remotely, while still meeting the same qualitative and quantitative goals as their colleagues who worked in the office five days a week.

After the Trademark Work at Home pilot proved to be successful, the USPTO ultimately grew its telework initiative to include patent examiners and employees in other business units throughout the agency. The ability to telework continues to gain popularity among USPTO employees. Among trademark examining attorneys, 85% of those who are eligible choose to telework. In the patents organization, the USPTO has a goal that 3,000 patent examiners will be teleworking by 2011.

Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, said, "Today we celebrate the anniversary of our Trademark Work at Home Program, which helped to demonstrate how beneficial the practice of telework could be to our entire agency. Telework programs are critical to our strategic vision, and we look forward to working with the Office of Personnel Management and Congress to expand these programs to eventually allow for a nationwide work force."

Telework offers countless benefits to the USPTO, its employees and the environment, including:

• Employee Quality of Life: Allowing employees to telework gives them more time with their loved ones and less time on the road. USPTO employees report that the ability to telework helps them have a better balance between their professional and personal lives.


• Employee Retention: The USPTO has seen that offering employees the ability to telework helps with employee retention, allowing the agency to retain highly qualified employees, saving hiring and training costs and contributing to a high quality of work.


• Maximizing Office Space: As more USPTO employees choose to telework, more office space is made available. This, in turn, gives the agency more flexibility to hire more staff without having to acquire and pay for additional space.


• Reducing Emissions: Telework can mean a significant reduction in auto emissions. For example, among the nearly 950 trademark examining attorneys and patent examiners working remotely four days a week, auto emissions are reduced up to 5,000 tons per year*, compared to if they drove to the office every day.

Rather than taking a “one size fits all” approach, the USPTO has more than a dozen telework programs to address the specific needs of its business units and employees. All of these programs follow procedure set forth in the USPTO Enterprise-wide Telework Policy and are overseen by an agency-wide telework coordinator.

USPTO has received a number of awards for its Trademark Work at Home program. These awards include the 2007 Work-Life Innovative Excellence Award presented by the Alliance for Work-Life Progress, the Telework Program with Maximum Impact on Government for 2006 by the Telework Exchange Tele-Vision Awards; the Telework in the Federal Government Leadership Award for 2004; and several others.

USPTO to Hold Small Business Seminar in Raleigh June 13 (19May2007)

Posted by Kristen Cichocki at May 19, 2007 10:00 AM

USPTO to Hold Small Business Seminar in Raleigh June 13 (19May2007)

U.S. Chamber and North Carolina Co-Sponsoring

The USPTO is joining forces with the United States Chamber of Commerce and the state of North Carolina to hold a free conference on counterfeiting and piracy on June 13 from 9:30 a.m. to 4 p.m. The event will be held at the McKinnon Center on the campus of North Carolina State University in Raleigh. Jon Dudas, Under Secretary of Commerce for Intellectual Property will speak along with North Carolina Secretary of State, Elaine Marshall and Ron Calia, Senior Manager Global Anti-Counterfeiting and Piracy Initiative, U.S. Chamber of Commerce.

Counterfeiting and piracy cost the U.S. economy between $200 and $250 billion per year in lost sales. It is responsible for the loss of 750,000 American jobs and poses a real threat to health and safety. The trade in illicit goods steals North Carolina jobs, North Carolina tax dollars, and threatens the lives of North Carolina citizens. Seminar attendees will learn what state and government resources are available to protect brands, how they can work with law enforcement to safeguard intellectual property, how to protect the supply chain here and abroad, and what the USPTO and Chamber are doing to defend American business as a whole.

Other speakers on the agenda include: Brian Monks, Vice President, Anti-Counterfeiting Operations, Underwriters Laboratorie,Christina Garner, Associate Licensing Counsel, NASCAR and Del Richburg, Supervisory Special Agent, Assistant Special Agent in Charge, Charlotte Office, Immigration and Customs Enforcement

There is no charge for the seminar and lunch will be provided. Registration is required.

>> Register now at http://ncsoskb.com (Use REGISTRATION CODE: June 13)

Modern Marvels Invent Now Winner Announced

Posted by Kristen Cichocki at May 15, 2007 12:03 PM

Modern Marvels Invent Now Winner Announced

Michael Sykes, who invented an environmentally friendly, economical and efficient system for building houses, has been selected as the Grand Prize Winner in the annual Modern Marvels Invent Now Challenge. The Challenge, a national competition in search of America’s next great inventor is co-sponsored by the History Channel, the National Inventors Hall of Fame Foundation and the United States Patent and Trademark Office (USPTO). Sykes was one of five finalists and will receive $25,000. In addition, his invention, the Enertia Building System, will be featured along with the other four finalists during Modern Marvels Invent Now Week on the History Channel May 15-17. Check local listings for times.

In conjunction with this year’s challenge, the USPTO and the National Inventors Hall of Fame Foundation hosted a two day independent inventors conference at the New York Academy of Sciences in Manhattan. The conference featured presentations by top USPTO officials, successful inventors and entrepreneurs.

Coming Soon: E-Mail with Direct Link to Issued Trademark Office Actions and Appeal Briefs to Replace E-Mailed Office Actions/Appeal Briefs (09May2007)

Posted by Kristen Cichocki at May 11, 2007 11:59 AM

Coming Soon: E-Mail with Direct Link to Issued Trademark Office Actions and Appeal Briefs to Replace E-Mailed Office Actions/Appeal Briefs  (09May2007)

On May 26, 2007 , the USPTO will begin the transition to a new method of notification of applicants who have authorized e-mail communication with the USPTO of each issued Trademark Office action or Examining Attorney's Appeal Brief by an e-mail message containing a direct link to the Office action or Appeal Brief 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 or Appeal Brief attached.  Implementation will begin with a small number of USPTO attorneys using the new e-mail communication method for Office actions and Examining Attorney's Appeal Briefs.  Full implementation with all USPTO attorneys using the new e-mail communication is expected in June 2007. 

This new approach should benefit both applicants and the USPTO.   For example, discontinuing the sending of an e-mail with the Office action/Appeal Brief 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/Appeal Brief 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.

Commerce Secretary Gutierrez Names Margaret J.A. Peterlin Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (11May2007)

Secretary of Commerce Carlos M. Gutierrez has appointed Margaret J.A. Peterlin to serve as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the Commerce Department’s United States Patent and Trademark Office (USPTO).

“Margaret is a tremendous asset to the USPTO. With an impressive track record of success across several disciplines, she has established herself as a proven leader, strategic legal thinker, and knowledgeable legislative tactician,” said Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.  “Margaret will apply these skills to USPTO's challenges, which she well understands from her time representing the leadership of the U.S. House of Representatives.  Margaret's leadership will be instrumental in the USPTO's efforts to work with applicants to enhance the quality of their applications, process patents and trademarks in a timely manner, and operate in a way that motivates our employees and inspires our international partners.”

Before joining the USPTO, Ms. Peterlin was Counsel for Legal Policy and National Security Advisor for the Speaker of the U.S. House of Representatives, J. Dennis Hastert.   In this role, she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as intellectual property protection, and international relations issues. 

She previously was General Counsel to Richard Armey, Majority Leader of the U.S. House.   She clerked on the Fifth Circuit Court of Appeals for Judge Jerry E. Smith.  Ms. Peterlin also served as an Officer in the U.S. Navy for four years, working in the communications field.

A native of Daleville, Alabama, Ms. Peterlin holds a bachelor of arts from the College of the Holy Cross.  She earned a legal degree cum laude from the University of Chicago, where she was the founding Editor in Chief of The Chicago Journal of International Law.   She is a member of the New York State Bar.

United States Patent and Trademark Office Notification of Spring 2007 Business Methods Partnership Meeting (08May2007)

Posted by Kristen Cichocki at May 8, 2007 10:28 AM

United States Patent and Trademark Office Notification of Spring 2007 Business Methods Partnership Meeting (08May2007)

As part of the March 2000 business method action plan, the United States Patent and Trademark Office (USPTO) announces the 2007 Business Methods Partnership Meeting to be hosted by the director and managers of the Business Methods workgroup. Members of the public are invited to attend the Partnership Meeting. The Partnership Meeting is an opportunity for an informal discussion on topics such as current interpretations of subject matter eligibility under 35 USC 101, issues surrounding tax strategy patents, classification and application assignment including the class 705 reclassification project, and other topics specific to business methods. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.

DATES AND LOCATION: The Partnership Meeting will be held on Tuesday, June 19, 2007, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM (SOUTH), Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.

Requests for Attendance at the Partnership Meeting: Requests for attendance will be honored on a first-come, first-served basis according to the time and date of receipt of each request. In order to ensure a broad cross-section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms must designate their official representatives. Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting. Non-accepted requesters will also be notified by the USPTO. No one will be permitted to attend without an accepted request.

Requests for attendance at the Partnership Meeting should be submitted to the attention of Jeff Smith via facsimile at (571) 273-6763, or by electronic mail through the Internet to jeff.smith4@uspto.gov. Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Requests must be received by June 5, 2007.

FOR FURTHER INFORMATION, PLEASE CONTACT: Jeff Smith by telephone at (571) 272-6763 (in addition to the facsimile number and e-mail address given above).

USPTO’s EFS-Web Electronic Patent Filing System Celebrates Successful First Year (02May2007)

Posted by Kristen Cichocki at May 2, 2007 12:13 PM

USPTO's EFS-Web Electronic Patent Filing System Celebrates Successful First Year

Today More than Half of All New Patent Applications Filed Through EFS-Web

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that EFS-Web, its Web-based filing system for patent applications, has exceeded the goals set forth for its first year.   Most notably, for the first time in USPTO’s history, more new patent applications are being filed electronically each week than through the traditional paper application process.   In addition, more than 700,000 applications and related documents have been filed using EFS-Web to date.

These milestones were celebrated today in a ceremony at the USPTO headquarters in Alexandria, Virginia, where Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas also recognized the patent system users and USPTO staff who made EFS-Web’s first year a success.  Special guest speakers included representatives from EFS-Web users Motorola and the law firm of Fish & Richardson, as well as independent inventor Michael Gurin.  (See below for a full list of law firms, corporations and individuals who helped make EFS-Web’s first year a success.)

“EFS-Web has exceeded our expectations for its first year, and is a great step forward in making IP protection easier and more efficient, while improving patent quality,” said Under Secretary Dudas.  “As corporations, law firms and inventors alike discover the many benefits of filing patent applications electronically, we expect the adoption rate to grow dramatically.”

Jonathan Meyer, SVP for Motorola, said, “We have found using EFS-Web has helped us to greatly streamline the patent process, saving us both time and money.  We appreciate that the USPTO sought our input, and the input of other patent filers, as they were creating EFS-Web.  The result is a system that truly meets our needs.”

Rolf Hille, Director of Practice Systems for Fish & Richardson, said, “As we continue to shift toward a paperless operation, the availability of EFS-Web has greatly helped us in accelerating that transition.  In doing so, we are able to be more efficient and accurate in our day-to-day operations and in our efforts to secure patents for our clients.”

Inventor Michael Gurin, President of CogniTek Management Systems, added, “As an independent inventor in the rapidly changing worlds of alternative energy and nanotechnology, I have found that EFS-Web has become an important part of how I do business.  In fact, I’ve filed more than a dozen patent applications using EFS-Web in the last year alone.”

The shift from a paper-based system to an electronic environment offers several  advantages for patent filers.  Patent system users can file applications and related documents virtually anytime and anywhere.  Filers may use their existing software, and may submit documents by simply attaching PDF files.  EFS-Web offers additional practical flexibility to the intellectual property community by allowing staff to file documents prepared and reviewed by patent attorneys.  Filers may also pay filing fees over the Internet.

EFS-Web submissions are automatically processed through the USPTO.  Patent filers receive rapid access to their applications through the Patent Application Information Retrieval (PAIR) system, so they can view their submissions online and confirm that documents have been securely and accurately received.  EFS-Web also offers visual proof that patent applications and documents have been received in the form of an automatic electronic receipt.

Developed with extensive input from the intellectual property community, EFS-Web launched on March 16, 2006, as a simple, safe, and secure way to file patents online.   More than 80 corporations, law firms and independent inventors participated in the EFS-Web pilot program.  Prior to deployment, nearly 200 pilot participants attended EFS-Web onsite and Web-based trainings.

Coming Soon: E-Mail with Direct Link to Issued Trademark Office Actions and Appeal Briefs to Replace E-Mailed Office Actions/Appeal Briefs (27Apr2007)

Posted by Kristen Cichocki at April 27, 2007 01:08 PM

Coming Soon: E-Mail with Direct Link to Issued Trademark Office Actions and Appeal Briefs to Replace E-Mailed Office Actions/Appeal Briefs  (27Apr2007)

On or about May 26, 2007 , the USPTO will notify applicants who have authorized e-mail communication with the USPTO of each issued Trademark Office action or Examining Attorney's Appeal Brief by an e-mail message containing a direct link to the Office action or Appeal Brief 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 or Appeal Brief attached.

This new approach should benefit both applicants and the USPTO.   For example, discontinuing the sending of an e-mail with the Office action/Appeal Brief 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/Appeal Brief 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.

Electronic Exchange of Priority Documents [signed 23 April 2007]

Posted by Kristen Cichocki at April 25, 2007 09:55 AM

Electronic Exchange of Priority Documents [signed 23 April 2007]

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

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

Correspondence With the Madrid Processing Unit of the United States Patent and Trademark Office (16Apr2007)

Posted by Kristen Cichocki at April 16, 2007 08:11 PM

Correspondence With the Madrid Processing Unit of the United States Patent and Trademark Office (16Apr2007)

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr18907.pdf

New York Regional Independent Inventors Conference to be Held May 12 and 13 (13APR2007)

Posted by Kristen Cichocki at April 14, 2007 03:24 PM

New York Regional Independent Inventors Conference to be Held May 12 and 13

Top officials from the United States Patent and Trademark Office, successful inventors and entrepreneurs will headline the agency's New York Regional Independent Inventors Conference.  The event will be held May 12-13 at the New York Academy of Sciences in New York City. 

Registration is now open for this two-day event. The registration fee of $100 per person includes all sessions and presentations, morning and afternoon refreshments and lunch for both days.

For additional information about this event, call the Inventors Assistance Program at 571-272-8850.

To register by phone call the National Inventors Hall of Fame at 330-849-6903. To register on-line go to: http://www.invent.org/iic/

The USPTO.GOV website and all USPTO E-Business systems will be inaccessible between 10 PM and 12 Midnight ET on Saturday, 14 April 2007.

Posted by Kristen Cichocki at April 11, 2007 07:56 PM

The following notice was posted on the USPTO.GOV website on April 11, 2007:

The USPTO.GOV website and all USPTO E-Business systems will be inaccessible between 10 PM and 12 Midnight ET on Saturday, 14 April 2007.

USPTO Launches National Campaign to Inspire Young Inventors (10APR2007)

USPTO Launches National Campaign to Inspire Young Inventors (10APR2007)

The United States Patent and Trademark Office, together with the Advertising Council and the National Inventors Hall of Fame Foundation (NIHFF), today launched a national, multimedia public service advertising (PSA) campaign to engage a new generation of children in innovation. The campaign seeks to make inventing and developing new ideas part of American children's lives. The PSAs, which can be viewed online, are being distributed to 28,000 media stations nationwide this week. All of the new PSAs will air and run in advertising time and space donated by the media. The spots direct viewers to a website that has been created for the campaign, InventNow.org.

U.S. Secretary of Commerce Carlos M. Gutierrez unveiled the Inspiring Invention campaign at the National Press Club. "In an innovation-driven economy, the key to our future success and competitiveness lies in making sure we are sharing America's culture of innovation with our young people," said Gutierrez. "In doing so, we will prepare them to compete more effectively in the global marketplace and ensure that the United States maintains our global economic leadership."

USPTO's Under Secretary Jon Dudas was also on hand to unveil the campaign. "We see the Inspiring Invention campaign as a wonderful opportunity to show kids how fun and rewarding it can be to create. We hope that children who watch these ads will want to become more inventive; explore math, science, and other creative fields; and then share their new ideas -- to continue America's legacy of innovation."

For generations, the United States has been a recognized global leader in technology and innovation. While the country represents only 5 percent of the world's population, it accounts for nearly one-third of the world's science and engineering researchers and 40 percent of all research and development, according to the Council on Competitiveness However, with increased economic competition globally, it's widely recognized that the United States must take steps now to maintain its leadership. In particular, America must ensure we inspire future generations of innovators.

The new campaign, created in conjunction with ad agency Publicis & Hal Riney in San Francisco, aims to inspire children (specifically the "tweens," ages 8 to 11) to recognize how their imaginations can lead to the technological advances of the future. The campaign communicates that there is a role for every kind of unique curiosity and imaginative idea as it relates to invention. Ultimately, the goal is to motivate children to pursue inventing and innovating as part of their educations and, later, in their careers.

Developed with extensive research with inventors and children, the campaign includes new television, radio, outdoor and Web advertising that feature ordinary children creating inventions to solve everyday problems. The PSAs communicate to children that "anything is possible" and encourage them to "keep thinking." The ads direct audiences to visit a new comprehensive website, www.InventNow.org, to explore and discover their own innate inventiveness and curiosity. Designed by VPI (Visual Perspectives Internet), the site features interactive games and allows children to explore their inventive interests in space, sports, design and entertainment.

"Research conducted for our new campaign found that children are naturally curious and inventive, but they do not realize the impact of their creativity," according to Peggy Conlon, President & CEO of the Ad Council. "We are proud to join with the United States Patent and Trademark Office and The National Inventors Hall of Fame Foundation on this wonderful effort to help children see that there are no limits to their creativity and imagination and that they can have a role in the technological advances of our future if they just 'keep thinking."

The "Inspiring Invention" campaign is one of several educational initiatives in which The National Inventors Hall of Fame Foundation and the United States Patent and Trademark Office partner to encourage children to think inventively. Among these initiatives are the National Inventors Hall of Fame's Camp Invention and Club Invention programs, which are supported by the USPTO. Camp Invention, now in its 17th year, is a summer day camp that fosters creativity and inventive thinking skills that allow children to learn through hands-on activities, subject immersion, and discovery. In 2007, more than 60,000 students will attend Camp Invention in 47 states. Club Invention is an after-school program directed by the Hall of Fame that extends scientific inquiry-based education to after-school sites

National Inventors Hall of Fame Inductee and inventor of the modern microphone Dr. James West said, "This campaign relates directly to our mission of inspiring invention and creativity. It's a prime opportunity for us to capture the attention of children and share with them the wonders of science and technology, inspiring them enough to become involved in life-long endeavors in these fields. Our future, and theirs, will be much richer because of it."

Nanotechnology Customer Partnership Meeting May 3, 2007 (09APR2007)

Posted by Kristen Cichocki at April 10, 2007 09:18 AM

Nanotechnology Customer Partnership Meeting May 3, 2007

United States Patent and Trademark Office
Alexandria, Virginia 22313
South Auditorium, Madison Building

This Nanotechnology Customer Partnership initiative is designed and developed to be a forum to share ideas, experiences, and insights between individual users and the USPTO. The USPTO does not intend to use these customer partnership groups to arrive at a group consensus. Individual opinions are sought from varying participants, and the meetings are intended to be informal in nature. These customer partnership groups are formed with full recognition of the USPTO's responsibility under the Federal Advisory Committee Act (FACA), and are not established as FACA compliant committees.

We value our customers and the feedback provided from individual participants is important in our efforts to continuously improve the quality of our products and services. Your willing participation in this informal process is helpful in providing us with new insights and perspectives.

DATE AND LOCATION : This meeting is scheduled for Thursday, May 3, 2007, from 1:00 pm to 5:00 pm, in the South Auditorium, Madison Building, Concourse Level, located at 600 Dulany Street, in Alexandria, Virginia.

Requests for Attendance at the Partnership Meeting

Due to space limitations, please RSVP by e-mail to jill.warden@uspto.gov or by telephone to Jill Warden at (571) 272-1267 to confirm your attendance. If it becomes necessary to restrict the number of attendees, we will do so on a first come-first served basis.

Under Secretary Dudas Addresses U.S. Chamber Intellectual Property Summit in Beijing and Also Meets with Heads of Chinese IP Offices(09APR2007)

Posted by Kristen Cichocki at April 9, 2007 01:58 PM

Under Secretary Dudas Addresses U.S. Chamber Intellectual Property Summit in Beijing and

Also Meets with Heads of Chinese IP Offices(09APR2007)

Meetings further deepen U.S. cooperation with Chinese IP Offices and speech outlines what governments are doing to address exponential worldwide growth in patent applications and intellectual property theft

The U.S. Under Secretary of Commerce for Intellectual Property (IP) and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas recently spoke at the Global Forum on Intellectual Property Rights Protection and Innovation in Beijing where he stressed the need for strong intellectual property protection and enforcement to foster innovation and wealth creation. The meeting in late March was hosted by the U.S. Chamber of Commerce and China’s Council for the Promotion of International Trade.

This was Mr. Dudas’ seventh trip to China to work on IP issues. He used the opportunity to meet with representatives of Chinese IP-related agencies to further bilateral cooperation on finding solutions to IP protection and enforcement challenges. Mr. Dudas met with Commissioner Tian Lipu of the State Intellectual Property Office (SIPO), China's Patent Office for their second heads-of-offices meeting. The USPTO and SIPO have witnessed dramatic growth in patent application filings, and last year, the two agencies signed a work plan of strategic cooperation intended to reduce the workloads of both agencies and to further cooperation. Under the work plan, the USPTO has implemented an examiner exchange program and initiated an automation expert group meeting, as well as providing training to SIPO examiners and managers on biotechnology patent examination, examiner training and certification, and quality assurance.  Cooperative programs planned for the future include training of SIPO examiners at the USPTO Patent Academy, a workshop on traditional knowledge, genetic resources, and folklore, and an IP enforcement program.

The USPTO is pursuing similar agreements for future office-to-office exchanges with China’s Trademark and Copyright Offices.  While in China, Mr. Dudas met with Vice Minister Li Dongsheng of State Administration for Industry and Commerce to discuss trademark protection and enforcement. The two countries tentatively agreed to a number of joint programs on trademarks in 2007, including a May roundtable on the filing of abusive trademark applications, a June workshop on geographical indications, and trademark examination training at the USTPO in September.  

Mr. Dudas and Vice Minister Liu Binjie of China’s General Administration of Press and Publication (GAPP) agreed to enhance institutional cooperation on copyrights by signing a memorandum of understanding (MOU) to be finalized in the next few months. Under the MOU, USPTO and GAPP will work together to exchange information on copyright matters, to exchange technical assistance, and work jointly to combat piracy.  Mr. Dudas also secured agreement from GAPP to help resolve jurisdictional disputes that have hindered textbook piracy enforcement.
 
In addition, Mr. Dudas met with China’s Supreme People’s Court and State Council’s Legislative Affairs Office to discuss China’s judicial IP enforcement and pending amendments to China’s IP laws, as well technical exchanges and cooperation.

U.S. Commerce Secretary Carlos M. Gutierrez to Unveil New Campaign to Inspire Invention (5April2007)

Posted by Kristen Cichocki at April 6, 2007 12:18 PM

MEDIA ALERT
Contacts:
Jennifer Rankin Byrne, USPTO (571) 272-0422
Rini Paiva, NIHFF, (330) 849-6916
Ellyn Fisher, Ad Council, (212) 984-1964

U.S. Commerce Secretary Carlos M. Gutierrez to Unveil New Campaign to Inspire Invention

April 5, 2007

U.S. Secretary of Commerce Carlos M. Gutierrez will join the United States Patent and Trademark Office, the National Inventors Hall of Fame Foundation and The Advertising Council to unveil a national public service advertising (PSA) campaign designed to engage a new generation of children to make innovation, invention and technological development an integral part of their lives.

WHO	• Secretary Carlos M. Gutierrez, U.S. Department of Commerce • Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office • Kathy Crosby, Senior Vice President, The Advertising Council • Dr. James West, National Inventors Hall of Fame Inductee and Inventor of the Modern Microphone • Local Elementary School Students
WHEN	Tuesday, April 10, 9:30 a.m.
WHERE	The National Press Club (Zenger Room) 529 14th Street NW Washington, DC 20045

United States Patent and Trademark Office

Since 1790, the basic role of the United States Patent and Trademark Office (USPTO) has remained the same: to promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries (Article 1, Section 8 of the United States Constitution). Today, the USPTO is a federal agency in the Department of Commerce, headquartered in Alexandria , Virginia . Through the issuance of patents, the USPTO encourages technological advancement by providing incentives to invent, invest in, and disclose new technology worldwide. Through the registration of trademarks, the agency assists businesses in protecting their investments, promoting goods and services, and safeguarding consumers against confusion and deception in the marketplace. By disseminating both patent and trademark information, the USPTO promotes an understanding of intellectual property protection and facilitates the development and sharing of new technologies worldwide.

  National Inventors Hall of Fame Foundation

The not-for-profit National Inventors Hall of Fame Foundation is the premier organization in America dedicated to honoring and fostering creativity and invention. Each year a new class of inventors is inducted into the Hall of Fame in recognition of their patented inventions that make human, social, and economic progress possible. Founded in 1973 by the U.S. Patent and Trademark Office and the National Council of Intellectual Property Law Association, the Hall's permanent home is Akron, Ohio, where the inventors in the Hall are honored and from where it administers its national programs, including Camp Invention ® , Club Invention ® , and the Collegiate Inventors Competition ® . For more information, visit www.invent.org .

  Ad Council

The Ad Council is a private, non-profit organization with a rich history of marshalling volunteer talent from the advertising and media industries to deliver critical messages to the American public. Having produced literally thousands of PSA campaigns addressing the most pressing social issues of the day, the Ad Council has effected, and continues to effect, tremendous positive change by raising awareness, inspiring action, and saving lives. For more information, please visit www.adcouncil.org .

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)

April 2007 Revision of Patent Cooperation Treaty Procedures, Notice of proposed rule making (16Feb2007)

Posted by Kristen Cichocki at February 20, 2007 10:30 AM

April 2007 Revision of Patent Cooperation Treaty Procedures

Notice of proposed rule making (16Feb2007)

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr7583.pdf

Deputy Under Secretary of Commerce Announces FY 2008 Budget Proposal for USPTO (05Feb2007)

Posted by Kristen Cichocki at February 7, 2007 07:08 PM

Deputy Under Secretary of Commerce Announces FY 2008 Budget Proposal for USPTO
President's request provides full access to fees

In a telephone press conference on February 5, Steve Pinkos, deputy under secretary of Commerce for Intellectual Property, announced the President's fiscal year 2008 budget request for the Department of Commerce's United States Patent and Trademark Office (USPTO) is $1.916 billion. This is the fourth consecutive year the President's budget recommends full access to the agency's anticipated fee collections.

"The President's budget request for fiscal year 2008 allows the USPTO to build on its recent successes in improving quality and increasing the number of patent and trademark examinations," noted Deputy Under Secretary Pinkos.   "It also provides the resources to continue our record hiring of patent examiners, and to expand our efforts to protect U.S. intellectual property around the globe."

Patent examiners completed 332,000 patent applications in 2006, the largest number ever, while achieving the lowest patent allowance error rate -- 3.5% -- in over 20 years. At 54%, the patent allowance rate also was the lowest on record.  Patent allowance rate is the percentage of applications reviewed by examiners that are approved. The agency also processed a record number of trademark applications in 2006.  USPTO trademark examining attorneys took final action on 378,111 trademark applications, a 36% increase over the previous year, and achieved a record low final action error rate, with mistakes found in only 3.6% of the trademark applications reviewed in FY 2006.

In FY 2008, the USPTO anticipates hiring an additional 1,200 patent examiners and to continue expanding the agency's award-winning telework efforts. The proposed budget also allows the agency to continue toward its goal of processing all patent and trademark applications electronically.  Additionally, the President's request will allow USPTO to continue working internationally to protect American intellectual property, including expanding its Global Intellectual Property Academy and posting additional IP experts abroad. 

United States and Australia to Extend Cooperation on Patent Search and Examination Services (07Feb2007)

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

United States and Australia to Extend Cooperation on Patent Search and Examination Services

On January 24, 2007, the U.S. Patent and Trademark Office (USPTO) and IP Australia agreed to extend a project under which IP Australia provides search and examination services on international patent applications filed with the USPTO under provisions of the Patent Cooperation Treaty (PCT).

This agreement is a continuation of the project launched between the two offices in 2005, and is scheduled to begin on March 1, 2007 and run 12 months.

Cooperation on PCT search and examination work is part of the USPTO's ongoing efforts to improve examination efficiency and quality, while reducing the growing backlog of U.S. national patent applications waiting to be examined. USPTO found that the quality and accuracy of the work done by IP Australia during phase one warrants extending the project and increasing the number of applications it processes.

In this phase of the project, IP Australia will process up to 1,200 PCT applications over the course of one year, covering a range of technologies. The USPTO will continue to review IP Australia's work to ensure that it meets USPTO standards for quality and accuracy.

"High quality and timely examination of patent applications advances science and technology and creates the certainty innovators need in capital driven markets," noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. "A growing backlog is detrimental to U.S. innovation and the economy. This project builds on the long history of cooperation between the USPTO and IP Australia and gives us the ability to open another front in our battle to reduce our growing backlog."

IP Australia's Director General, Ian Heath explained why IP Australia was pleased to sign up to a new phase of the project, " Participation in this project is a significant opportunity for IP Australia to move closer to its vision of being an office of choice and for enhancing its international reputation. It represents a further step towards achieving the goal of reducing re-work between offices and making mutual exploitation of work a reality for the ultimate benefit of Australian innovators and the IP system as a whole. "

Each year, the USPTO receives about 50,000 international PCT applications in addition to nearly 450,000 national applications. Cooperation with IP Australia will allow the USPTO to dedicate more resources to examining the over 800,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.

The PCT is an international agreement that simplifies the filing of patent applications in its 135 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and IP Australia are among the national patent offices authorized to conduct PCT searches and examinations.

USPTO To Unveil FY 2008 Budget (5 Feb 2007)

Posted by Kristen Cichocki at February 5, 2007 10:45 AM

USPTO To Unveil FY 2008 Budget
[Call in starting at 1:10 p.m. ET]

Deputy Under Secretary of Commerce for Intellectual Property Steve Pinkos will unveil highlights of the U.S. Patent and Trademark Office's (USPTO) FY 2008 budget request by teleconference on Monday, February 5, 2007.

WHO	Deputy Under Secretary of Commerce for Intellectual Property Steve Pinkos
WHAT	Teleconference - Highlights of USPTO's FY 2008 budget.
WHEN	Monday, February 5, 2007 1:15 p.m. ET Reporters should call 1-888-390-8568 , passcode USPTO , starting at 1:10 p.m. ET to participate.

Note: The passcode (USPTO) and leader's name (Stephen Pinkos) will be required to join the call.

Deputy Under Secretary Pinkos will take questions after his presentation.

USPTO Names Maryland Library to Support Intellectual Property Needs of Inventors and Entrepreneurs (31Jan2007)

Posted by Kristen Cichocki at January 31, 2007 02:29 PM

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

January 31, 2007

USPTO Names Maryland Library to Support Intellectual Property Needs of Inventors and Entrepreneurs
University of Baltimore School of Law Library Designated a Patent and Trademark Depository

The Commerce Department's United States Patent and Trademark Office (USPTO) today announced the designation of the University of Baltimore School of Law Library as a Patent and Trademark Depository Library (PTDL). PTDLs provide access to intellectual property information including more than 7 million patents and over 4 million active or pending trademark registrations, as well as other related information in various print and electronic media to support the diverse intellectual property needs of the public.

"The new PTDL gives Baltimore area students, faculty, researchers, inventors and entrepreneurs a unique resource right in their community," said Under Secretary of Commerce for Intellectual Property Jon Dudas. "The depository program makes the wealth of information contained only in patent and trademark documents easily accessible, and the library provides expert staff assistance in its usage."

The University of Baltimore serves a diverse student population with an emphasis on professional degrees and certificate programs for working adults. In addition, the University of Baltimore School of Law and Merrick School of Business work hand-in-hand through initiatives such as the "Lab to Market" program that fosters innovation in Maryland. The University of Baltimore School of Law Library is located in the John and Frances Angelos Law Center building at 1429 Maryland Avenue. It is easily accessible by car via I-83, Baltimore Light Rail, Baltimore Metro, and Pennsylvania Station for Amtrak and MARC Maryland commuter trains.

The PTDL will open to the public on February 1, 2007, and a grand opening celebration will be held at the library in Baltimore at a later date.

USPTO's patent and trademark depository library program is a nationwide network of public, state and academic libraries authorized to disseminate patent and trademark information and to support inventors, intellectual property attorneys and agents, business people, researchers, entrepreneurs, students, historians and the general public who are not able to come to USPTO's offices in Alexandria, Va. Services at the libraries are free, and include assistance in accessing and using patent and trademark documents, training on USPTO databases, obtaining access to the USPTO Web site, and hosting public seminars on intellectual property topics for novice and experienced innovators.

The patent and trademark depository library program began in 1871 when federal law first provided for the distribution of printed patents to libraries for use by the public. The addition of the University of Baltimore School of Law Library to the PTDL network makes a total of 85 libraries located in 47 states, the District of Columbia, and Puerto Rico. A list of all the current libraries can be found on USPTO's Web site at www.uspto.gov .

Change in Procedure for Handling Nonprovisional Applications Having Omitted Items (30Jan2007)

Posted by Kristen Cichocki at January 30, 2007 10:14 AM

Change in Procedure for Handling Nonprovisional Applications Having Omitted Items

[signed 29 January 2007]

[30 January 2007]

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

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

 

U.S. and Republic of the Philippines Sign Memorandum of Understanding on Intellectual Property Rights (29Jan2007)

Posted by Kristen Cichocki at January 29, 2007 02:54 PM

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

January 29, 2007
#07-06

U.S. and Republic of the Philippines Sign Memorandum of Understanding on Intellectual Property Rights
Collaboration Will Help Support U.S. Commerce Globally

The Department of Commerce's United States Patent and Trademark Office (USPTO) announced today that Jon Dudas, under secretary of Commerce for intellectual property and Adrian S. Cristobal, Jr., director general of the Intellectual Property Office of the Republic of the Philippines (IP Philippines), signed a Memorandum of Understanding (MOU) on technical cooperation between the two intellectual property offices.

As trading partners, the United States and the Philippines enjoy a close economic relationship that depends on strong intellectual property protection for their innovators and businesses.

"The USPTO appreciates this opportunity to work with the Philippines," said Under Secretary Dudas. "We are confident that, together, we will contribute to enhancing administration of intellectual property rights for IP users in both the Philippines and the United States."

Under the terms of the MOU, the USPTO and IP Philippines will cooperate on a range of intellectual property issues. The USPTO will provide assistance on the development of patent and trademark examination manuals and automated patent and trademark examination tools, as well as provide assistance with modernization projects that the two sides identify. The two offices will exchange information on a regular basis regarding their respective examination practices and the intellectual property laws of their respective countries.

 

USPTO Announces New Key Member to Management Team (23Jan2007)

Posted by Kristen Cichocki at January 24, 2007 12:38 PM

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

January 23, 2007
#07-05

USPTO Announces New Key Member to Management Team
John Love Named Deputy Commissioner for Patent Examination Policy

Under Secretary of Commerce for Intellectual Property Jon W. Dudas has named John J. Love deputy commissioner for patent examination policy for the United States Patent and Trademark Office (USPTO).  Love most recently served as the acting deputy commissioner for patent examination policy.

As deputy commissioner, Love is responsible for changes in patent practice, rules of practice and procedures, examining priorities, and classification of technological arts.  He leads the operations of the Patent Legal Administration, Patent Cooperation Treaty (PCT) Legal Administration, the Office of Petitions, and International Liaison.

"John Love is an important member of USPTO's senior management team," noted Under Secretary Dudas. "With his many years of service and dedication to the patent system, I know he will make major contributions by providing the legal and practical guidance necessary to ensure high-quality, efficient patent examination."

"John's extensive patent practice and policy experience, wealth of legal knowledge, and proven leadership abilities make him an invaluable asset to the patent team. His rapport with the patent examining corps, managers and the public will help us expertly meet the many challenges of the coming years ," said Commissioner for Patents John Doll.

Love joined the USPTO in 1969 and has served the agency in a variety of leadership positions, including director of the technology center with responsibility for examining business method patents and computer related inventions. He was appointed to the Senior Executive Service in 1988.

Love received his undergraduate degree in mechanical engineering from the University of Detroit.  He earned a juris doctor degree from Georgetown University, and is a member of the Virginia State Bar. 

USPTO Statement on Ceasing Annual Top 10 Patents Holders List (22Jan2007)

USPTO Statement on Ceasing Annual Top 10 Patents Holders List

Beginning this year, the USPTO will no longer release an annual list of top 10 organizations receiving the most U.S. patents. The 2006 data will be available in April in the annual “Patenting by Organizations” report on the agency's web site (www.uspto.gov). This report profiles U.S. patents granted to U.S. and international organizations receiving 40 or more patents each year.

In ceasing publication of the top 10 list, the USPTO is emphasizing quality over quantity by discouraging any perception that we believe more is better.

For the past four years USPTO has focused on the quality of the patents it issues. We are now seeing the results of those efforts. Last year patent quality was the best in over 20 years, and the agency also had the lowest rate of patents approved in more than 30 years.

Over the past four years the USPTO has implemented numerous programs to enhance the quality of patent examination. These include:

•  rigorous in-process and end-process reviews of examiners' work and written certification and recertification examinations to ensure examiners remain up-to-speed on patent law, practice and procedure.

•  increasing the number of “second-pair-of-eyes” reviews of initial decisions to grant patents.

•  implementing eight-month university-style training programs to teach patent examination coursework to new examiners in a collegial and collaborative environment.

•  establishing a unit of patent examiners solely devoted to reexamining patents for which evidence raising a substantial new question of patentability is found after the patent is granted.

•  improving the quality of USPTO work life to attract the best pool of new patent examiners by offering opportunities to work from home.

•  implementing electronic processing of patent applications to make the patent examination process more efficient and effective.

Brigid Quinn
Spokesperson, USPTO
Deputy Director of Public Affairs

Changes to Facilitate Electronic Filing of Patent Correspondence, Final rule (23Jan2007)

Changes to Facilitate Electronic Filing of Patent Correspondence, Final rule

 (23 Jan 2007)

 

[23 January 2007]

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr2770.pdf

Changes to Facilitate Electronic Filing of Patent Correspondence, Final rule (23Jan2007)

Changes to Facilitate Electronic Filing of Patent Correspondence, Final rule

 (23 Jan 2007)

 

[23 January 2007]

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr2770.pdf

USPTO Begins New Electronic Priority Document Exchange Program (19 January 2007)

Posted by Kristen Cichocki at January 20, 2007 02:51 PM

 USPTO Begins New Electronic Priority Document Exchange Program

(19 January 2007)

On January 16, 2007, the United States Patent and Trademark Office, along with the European Patent Office (EPO), implemented a new service to allow certified copies of patent application priority documents to be exchanged between the two offices electronically. Priority documents have to be filed when applicants wish to claim an earlier application filing date in one patent office based on a prior filing in another. The new service, which is free of charge to applicants, is the result of a 2005 agreement between the USPTO and the European Patent Office. Priority document exchange will get underway between the USPTO and the Japan Patent Office (JPO) later this year. Information on how to use the system can be found below.

Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining the benefit of the first application's filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. Paris Convention filings are a critical component in many applicants' global business and patenting strategies and represent a substantial portion of worldwide patent activity. In order to obtain the benefit of an earlier filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense. The new service allows the USPTO and EPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant.

This electronic exchange of copies of priority documents promotes sharing of information between the intellectual property offices and reduces the administrative costs associated with handling paper copies of priority documents and scanning them into the offices' electronic image record management systems.

Forms (PTO/SB/38 and PTO/SB/39) and instructions are available on the USPTO's Web site: http://www.uspto.gov/web/forms/index.html#patent . Applicants are strongly encouraged to check the Patent Application Information Retrieval (PAIR) system to determine whether the USPTO successfully retrieved the priority document. The applicant will be notified if the retrieval attempt is unsuccessful and that a paper copy of the certified copy of the priority document must be provided before the U.S. application issues as a patent.

For further information, see Federal Register Notice: http://www.uspto.gov/web/offices/com/sol/notices/72fr1664.pdf

Changes to Implement Priority Document Exchange Between Intellectual Property Offices, Final rule (16 Jan2007)

Posted by Kristen Cichocki at January 17, 2007 11:53 AM

Changes to Implement Priority Document Exchange Between Intellectual Property Offices, Final rule (16 Jan 2007)

[16 January 2007]

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

http://www.uspto.gov/web/offices/com/sol/notices/72fr1664.pdf

United States Patent and Trademark Office Celebrates One-Millionth Electronically Filed Trademark Application (10 Jan 2007)

Posted by Kristen Cichocki at January 10, 2007 01:12 PM

United States Patent and Trademark Office Celebrates One-Millionth Electronically Filed Trademark Application
Milestone Underscores Success of Award-Winning Trademark Electronic Application System (TEAS)

Washington, D.C.-- The Department of Commerce's United States Patent and Trademark Office (USPTO) will mark an important milestone in its history today-the one-millionth Web-based trademark application using the Trademark Electronic Application System (TEAS). This achievement will be commemorated today at a 5 p.m. (ET) ceremony at the USPTO headquarters in Alexandria, VA.

Donald Junck, an entrepreneur from Sioux Falls, SD, filed the one-millionth electronic trademark application in November 2006 to protect his trademark, Bait Craft, which is used for fishing tackle boxes. As many small business owners have done, he filed the application himself, demonstrating how easy and convenient TEAS is to use--regardless of the applicant's location or resources.

Mr. Junck will join the most active corporate and law firm users of TEAS-Mattel, Inc., and the New York City-based law firm Fross Zelnick Lehrman & Zissu, P.C.-in being recognized in today's ceremony.

"As Donald Junck's story so perfectly illustrates, TEAS is designed to make the trademark application system easy and accessible, no matter how large or small the business or where it is located," said Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. "We are gratified that TEAS has reached this important milestone, and are proud that today 94% of all new trademark applications are filed electronically."

"TEAS proved to be an important and effective tool in protecting my brand," said Mr. Junck. "I would encourage other entrepreneurs to use this system as well, as it saved me both time and money."

TEAS launched as a pilot program in November 1997. It allows anyone in the world with Internet access to file applications electronically 24 hours a day, 365 days a year. Developed with the goal of increasing participation in the trademark registration process, TEAS also has enhanced the quality of initial trademark applications and improved the speed and accuracy of their processing.

The USPTO has received numerous awards and recognitions for TEAS. These include: the Excellence.gov competition (2005 winner), the eGovernment Fellows Program (2004), the Government Technology Leadership Award (2000), the Innovations in American Government Award (2000 semi-finalist), and the Rochester Institute of Technology/USA Today Quality Cup Competition (2000 finalist).

For more information on TEAS, visit www.uspto.gov/teas/ .

Commerce Under Secretary Highlights Seattle’s Innovation (8 Jan 2007)

Posted by Kristen Cichocki at January 8, 2007 08:30 PM

Commerce Under Secretary Highlights Seattle’s Innovation
Focus on importance of intellectual property protection to the Seattle-Tacoma economy

Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas today told reporters that protecting intellectual property against piracy and counterfeiting is a key part of economic growth in Seattle-Tacoma.

“Intellectual property is growing in importance to the local economy in and around Seattle,” noted Under Secretary Dudas.  “Seattle has been ranked sixth in the nation for biotechnology industry concentration, an industry for which patent protection is singularly important.”

“The residents of Washington realize the importance of intellectual property protection as evidenced by the more than 10,000 patent applications they filed in the past year,” Dudas continued.  “Business owners here want to understand the intellectual property system for success in today’s global market.” 

Under Secretary Dudas also reported late-breaking news on the economy.  “This morning we received very positive information about the U.S. economy.  It is strong and growing at a steady pace, and the outlook is favorable.”

According to the Under Secretary, the Labor Department today announced that the U.S. economy gained 167,000 new jobs in December, exceeding market expectations.  The U.S. economy has added 7.2 million new jobs since August 2003.  The United States’ unemployment rate held steady in December at 4.5 percent, and average hourly earnings rose by 8 cents or 0.5 percent. 

With the important role that intellectual property plays in the growth of both the Seattle-Tacoma and U.S. economies, combating intellectual property theft is a top priority for the Bush Administration.  Under Secretary Dudas emphasized that intellectual property theft costs U.S. businesses approximately $250 billion annually and hundreds of thousands of jobs. A major federal government effort known as the Strategy Targeting Organized Piracy (STOP!) aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

The USPTO also has a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness .

U.S. Customs & Border Protection Trademark Recordation System

Posted by Stephen M. Nipper at December 26, 2006 04:38 PM

Please note that U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a trademark recordation system for marks registered at the United States Patent and Trademark Office. Parties who register their marks on the Principal Register may record these marks with CBP, to assist CPB in its efforts to prevent the importation of goods that infringe registered marks. The recordation database includes information regarding all recorded marks, including images of these marks. CBP officers monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.

In October 2005, CBP released the Intellectual Property Rights e-Recordation (lPRR) system, located at https://apps.cbp.gov/e-recordations/.  This new system allows right holders to electronically file IPR recordation applications, thus significantly reducing, the amount of time normally required to process paper applications. Some additional benefits of the new system include:

• 
  
  Elimination of paper applications and supporting documents.


• 
  
  Copies of the certificate issued by the registering agency (U.S. Patent and Trademark Office or the Copyright Office) are retained by the right holder, not submitted to CBP.


• 
  
  Payment by credit card (preferred), check or money order.


• 
  
  Ability to upload images of the protected work or trademark, thus obviating the need to send samples to CBP.


• 
  
  Reduced time from filing of the application to enforcement by field personnel.

Information about how to obtain a recordation, and about CBP's Intellectual Property Rights border enforcement program, is available at CBP's web site, www.cbp.gov.

[Source:  an insert in a Trademark Office mailing (issued trademark) received 2006.12.26]

Fiscal Year 2006: A Record-Breaking Year for the USPTO (22 Dec 2006)

Posted by Kristen Cichocki at December 22, 2006 10:11 AM

Fiscal Year 2006: A Record-Breaking Year for the USPTO
Patent and trademark quality best on record in over 20 years

In Fiscal Year 2006, the Department of Commerce’s United States Patent and Trademark Office (USPTO) set new Agency records in goals related to quality, production, electronic filing, telework, electronic processing and hiring.

“The USPTO has spent the last four years concentrating on meeting or exceeding objective measures, as required by the Government Performance and Results Act of 1993 (“The Results Act”), continuing to make system-wide process improvements, and using related metrics and measures for gauging progress,” noted Under Secretary of Commerce for Intellectual Property Jon Dudas.  “I am proud that fiscal year 2006 was a record-breaking year for the USPTO. “These records reflect the hard work and sound decisions of more than 8,000 USPTO employees.  Over the past four years, we have focused internally -- shining a bright light on our organization, raising the bar on our metrics and measures, and making system-wide improvements. We are now seeing the results of those efforts.”

Quality and Production – High quality and timely examination of applications advances science and technology and creates the certainty innovators need in capital driven markets.
Patents: Patent examiners completed 332,000 patent applications in 2006, the largest number ever, while achieving the lowest patent allowance error rate -- 3.5% -- in over 20 years. At 54%, the patent allowance rate was also the lowest on record.  Patent allowance rate is the percentage of applications reviewed by examiners that are approved.
Trademarks: The agency also processed a record number of trademark applications in 2006.  USPTO trademark examining attorneys took final action on 378,111 trademark applications, a 36% increase over the previous year, and achieved a record low final action error rate, with mistakes found in only 3.6% of the trademark applications reviewed in FY 2006.

Hiring and Training – Hiring top-notch scientists, engineers, and lawyers -- and properly training them in patent and trademark law -- are the foundation of a strong intellectual property system.
Patents: The USPTO received in excess of 440,000 patent applications in 2006, a record number. To help meet the demand, the agency hired a record 1,218 patent examiners, exceeding its goal by more than 200 people. To support this dramatic hiring increase, the USPTO replaced its one-on-one training model with a university approach for new hires.  This allowed the agency to deliver comprehensive training to new examiners, while more experienced examiners and supervisors focused on quality examination.  The agency will continue to hire over 1,000 patent examiners each year for the next five years.  Even so, the volume of applications will continue to outpace the agency’s capacity to examine them.  USPTO continues to look for ways, beyond hiring, to reduce the backlog, while maintaining examination quality.
Trademarks:  In 2006, the USPTO received 354,775 trademark applications, a 9.7% increase over the previous year.  To keep pace and reduce backlogs, the agency hired a record 87 new trademark examining attorneys, bringing the total to 413 -- the most in agency history.

Electronic Filing and Processing – User-friendly patent and trademark processing systems are key to quality examination.
Patents:  The USPTO implemented the Electronic Filing System-Web (EFS-Web), a user-friendly, Internet-based patent application and document submission solution.  This system dramatically increased the electronic filing of patent applications from 1.5 percent per month to 33 percent per month.
Trademarks:  Since 1998, the USPTO has seen a steady increase in the number of trademark applications filed electronically.  In 2006, a record high 94 percent of all trademark applications were filed electronically, compared with 88 percent last year. 
 
Telework - Giving employees the opportunity to do their jobs at alternative work sites is family friendly, raises morale, helps the agency attract and retain high quality staff, and reduces commuter traffic.
Patents: The first 500 patent examiners began working from home four days a week, using a hoteling program to book office space the one day a week they are in the office.  The agency expects that an additional 500 examiners will be added to those already working from home each year for at least the next five years.
Trademarks:  The work-at-home program for trademark examining attorneys is nearly 10 years old and is well known throughout government.  Two hundred and twenty trademark examining attorneys (85% of those eligible) participate in the program.  It is considered a model program and over the years has received numerous awards, including in 2006 the “Telework Program with Maximum Impact on Government Award” from the Telework Exchange.

International Relations and Enforcement -- Protecting U.S. intellectual property around the globe is an important element of U.S. economic security. 
As part of the Bush Administration’s Strategy Targeting Organized Piracy (STOP!), the USPTO worked with other U.S. Government agencies to fight piracy and counterfeiting around the world and continued a communications campaign to educate small businesses about protecting their intellectual property.  The USPTO conducted more than 200 intellectual property rights training and outreach activities in over 100 countries.  In addition, USPTO placed intellectual property experts in Brazil, China, Egypt, India and Thailand to advocate improved IP protection for American businesses and to coordinate training to help stop piracy and counterfeiting abroad.    

Full results of the agency’s progress can be found in USPTO’s FY 2006 Performance and Accountability Report at http://www.uspto.gov/web/offices/com/annual/2006/2006annualreport.pdf.

U.S. and India Sign Historic Memorandum of Understanding on Bilateral Cooperation on Intellectual Property (20 Dec 2006)

Posted by Kristen Cichocki at December 20, 2006 03:42 PM

U.S. and India Sign Historic Memorandum of Understanding on Bilateral Cooperation on Intellectual Property
Offices to promote innovation, creativity and technological advancement

The Department of Commerce's United States Patent and Trademark Office (USPTO) announced today that Jon Dudas, under secretary of commerce for intellectual property, and Ajay Dua, secretary of the Indian Ministry of Commerce and Industry (IMCI), recently signed an historic Memorandum of Understanding (MOU) on Bilateral Cooperation between the United States and India on intellectual property issues.

"This MOU is a first between the United States and India on intellectual property issues, and it will open the door for an unprecedented level of cooperation and sharing of best practices," said Under Secretary Dudas.

"The MOU advances the objective established by President Bush and Prime Minister Singh in March for the United States and India to work together to promote innovation, creativity and technological advancement by providing a vibrant intellectual property rights regime," added Dudas.

Under the terms of the MOU, which builds upon the work of the U.S.-India Trade Policy Forum and other successful bilateral meetings between the United States and India, the USPTO and the IMCI's Office of the Controller General will cooperate on capacity building, human resource development and public awareness of intellectual property. Among the activities designed to strengthen the work of both offices, the USPTO will help train Indian patent and trademark examiners, develop education material for the examiners and produce a manual on patent practice for use by Indian examiners and the public. This work will be carried forward with action plans that will establish specific areas for cooperation over a renewable two-year period of time.

PRESS RELEASE
Contact:
Richard Maulsby or Ruth Nyblod
(571) 272-8400 or
richard.maulsby@uspto.gov
ruth.nyblod@uspto.gov

Electronic Notification of Outgoing Correspondence (e-Office Action) (19 Dec 2006)

Electronic Notification of Outgoing Correspondence (e-Office Action)

[19 December 2006]

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

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

USPTO Now Accepting Electronic Petitions to Revive Patents Expired for Failure to Pay Maintenance Fees

Posted by Kristen Cichocki at December 18, 2006 02:49 PM

USPTO Now Accepting Electronic Petitions to Revive Patents

Expired for Failure to Pay Maintenance Fees

The USPTO has launched a Web-based e-petition initiative that now permits, under certain circumstances, the electronic filing of petitions to reinstate patents that have expired for unintentional failure to pay the required maintenance fees at 3.5, 7.5, or 11.5 years. This initiative is part of a continuing effort to develop and improve electronic systems for filing and processing patent applications.

The new electronic "Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent" will allow petitioners to pay the delayed maintenance fee and surcharge on their expired patent and have the petition automatically granted by the USPTO. These e-petitions must be filed using EFS-Web. The petition decision is viewable instantly to the e-filer along with the electronic receipt of EFS-Web filing. A copy is stored electronically as part of the Image File Wrapper (IFW). The public may inspect the decision in applications that are currently viewable in the Patent Application Information Retrieval (PAIR) system on the USPTO Web site. If the e-filer meets all the eligibility requirements for using this e-petition, there will be no delay in granting the petition to reinstate a patent.

More information on this new e-petition can be found in "Quick Start Guide for Petitions" [PDF] and in "Instructions" for EFS-web form SB66 [PDF]

For help on filing this new e-petition, please contact the Patent Electronic Business Center at 1-866-217-9197 or by e-mail to ebc@uspto.gov.

Future initiatives for e-petitions include petitions to make an application special based on an inventor's age, and petitions to revive an abandoned application by acceptance of the unintentionally delayed issue fee payment.

Transcript of November 16 On-Line for Independent Inventors Available

Posted by Kristen Cichocki at December 11, 2006 04:40 PM

Transcript of November 16 On-Line for Independent Inventors Available

A transcript of the most recent On-Line for Independent Inventors (16 November 2006) is now available through the Inventor Resources pages.

You can read the transcript at the following url:

http://www.uspto.gov/web/offices/com/iip/online2006nov16.htm

MODIFICATIONS TO DESIGN SEARCH CODES

Posted by Kristen Cichocki at December 7, 2006 10:02 AM

 MODIFICATIONS TO DESIGN SEARCH CODES

On or about January 7, 2006, the USPTO is planning to add approximately 80 new design search codes to the Trademark Design Search Code Manual. ¹Many of the larger existing design code sections will be modified to create smaller sections. For example, 01.01.02 will be changed by removing any live documents that have a design with multiple stars with four points and putting these documents into a new code (01.01.12). This will leave all the single stars with four points in 01.01.02. It will also leave all inactive registrations in 01.01.02 whether they have one or more stars with four points. The new design codes will be applied to all new incoming trademark applications and to currently active (live) trademark applications and registrations in USPTO's automated trademark systems. They will not be applied to inactive (dead) registrations.

The following chart contains all of the design codes that have been modified along with the new search code numbers and descriptions.

2007 DESIGN CODE UPDATES

Design Codes - Modifications	New Codes - Descriptions
01.01.02 - Limited to one star with 4 points	01.01.12 - More than one star with four points
01.01.03 - Limited to one star with 5 points	01.01.13 - More than one star with five points
01.01.04 - Limited to one star with 6 points	01.01.14 - More than one star with six points
01.05.25 - Removed suns with rays	01.05.04 - Suns with rays
01.07.25 - Removed globes with bars, bands or wavy lines	01.07.08 - Globes with bars, bands, lines not meridian or parallel lines
01.15.03 - Removed flames on objects/words/numbers	01.15.15 - Flames emanating from objects, numbers or words
01.15.06 - Removed thought or speech clouds	01.15.17 - Thought or speech clouds either empty or with wording/punctuation
01.15.08 - Limited to single drops	01.15.18 - More than one drop (including teardrops or raindrops)
01.15.25 - Removed sound waves	01.15.24 - Sound waves
01.17.11 - Removed state of Texas	01.17.12 - State of Texas
02.01.01 - Removed heads, portraits, busts in profile and smiley faces	02.01.37 - Heads, portraits, busts of men in profile 02.11.16 - Smiley faces
02.01.20 - Removed merchants, store clerks and men in aprons	02.01.38 - Merchants, store clerks and men in aprons
02.01.32 - Removed nude men, men in underwear, bathing suits	02.01.39 - Nude men, men in underwear, bathing suits or brief attire
02.01.33 - Limited to men formed by letters, numbers, punctuation or geometric shapes.	02.01.34 - Other grotesque men including men formed by plants and objects 02.01.35 - Snowmen
02.03.01 - Removed heads, portraits, busts in profile and smiley faces	02.03.22 - Heads, portraits, busts of women in profile 02.11.16 - Smiley faces
02.03.26 - Limited to women formed by letters, numbers, punctuation or geometric shapes.	02.03.28 - Other grotesque women including women formed by plants and objects
02.05.01 - Removed smiley faces	02.11.16 - Smiley faces
02.05.26 - Limited to children formed by letters, numbers, punctuation or geometric shapes.	02.05.27 - Other grotesque children including children formed by plants and objects
02.11.01 - Removed hearts on playing cards and as background	02.11.12 - Hearts on playing cards 02.11.13 - Hearts used as background or carriers
02.11.02 - Removed smiley faces 02.11.04 - Removed smiley faces	02.11.16 - Smiley Faces
02.11.07 - Removed some gestures and hand imprints	02.11.14 - Gestures formed by hands, fingers 02.11.15 - Imprints of hands; fingerprints
03.01.08 - Removed silhouettes of dogs	03.01.07 - Silhouettes of dogs
03.13.02 - Limited to mammals	03.13.05 - Skeletons, skulls, bones of fish, birds, reptiles, insects, dinosaurs
04.01.02 - Removed objects with halos	04.01.03 - Halos appearing on objects, letters, numbers and symbols
05.05.01 - Removed roses	05.05.02 - Roses
05.05.25 - Removed lotus flowers	05.05.06 - Lotus flowers
05.11.25 - Removed peppers	05.11.09 - Peppers
05.13.25 - Removed cotton and marijuana plants	05.13.08 - Cotton plants 05.13.09 - Marijuana plants
06.09.08 - Removed golf courses	06.09.09 - Golf courses, golf holes, putting greens
07.11.07 - Changed to roads without lines	07.11.11 - Roads, streets, highways without lines or dividers
09.01.02 - Moved pockets with stitching to 090316
09.03.08 - Removed neckties and bowties	09.03.15 - Neckties and bowties
09.05.25 - Removed mortarboards	09.05.11 - Mortarboards (graduation hats)
10.07.25 - Removed stethoscopes	10.07.05 - Stethoscopes
11.03.01 - Removed glasses with stems	11.03.15 - Glasses with stems
11.03.03 - Removed coffee mugs	11.03.16 - Coffee mugs
15.05.04 - Removed computer mouse	15.05.08 - Computer mouse
16.03.07 - Removed monocles, lenses	16.03.08 - Monocles, lenses
18.11.25 - Removed oars and boat paddles	18.11.07 - Oars and boat paddles
20.01.01 - Removed quill pens and inkwells	20.01.09 - Quill pens and inkwells
20.05.01 - Removed open books	20.05.05 - Open books
21.01.25 - Removed rattles, pacifiers, teething rings	21.01.15 - Rattles, pacifiers, teething rings
21.03.01 - Removed soccer balls, volley balls, golf balls, bowling balls, footballs, baseballs, basketballs	21.03.15 - Soccer balls, volley balls 21.03.16 - Golf balls, golf tees 21.03.17 - Bowling balls 21.03.18 - Footballs, rugby balls, elliptical shaped balls 21.03.19 - Baseballs, softballs 21.03.20 - Basketballs
21.03.04 - Removed golf clubs and hockey sticks	21.03.22 - Golf clubs 21.03.23 - Ice hockey, field hockey and street hockey sticks.
21.03.12 - Removed targets with crosshairs and alignment guides	21.03.24 - Targets with crosshairs and alignment guides
21.03.25 - Removed skateboards, surfboards, body boards, snowboards, golf tees	21.03.26 - Skateboards 21.03.27 - Surfboards, body boards, snowboards 21.03.28 - Golf bags 21.03.16 - Golf balls and golf tees
24.01.03 - Removed shields and crests with numbers	24.01.04 - Shield and crests with numbers
24.09.01 - Moved checkered flags to 24.09.04 Moved American flags to 24.09.05
24.17.14 - Removed emoticons	24.17.21 - Emoticons (icons that show emotions)
24.17.25 - Removed Yin-Yang, recycling and peace symbols	24.17.18 - Yin-Yang symbol 24.17.19 - Recycling symbol 24.17.20 - Peace symbol
26.01.15 - Limited to three circles	26.01.30 - Four circles 26.01.31 - Five or more circles
26.01.26 - Removed helixes	26.01.29 - Helixes
26.01.28 - Moved thought or speech clouds	01.15.17 - Thought or speech clouds
26.03.13 - Limited to two ovals	26.03.14 - Three or more ovals
26.05.13 - Limited to two triangles	26.05.14 - Three triangles 26.05.15 - Four or more triangles
26.07.01 - Removed diamonds with decorative border	26.07.02 - Diamonds with decorative borders
26.07.13 - Limited to two diamonds	26.07.14 - Three diamonds 26.07.15 - Four or more diamonds
26.09.13 - Limited to two squares	26.09.14 - Three or more squares
26.09.28 - Removed thought and speech clouds	01.15.17 - Thought or speech clouds
26.11.13 - Limited to two rectangles	26.11.14 - Three or more rectangles
26.11.27 - Removed oblongs as carriers	26.11.26 - Oblongs as carriers
26.11.28 - Removed thought and speech clouds	01.15.17 - Thought or speech clouds
26.13.13 - Limited to two quadrilaterals	26.13.14 - Three or more quadrilaterals
26.15.28 - Removed thought and speech clouds	01.15.17 - Thought or speech clouds
26.19.25 - Moved pyramids to 26.19.05
	28.02 - Other forms of communication
	28.02.01 - Braille, Morse Code, Sign Language

---

¹ The Design Search Code Manual is available at http://tess2.uspto.gov/tmdb/dscm/index.htm , and will be updated accordingly.

U.S. Patent and Trademark Office Opens New Art Gallery

Posted by Kristen Cichocki at December 5, 2006 08:24 PM

 U.S. Patent and Trademark Office Opens New Art Gallery
Inaugural exhibit features original paintings by USPTO employees

Washington, D.C. — The Department of Commerce's U.S. Patent and Trademark Office (USPTO) today opened a new art gallery at its headquarters in Alexandria, VA. The Gallery 600 - The ArtSpace @ USPTO celebrates the artistic expression and diversity within the agency.

"In the 28 years I've been at the USPTO, I've seen first hand the depth of talent and accomplishment of the folks who work here," remarked Commissioner for Trademarks Lynne Beresford at the gallery opening. "I am not surprised at the high quality of art shown in this exhibit. Everyone at the USPTO can enjoy this space and the artistic efforts of their fellow employees."

The inaugural exhibition, The Painters @ USPTO, is a selection of 32 original paintings created by 18 USPTO employees. It showcases a wide range of themes and media, from landscapes and portraits to abstract art in oil, acrylic and mixed media.

The public is welcome to visit the gallery located in the lower level of the Madison Building, 600 Dulany Street in Alexandria . The works in the exhibition will be on display until February 2007.

Commerce Under Secretary to Highlight Kansas City's Innovation

Posted by Kristen Cichocki at November 30, 2006 09:01 PM

Commerce Under Secretary to Highlight Kansas City's Innovation

Conference Call to focus on importance of intellectual property protection to Kansas City's economy

[Call in by 11:55 a.m. ET]

Washington, D.C. — Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas will highlight by teleconference on Friday, December 1, the importance of intellectual property protection to Kansas City, to the creation of jobs and to the economy, as well as the dangers of piracy and counterfeiting in the knowledge-based economy. He also will report on the national employment numbers for the month of November, which will be released that morning.

WHO	Under Secretary of Commerce for Intellectual Property Jon Dudas
WHAT	Discussion about U.S. government efforts to curb theft of intellectual property, the importance of intellectual property protection in a global market, as well as to the Kansas City economy, and the creation of new jobs in Missouri, Kansas and the entire United States. Remarks on the global intellectual property marketplace and how small businesses, including those in Minnesota, are increasingly at risk of intellectual property theft.
WHEN	Friday, December 1, 2006 12:00 noon ET. Reporters should call 1 888-790-3349, passcode IP, by 11:55 a.m. ET to participate.

Note: The passcode (IP) and leader's name (Jon Dudas) will be required to join the call.

Under Secretary Dudas will take questions after his presentation.

Business Size Standard for Purposes of USPTO Regulatory Flexibility Analysis for Patent-Related Regulations, Notice

Posted by Kristen Cichocki at November 27, 2006 11:00 AM

Business Size Standard for Purposes of United States Patent and Trademark Office Regulatory Flexibility Analysis for Patent-Related Regulations, Notice

[20 November 2006]

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

http://www.uspto.gov/web/offices/com/sol/notices/71fr67109.pdf

 

Files on Tarr with Erroneous Publication Date Promptly Corrected

Posted by Kristen Cichocki at November 16, 2006 03:26 PM

 Files on Tarr with Erroneous Publication Date Promptly Corrected

For a short period of time, there were approximately 970 applications that showed two Official Gazette publication dates on the Trademark Applications and Registrations Retrieval database (TARR). In one field, TARR erroneously listed the publication date as October 31, 2006, while in another field, TARR listed the publication date as October 24, 2006. The actual publication date for all of these applications was October 24, 2006.

Upon discovery of the conflicting entries in TARR, the Office promptly corrected the inaccuracies. At present, TARR indicates the correct publication date, as well as the appropriate status, for all of the applications.. Notices of opposition, or extensions of time to oppose, for these applications must be received within thirty days after the publication date of October 24, 2006.

USPTO and the European Patent Office To Launch Electronic Priority Document Exchange

New Free Service Will Simplify Patent Application Procedures

The Department of Commerce’s United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) announced today that they are preparing to launch a new service that will allow patent application priority documents to be exchanged between the two offices electronically. Priority documents have to be filed when applicants wish to claim an earlier application filing date in one patent office based on a prior filing in another. Claiming priority is a valuable tool for businesses wanting to pursue patent rights globally. The new service, which will be free of charge to applicants, is the result of a 2005 agreement between the USPTO and the EPO and will pave the way for faster and more efficient processing in each office.

Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining the benefit of the first application’s filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. Paris Convention filings are a critical component in many applicants’ global business and patenting strategies and represent a substantial portion of worldwide patent activity. In order to obtain the benefit of an earlier filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense. The new service will allow the USPTO and the EPO to obtain, with appropriate permissions, electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant.

“Electronic priority document exchange is a win for both applicants and our offices,” said Under Secretary of Commerce and USPTO Director Jon Dudas. “By leveraging our electronic file management systems, we can streamline our internal processing while providing our applicants with the substantial benefits of reduced expenses and paperwork.”

“The realization of the electronic priority document exchange is a major step towards a user-oriented, efficient patent system and a good example of the excellent cooperation between the EPO and the USPTO,” added EPO President Alain Pompidou. “It sets the standards for providing added value services in the future.”

Testing of the new service will be complete in early December, and full production is expected to begin in January 2007. Further details will be made available by each office prior to full production.

USPTO To Hold Live On-Line for Independent Inventors

Posted by Kristen Cichocki at November 15, 2006 10:49 AM

USPTO To Hold Live On-Line for Independent Inventors

Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line on Thursday, November 16 , from 2 to 3 pm (ET). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the online will be posted on the home page of the USPTO website at 10:30 am (ET) on Wednesday. Inventors can begin logging on for the on-line at 1:30 pm.

The independent inventor on-line is part of the USPTO's continuing efforts to promote and protect America 's independent inventors. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.

We have transcripts and frequently-asked questions and answers from previous onlines available on the Inventors Resources pages. Check them out and save time — your question may already have an answer waiting for you!

Commerce Under Secretary Highlights Southeast Florida Innovation and Employment

Posted by Kristen Cichocki at November 8, 2006 12:15 PM

Commerce Under Secretary Highlights Southeast Florida Innovation and Employment
Presents Export Achievement Certificate to Dyadic International

West Palm Beach, FL. - Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas today told members of the Business Development Board's Life Sciences Cluster Committee that protecting intellectual property against piracy and counterfeiting is a key part of economic growth, particularly in southeast Florida .

"Florida is celebrated as an innovation hub," noted Under Secretary Dudas. "I am impressed with the economic growth in this region especially in the biotechnology arena," said Dudas.

Under Secretary Dudas also reported late-breaking news on the economy. "This morning we received very positive information about the U.S. economy. It is strong and growing at a steady pace, and the outlook is favorable."

According to the Under Secretary, the Labor Department today announced that the U.S. economy gained 92,000 new jobs in October. The U.S. economy has created more than 6.8 million new jobs since August 2003. The United States ' unemployment rate decreased to 4.4 percent nationally, which is lower than the average unemployment rate for the 1960s, 70s, 80s, and 90s. Unemployment is currently 3.2 percent in Florida .

The number of patents issued to Florida residents has more than doubled since 1984, from 1,169 to 2,744 last year. Among U.S. states, Florida ranks third in high-tech exports. Last year Florida exported over $33.3 billion worth of goods. According to Entrepreneur magazine, the Palm Beach County ranks among the top 10 best for entrepreneurs.

With Florida's dependence on high-tech exports, vigilance in protection of intellectual property becomes more critical. Combating intellectual property theft is a top priority for the Bush Administration. A major federal government effort known as the Strategy Targeting Organized Piracy (STOP!) aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America 's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

The USPTO also has a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness .

While in Southeast Florida, the under secretary lauded the contributions of Scripps Research Institute, one of the country's largest, private, non-profit research organizations in biomedical science. "Scripps Florida will help to enhance the local economy while furthering the advancement of medical research," Mr. Dudas remarked.

Under Secretary Dudas also presented the U.S. Department of Commerce's Export Achievement Certificate to Dyadic International of Jupiter, FL, for their accomplishments in export sales. Dyadic is a Florida biotech company specializing in industrial enzymes, biofuels and biotherapeutics that has worked with the Commerce Department's U.S. Commercial Service to expand its sales in Brazil.

The Export Achievement Certificate—administered by the U.S. Export Assistance Centers--recognizes companies that are business clients of the U.S. Commercial Service and have used their services to make the company's first export sale or open new foreign markets. The Florida U.S. Export Assistance Centers are part of the global network of the U.S. Commercial Service, a Commerce Department agency that helps small and medium-sized U.S. businesses sell their products and services globally. The agency's worldwide network includes 105 U.S. Export Assistance Centers throughout the United States and more than 150 international offices.

For more information on the U.S. Commercial Service, call the U.S. Export Assistance Center in Ft. Lauderdale at 954-356-6640 or visit www.export.gov/commercialservice .  

Changes to Eliminate the Disclosure Document Program, Final rule

Changes to Eliminate the Disclosure Document Program, Final rule

[03 November 2006]

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

http://www.uspto.gov/web/offices/com/sol/notices/71fr64636.pdf

Notice of Clarification of Office Policy To Exercise Discretion in Reexamining Fewer Than All the Patent Claims

Posted by Kristen Cichocki at October 12, 2006 12:58 PM

Notice of Clarification of Office Policy To Exercise Discretion in Reexamining Fewer Than All the Patent Claims [signed 05 October 2006]

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

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

Commerce Under Secretary and Orlando Congressman Highlight Orlando’s Innovation and Employment

Commerce Under Secretary and Orlando Congressman Highlight Orlando’s Innovation and Employment
Focus on importance of intellectual property protection to Orlando's economy

Washington, D.C . - Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas, joined by U.S. Representative Tom Feeney (R-FL), today told reporters on a conference call that protecting intellectual property against piracy and counterfeiting is a key part of economic growth, particularly in Orlando. Dudas and Feeney emphasized that intellectual property theft costs U.S. businesses approximately $250 billion annually and hundreds of thousands of jobs.

"Orlando is a leader in innovation and high-technology. Today's job numbers show that the U.S. has continued to add new jobs. Innovation in Florida is leading the way,” noted Under Secretary Dudas.

Today, the Labor Department announced that the economy gained 51,000 new jobs in September, following the addition of 188,000 jobs in August. The economy has created more than 1.7 million jobs over the past 12 months. Additionally, the economy has grown 4.1 percent over the first half of this year. Unemployment in Florida is just 3.3 percent compared to 4.6 percent nationally. Orlando's unemployment is 3.2 percent.

Florida and the Orlando area are helping America grow and lead the world economy. Florida ranks fourth in the nation for high-technology jobs. Orlando has been ranked first in the country for gazelle jobs, those jobs that are in companies with annual sales revenue growth of 20 percent or more for four straight years. The Burnham Institute for Medical Research's recent decision to expand to the Orlando area will create more than 3,000 jobs and an atmosphere for high wage technology job growth.

‘The Orlando economy, much like the rest of the country, is becoming more diversified through high-tech growth,” Dudas continued. "Florida businesses are exporting more and exporting to new markets. More intellectual property-based jobs are being created, and the need to understand the importance of intellectual property protection is ever more critical.”

Florida's high-tech exports totaled $9.4 billion in 2004, ranking third nationwide.

Combating intellectual property theft is a top priority for the Bush Administration. A major federal government effort known as the Strategy Targeting Organized Piracy (STOP!) aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

The USPTO also has a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness .

###

Procedures for Submitting Amendments/Corrections to Trademark Applications After Publication

Posted by Stephen M. Nipper at September 2, 2006 10:31 AM

August 28, 2006 To improve the tracking and disposition of amendments and requests for corrections to trademark applications submitted after publication, the Office is providing the following recommended procedures. Once an application has been “approved for publication” by the examining attorney, all amendments and requests for corrections are processed as amendments/corrections after publication. You can determine the status of your application and whether or not it has been “approved for publication” or “published for Opposition” by entering the serial number in the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ .

Applicants are strongly encouraged to review the information concerning their application in the TARR database and as published in the Official Gazette at http://www.uspto.gov/web/trademarks/tmog/ . Upon review of the information concerning your application, any requests for an amendment/correction should be faxed to Post Publication Amendments/Corrections at 571-270-9007 to ensure that they become part of the record for the relevant application. Requests to correct minor typographical errors entered by the USPTO, inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a post-publication amendment can be e-mailed to TM Post Pub Query@uspto.gov.

All post-publications amendments/corrections should be submitted no later than 6 weeks after the publication date to insure that the amendment/correction can be considered prior to the issuance of the notice of allowance or registration certificate.

The TM Photocomp mailbox is no longer available for submission of amendments or requests for corrections after publication. The procedure has been changed to ensure that the requested amendment is matched with the proper application, uploaded into the database, and reviewed in a timely manner.

via: http://www.uspto.gov/web/trademarks/notices/appprocedures.htm

USPTO eTEAS now accepting PDFs (partially)

Posted by Stephen M. Nipper at July 24, 2006 10:29 PM

From: http://www.uspto.gov/teas/eTEASupcoming.html#PDFfile

PDF files for Response form: Except for mark image files, which the USPTO will continue to accept only in a JPG format, the USPTO has now enhanced the Response to Office Action (ROA) form* also to accept PDF files, specifically for the following:

evidence
specimens
foreign registration certificates
consents
miscellaneous statements
signed declarations

WARNING: The USPTO will NOT permit submission of an overall response as a PDF file; i.e., the evidence section cannot be used to attach a multi-page document consisting of arguments, evidence, revised identifications of goods/services, additional statements, etc. Any portion of the ROA form that exists for a specific purpose must be used for that purpose, rather than trying to shoehorn a complete ROA within the PDF file.

Also, the submission must be complete within the "4 corners" of the actual transmitted document. Information only accessible through a link, but not part of the submission itself, will NOT be considered to be made of record. E.g., if you wish a catalogue to be considered as evidence, you must present the actual pages of the catalogue, and not merely reference that the catalogue is available for viewing at a particular URL. The examining attorney will NOT independently access any URL as part of the examination process, and any materials presented only "by reference" will not constitute part of the actual file.

* Throughout 2006-2007, the USPTO plans to enhance all other TEAS forms to allow for submission of PDF files, although again, the mark image will always be limited to a JPG file, due to constraints within other USPTO systems.

USPTO Requesting More Timely and Useful Information From Patent Applicants

Posted by J Matthew Buchanan at July 11, 2006 01:53 PM

July 10 , 2006
#06-41

USPTO Requesting More Timely and Useful Information From Patent Applicants
Proposal Would Improve Patent Quality and May Bring Quicker Decisions

As part of its ongoing efforts to promote investment in innovation and spur economic growth, the Department of Commerce's U.S. Patent and Trademark Office (USPTO) today announced a new proposal that would streamline and improve the patent application review process. The new proposal would encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.

“Clear disclosure upfront by applicants helps examiners more quickly make the correct decision about whether a claimed invention deserves a patent,” noted Jon Dudas, under secretary of commerce for intellectual property. “Clear, forthright disclosure benefits all, because the public – including potential investors - wants to know that a patent application has been thoroughly reviewed, applying the best data available.”

Patent applicants and their attorneys or agents currently have an obligation to inform USPTO's patent examiners of all information known to be material to patentability of the invention claimed by the applicant. Applicants list information for the examiner to consider in a communication called an Information Disclosure Statement (IDS).

The USPTO has observed that applicants sometimes provide information in a way that hinders rather than helps timely, accurate examination. For example, some applicants send a very large number of documents to the examiner, without identifying why they have been submitted, thus tending to obscure the most relevant information. Additionally, some applicants send very long documents without pointing out what part of the document makes it relevant to the claimed invention. Sometimes applicants delay sending key information to the examiner. These practices make it extremely difficult for the patent examiner to find and properly consider the most relevant information in the limited time available for examination of an application.

The USPTO's proposed rule change is designed to encourage early submission of relevant information, and to discourage submission of information that is unimportant or does not add something new for the examiner to consider. With the proposed changes, patent examiners would not have to review documents that do not directly relate to the claimed invention, or that duplicate other information already submitted.

Proposal Specifics

To encourage submission of relevant information to the patent examiner promptly and in a way that brings the most important information to the attention of the examiner, the USPTO is proposing to eliminate all fees associated with submitting an IDS. Under the proposal, applicants in most cases would be permitted to send up to twenty documents without additional explanation, if these documents are provided to the USPTO before the examiner sends a first communication to the applicant.

Were an applicant to submit more than twenty documents, or wait until after the patent examiner's first communication has been sent, the applicant would face increasing requirements to provide more detailed information about the documents and how they relate to the claimed invention. Applicants could be required to point out what part of the document makes it important, to identify specific claims to which a document applies, to clarify how a document adds new information not already considered by the examiner, or explain why the claims are patentable in light of the information provided.

Under the proposal, applicants would still be able to send in as many documents as they choose. However, there would be more stringent requirements for those choosing to submit large numbers of documents or very long documents.

For further information see: http://www.uspto.gov/web/offices/com/sol/notices/71fr38808.pdf .

Changes To Information Disclosure Statement Requirements and Other Related Matters (10July2006)

Posted by J Matthew Buchanan at July 10, 2006 12:45 PM

View and/or download a copy of this Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr38808.pdf

U.S. View on Conclusion of WIPO Development Committee Meeting

U.S. View on Conclusion of WIPO Development Committee Meeting

At the most recent session of the Provisional Committee for Consideration of Proposals Relating to a Development Agenda for WIPO (PCDA), the United States firmly supported, along with a majority of WIPO member states, immediate recommendations to adopt almost half of the 111 proposals being considered by that committee. The United States also joined the majority of members in supporting the PCDA Chairman’s (Paraguayan Ambassador Rigoberto Gauto Vielman) suggestion for a text to reflect the emerging consensus in recommendations to the 2006 WIPO General Assembly. This included a list of concrete proposals to immediately move forward and a recommendation that WIPO continue its consideration of the remaining proposals.

Unfortunately, a small number of countries, including Brazil and Argentina, the originators of proposals to establish a “development agenda” in WIPO, blocked the emerging consensus, and called for a suspension of the meeting rather than continue discussions.

Lois Boland, the head of the US delegation, expressed great disappointment. “We had a real chance to do something positive for the vast majority of WIPO members, particularly lesser developed countries, but this was unfortunately unacceptable to the political agenda of a small group of members,” Ms. Boland stated.

In light of the impasse, the issue may be revisited at the 2006 WIPO General Assemblies without a recommendation from the PCDA. The United States will continue to support expanding and improving WIPO’s ongoing development-related work.

Intellectual property rights are the universal currency of today’s dynamic global innovation economy, a critical vehicle for technology transfer, and an indispensable foundation for the growth and development that are the aspiration of all WIPO members.

USPTO Adds Key Member to Management Team

Posted by J Matthew Buchanan at July 7, 2006 09:17 AM

July 6 , 2006
#06-39

USPTO Adds Key Member to Management Team
New Head of Congressional Relations Named

Jefferson D. Taylor has joined the Department of Commerce's U.S Patent and Trademark Office (USPTO) as director of congressional relations.

“ I am happy to welcome Jeff as a member of senior management at USPTO,” noted Jon Dudas, under secretary of commerce for intellectual property. “Jeff is a team player who has the experience and leadership skills necessary to help us achieve our goals.”

Taylor has over 20 years of experience in congressional relations, including director of communications and chief of congressional affairs for the Department of Commerce's U.S. Census Bureau from 2002-2005 . Prior to joining the Census Bureau, he managed governmental affairs for a number of trade associations and corporations including the American General Financial Group; the American Dietetic Association; the Safe Buildings Alliance and the National Association of Realtors. Taylor also was Chief of Staff to Representative Tom Davis when Davis was a Fairfax County Supervisor.

Mr. Taylor is a graduate of the Antioch School of Law and George Mason University.

###

Commerce Under Secretary to Highlight Indiana's Employment and Innovation

Commerce Under Secretary to Highlight Indiana's Employment and Innovation

Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas will be joined by Congressman John Hostettler in Terre Haute, Indiana, on Friday, July 7, to highlight the importance of intellectual property protection in a global market, the dangers of piracy and counterfeiting, and the creation of jobs in the knowledge-based U.S. economy. Under Secretary Dudas also will report on the Bush Administration's Strategy Targeting Organized Piracy (STOP) initiative, what the U.S. government is doing to protect intellectual property, as well as discuss the national employment numbers for the month of June.

WHAT	Speech on U.S. government efforts to curb theft of intellectual property, the importance of intellectual property in a global market, the creation of new jobs in Indiana and the United States, and the dangers of piracy and counterfeiting of intellectual property. A question and answer session will follow immediately after the speech.
WHO	Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Jon Dudas Congressman John Hostettler (IN-08)
WHERE	Sony DADC 1800 N. Fruitridge Avenue Terre Haute, Indiana
WHEN	Friday, July 7, 2006 2:30 p.m.

Hall of Fame Inventor Forrest Bird to Speak at Independent Inventor Conference

Posted by J Matthew Buchanan at July 2, 2006 01:45 AM

Hall of Fame Inventor Forrest Bird to Speak at Independent Inventor Conference
Space Limited…Register Now

Dr. Forrest Bird, whose invention of the “Baby Bird” respirator has saved the lives of millions of infants over the years, has joined the roster of speakers for the Chicago Regional Inventors Conference on July 28-29. Dr. Bird was inducted into the National Inventors Hall of Fame in 1995.

The Conference is co-sponsored by the United States Patent and Trademark Office (USPTO), Northwestern University School of Law and the National Inventors Hall of Fame. It will be held at the Northwestern School of Law, 375 E. Chicago Avenue.

Other speakers at the event include Commissioner for Patents John Doll and Louis Foreman, CEO of Enventys, a product design and manufacturing firm. Foreman is also executive producer of the upcoming PBS series, “Everyday Edisons.” The series, which features the inventions of 14 independent inventors, will premiere in September.

Various USPTO experts will be on hand to conduct workshops and one on one meetings with attendees. The two days will be packed with vital information for both novice and seasoned inventors. Space is limited so register now. For more details on the conference and to register click here.

Changes to Practice for Petitions in Patent Applications To Make Special and for Accelerated Examination (26June2006)

Posted by J Matthew Buchanan at June 26, 2006 04:56 PM

View and/or download a .pdf of this Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm

USPTO To Give Patent Filers Accelerated Review Option

USPTO To Give Patent Filers Accelerated Review Option
Proposal would guarantee final decision in 12 months

The Department of Commerce’s United States Patent and Trademark Office (USPTO) is publishing procedures setting forth requirements for patent applicants who want, within 12 months, a final decision by the examiner on whether their application for a patent will be granted or denied.  To be eligible for “accelerated examination,” applicants who file under this procedure will be required to provide specific information so that review of the application can be completed rapidly and accurately.

 Jon Dudas, under secretary of commerce for intellectual property, explained the proposal by noting that “accelerated examination can provide innovators with the early certainty they may need to attract investors or protect their inventions against infringers.”

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 will be 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.  The proposal also limits the number of claims allowed in each application and shortens the time periods for responding to most USPTO communications.

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.

Request for Comments on Removal of Paper Search Collection of Marks That Include Design Elements (23June2006)

View and/or download a .pdf of this Notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr36065.pdf

New Web Look Launched

New Web Look Launched

In an effort to better serve those who visit uspto.gov for business and information purposes, we have redesigned our homepage to make it more user-friendly.  Our homepage “makeover” is the first step of a larger plan to redesign the entire website over the coming months.

We are very interested in your comments on the changes we have just made and solicit your suggestions for changes to the rest of the website.  Please let us hear from you at new_web_look@uspto.gov.

Comments on Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Interim rule (22Jun2006)

Posted by J Matthew Buchanan at June 23, 2006 04:25 PM

As of June 21, 2006, the person listed below has submitted a comment in response to the Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Interim rule, first published in the Federal Register at 71 Fed. Reg. 9260 (February 23, 2006) and then published in the Official Gazette at 1304 Off. Gaz. Pat. Office 95 (March 21, 2006). It is hoped that the public will review this list of comments to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to ac2/comments@uspto.gov, or contact Stephen Marcus by telephone at (571) 272-7743.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

A. Individuals

1. Cohen, Joseph [PDF]

  >> Some contents linked to on this page require a plug-in for PDF File.

Listing of US Patent Grant and US Pre-Grant Publication Documents Classified in US Patent Classification 705/36T

Listing of US Patent Grant and US Pre-Grant Publication Documents Classified in US Patent Classification 705/36T

The United States Patent and Trademark Office (USPTO) has created a list of US Patent Grant and US Pre-Grant Publication documents classified in US Patent Classification 705/36T. This is a list of documents that are currently, or soon will be, classified in Class 705 Data Processing: Financial, Business Practice, Management, Cost/Price Determination: 36T: Tax Strategies.

These collections are provided as an interim measure until the documents are added to our regular classification system.

Accessing the Listing:

To access the listing of new US Patent Grant and US Pre-Grant Publication documents, please click on the following link: http://www.uspto.gov/patft/class705_sub36t.html.

Request for Comments on Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, Request for comments; extension of comment period (14June2006)

Posted by J Matthew Buchanan at June 15, 2006 03:41 PM

View and/or download a copy of this Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr34307.pdf

 

 

USPTO to Hold Conference on Protecting Your Intellectual Property in China and the Global Marketplace -- Seattle, July 12-13

Posted by J Matthew Buchanan at June 13, 2006 03:46 PM

The United States Patent and Trademark Office is sponsoring a two-day, free program on "China's Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace.” The two day event will be held on July 12-13 at the Grand Hyatt Seattle.

Topics to be covered at the conference include China’s laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China.

Companies of any size, from those contemplating entering the China market to those with an established presence in the country should be particularly interested in attending the conference. In addition,those who simply want to know more about protecting themselves against IP theft from abroad will also find the sessions very helpful.

This program is part of the USPTO’s continuing commitment to increase public awareness of intellectual property rights and the enforcement of these rights in the global marketplace.

The conference is free, but seating is limited.  Register now.

USPTO to Hold Conference on Intellectual Property in the Global Marketplace in Nashville July 18

 

The United States Patent and Trademark Office will present a one-day conference on intellectual property basics for small and medium size businesses, entrepreneurs, and independent inventors and will provide information on the new realities of intellectual property counterfeiting and piracy in the global marketplace.

The conference will be held Tuesday, July 18 at the Nashville Marriott at Vanderbilt.  The session will run from 8:30am to 5:00pm.

Deputy Under Secretary of Commerce for Intellectual Property Steve Pinkos will deliver opening remarks on Tuesday at 8:30am.

The conference is a component of USPTO’s small business campaign and is a part of the federal government’s Strategy Targeting Organized Piracy (STOP) and the USPTO’s continuing effort to increase public awareness about intellectual property and the enforcement of those rights in the global marketplace.

The conference is free, but seating is limited.  Register now.

Independent Inventors Conference Set for Chicago July 28-29

Posted by J Matthew Buchanan at June 8, 2006 11:53 AM

Independent Inventors Conference Set for Chicago July 28-29

The United States Patent and Trademark Office (USPTO), Northwestern University School of Law and the National Inventors Hall of Fame will hold a regional Independent Inventors Conference in Chicago on July 28-29. The conference will be held at the School of Law, 375 E. Chicago Ave. Top officials of the USPTO, successful inventors and other experts will be on hand to provide practical advice and information on marketing and intellectual property protection. The conference is designed for both novice and seasoned inventors.

Be watching this space in the coming weeks for details about registration, speakers and topics.

Changes to Eliminate the Disclosure Document Program (June 2005) (06Jun2006)

As of June 6, 2006, the organizations and persons listed below have submitted comments in response to the proposed rule Changes to Eliminate the Disclosure Document Program, published in the Federal Register at 71 Fed. Reg. 17399 (Apr. 6, 2006), and in the Official Gazette at 1306 Off. Gaz. Pat. Office 22 (May 2, 2006). It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message at ddp.comments@uspto.gov, or contact Robert W. Bahr by telephone at (571) 272-8800.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

A. Intellectual Property and Other Organizations

1. American Intellectual Property Law Association (AIPLA) [PDF]
2. United Inventors Association (UIA) [PDF]

B. Individuals

1. Barron, Rick [PDF]
2. Boland, J.F. [PDF]
3. Burkhardt, George [PDF]
4. Davis, Tonya [PDF]
5. Eric [PDF]
6. Field Jr, Thomas [PDF]
7. Francis, Ray [PDF]
8. Galoway, Lee [PDF]
9. Golan, Yvette [PDF]
10. Guza, David [PDF]
11. Knapp, Margaret [PDF]
12. Lewis, David [PDF]
13. Merrill, Richard [PDF]
14. Meschter, John [PDF]
15. Mingus, Jason [PDF]
16. Prochaska, Brett [PDF]
17. Randall5977 [PDF]
18. Shideler, Blynn [PDF]
19. Slate, William [PDF]
20. Thomas, Donald [PDF]
21. Tower, Robert [PDF]
22. Wahlberg, Stuart [PDF]
23. White, James [PDF]

Some contents linked to on this page require a plug-in for PDF files.

USPTO To Conduct Briefing on New Web-Based Filing System for Patent Applications

June 6, 2006
#06-36

USPTO To Conduct Briefing on New Web-Based Filing System for Patent Applications

Washington, D.C. – The United States Patent and Trademark office will be hosting an EFS-Web briefing on June 8, 2006. EFS-Web is the USPTO's new electronic patent filing system, which allows users to file patents online safely and securely by attaching files as PDF's.

WHAT	EFS-Web Media Briefing
WHO	USPTO
WHEN	Thursday, June 8, 2006 2:00p.m. – 2:15p.m. (EST)
HOW	To attend this webinar, you must first register for it. Please click the following link to see more information about and register for this event. Once you have registered for the session, you will receive an email message confirming your registration. This message will provide the information that you need to join the session.
https://websurveyorevents.webex.com/websurveyorevents/onstage/g.php?d=481284068&t=a

###

Revision of Patent Fees for Fiscal Year 2007 (05June2006)

Posted by J Matthew Buchanan at June 6, 2006 12:48 PM

Revision of Patent Fees for Fiscal Year 2007 (05June2006)

View and/or download a copy of this Notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr32285.pdf

 

For a brief commentary on the legislative posture underlying the PTO's "two option" fee proposal, please see this post on Promote the Progress.

USPTO Program in China Underscores Importance of Protecting Geographical Indications and Trademarks (02JUN2006)

Posted by J Matthew Buchanan at June 5, 2006 09:10 PM

The United States Patent and Trademark Office (USPTO) and the China Trademark Office (CTMO) completed a successful weeklong program in China last week on “geographical indications” (GIs). The program was presented in Beijing and in Xiamen.

“Geographical indications” identify a good as originating in the territory of a World Trade Organization (WTO) member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin. Examples of geographical indications from the United States include: "FLORIDA" for oranges; "IDAHO" for potatoes; "VIDALIA" for onions; and "WASHINGTON STATE" for apples.

The China program focused on protection of geographical indications through use of a trademark system. Like the United States, China protects geographical indications through a trademark system, administered by the CTMO. However, China has a second system for protecting geographical indications, administered through a separate government agency, which has led to confusion over protection of geographical indications and trademarks.

“The USPTO-CTMO geographical indications program represents a significant effort on behalf of each office to understand our respective systems for the protection of trademarks and geographical indications,” noted Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. “Better mutual understanding will lead to certainty and confidence in the protection afforded to trademarks and geographical indications.”

Representatives of the Idaho Potato Commission and the Florida Department of Citrus, the owners of U.S. certification marks (a type of U.S. trademark) “Idaho Potatoes” and “Florida Citrus,” respectively, joined the U.S. delegation. A representative of Anheuser-Busch Companies, Inc. also accompanied the U.S. delegation to discuss the challenges in enforcing a pre-existing mark against a subsequent GI. The program featured a presentation by a representative of IP Australia, who discussed Australia’s experience in protecting GIs through a trademark approach.

Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office (signed 22May2006)

Posted by J Matthew Buchanan at May 24, 2006 10:06 AM

View and/or download a .pdf of this notice at the following URL:

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

Notice of Collection of Practitioners’ E-mail Addresses

Posted by J Matthew Buchanan at May 23, 2006 09:00 AM

Notice of Collection of Practitioners’ E-mail Addresses

The United States Patent and Trademark Office (Office) is undertaking to collect Internet e-mail addresses for each registered patent attorney and patent agent. Gathering these e-mail addresses will facilitate and increase the ability of the Office to communicate with registered practitioners. The Office anticipates implementing automated notifications to registered practitioners of notices and IT system alerts. The Office also anticipates informing and inviting registered practitioners to attend conferences and other events the Office may hold in their areas. Availability of current Internet e-mail addresses will facilitate sending communications to registered practitioners with information of a non-confidential nature. The e-mail information will be maintained in an electronic database of the roster. To reduce occasions for spam and unwanted electronic communications, the e-mail addresses will not be published, viewable by the public on line, or otherwise made available to the public. The Office is in the process of implementing 37 CFR § 11.11, under which each “registered practitioner must notify the OED Director of up to three e-mail addresses where he or she receives e-mail.” The Office of Enrollment and Discipline’s database is now capable of storing and associating each practitioner’s name and registration number with up to three e-mail addresses for each practitioner. By this notice, practitioners are being requested to provide up to three e-mail addresses where they can receive communications from the Office. The collection of e-mail addresses is being implemented using a two-step process. The first step is for a practitioner to send an e-mail addressed to PractitionerE-mailAddresses@USPTO.GOV with the following information in the following sequence in plain text: the practitioner’s last name, first name and middle name; the practitioner’s registration number; and up to three e-mail addresses for the practitioner. The first e-mail address can be up to 129 characters, the second and third addresses combined can have no more than a total of 125 characters. Semicolons should separate multiple e-mail addresses from each other. The e-mail sending the addresses must be sent from one of the three furnished addresses. The second step is for the practitioner to send a confirmation letter addressed to Mail Stop OED, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia, 22323-1450. In the confirmation letter, the practitioner confirms over his or her original, personal signature the submission of the e-mail addresses to be used for the practitioner. The confirmation letter must include the same information as in the e-mail, preferably with the e-mail addresses in the same order. Facsimiles are not acceptable. 37 CFR § 1.4(e). Letters from law firms or corporate legal departments may provide confirmation for several registered practitioners, but must be signed by each practitioner. Following receipt of the confirmation letter, the e-mail address will be copied from the received e-mail and pasted into the database. OED will inform the practitioner by e-mail of the receipt of the confirmation letter and the inclusion of the practitioner’s e-mail addresses on the roster. Practitioners will be responsible for updating OED with each and every change of e-mail addresses. Until further notice, the e-mail addresses must be updated using the forgoing steps. Plain text is necessary inasmuch as the e-mail addresses will be pasted from the e-mail into the database. Practitioners will be responsible for the correctness of the e-mail addresses submitted to and included in the database. Accordingly, the correctness of the each e-mail address should be checked before it is submitted. Please do not submit e-mail addresses in PDF format or anything other than plain text. Office personnel will not type e-mail address information into the database that is submitted in PDF or other formats. Submission of e-mail addresses in PDF format or other means requiring the address to be typed into a database will not be accepted. If more than three e-mail addresses are submitted, only the first three e-mail addresses will be used. The e-mail addresses will not be disseminated to the public. Regarding business, not e-mail, addresses, practitioners should check, and where necessary, update their business address and telephone number on the roster. Practitioners may view the information regarding them that is available on the roster at: http://des.uspto.gov/OEDCI/. Any changes to the information on the roster, must be made by submitting a change of address form that is available at: http://www.uspto.gov/web/offices/dcom/olia/oed/addchangefrm.pdf. Changes of business addresses cannot be accepted by e-mail, but must use the change of address form available at http://www.uspto.gov/web/offices/dcom/olia/oed/addchangefrm.pdf. Harry I. Moatz Director of Enrollment and Discipline May 11, 2006

Commerce Deputy Under Secretary to Address Midwest Businesses On U.S. Government Efforts to Combat Counterfeiting and Piracy in China

Commerce Deputy Under Secretary to Address Midwest Businesses On U.S. Government Efforts to Combat Counterfeiting and Piracy in China

Washington , D.C. – Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos will deliver a keynote address to approximately 500 businessmen and women during a conference on doing business in China on May 23, 2006, in Cleveland, Ohio. The conference, hosted by the Commerce Department’s U.S. Commercial Service, will provide information useful to manufacturing companies entering the China market for the first time as well as those already established in China. Mr. Pinkos will outline the U.S. government’s views and efforts in intellectual property protection and enforcement.

WHAT	Keynote Address China: Risk, Reward, and How to Win
WHO	Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos
WHEN	Tuesday, May 23, 2006 12:00-12:45 p.m.
WHERE	Crowne Plaza Hotel 6th Floor 777 St. Clair Avenue Cleveland, Ohio

USPTO Exam Guide for Geographical Indications Used on Wines and Spirits

Posted by J Matthew Buchanan at May 17, 2006 09:49 PM

The USPTO has made the following Exam Guide available:

Exam Guide 1-06

Geographical Indications Used on Wines and Spirits

Request for Comments on Patents Search Templates (16May2006)

View and/or download a .pdf of this Notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr28309.pdf

Commerce Deputy Secretary to Speak at USPTO's Community Day

Commerce Deputy Secretary to Speak at USPTO's Community Day
“Celebrating 10 Years of Community Spirit” is the Theme of This Year's Event

Washington, D.C. -- On Thursday, May 18, 2006, the Department of Commerce's United States Patent and Trademark (USPTO) will hold its 10 th annual Community Day recognizing the many cultures represented in its workforce. Joining USPTO Director Jon W. Dudas and agency staff at Community Day will be Deputy Secretary of Commerce David A. Sampson. The City of Alexandria Motorcycle Honor Guard and the T.C. Williams High School Marching Band will perform.

Community Day will also feature exhibitors and vendors, live music, a health fair, international games, as well as foods and dress which represent the diversity of USPTO's workforce. Highlights of this year's celebration will include the annual custom automobile and motorcycle show.

 

WHAT	USPTO's 10 th Annual Community Day
WHO	Deputy Secretary of Commerce, David Sampson 11 a.m. Under secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Jon Dudas
WHEN	Thursday, May 18, 2006 11 a.m. – 2 p.m.
WHERE	United States Patent and Trademark Office Madison Building 600 Dulany Street, Alexandria, Va.

###

U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM TO OHIO

U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM TO OHIO
Efforts Focus on Small Businesses that are Particularly Vulnerable

Columbus, Ohio – United States Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos and Senator George Voinovich (R-OH) today warned members of Ohio's small business community that they are at risk of overseas intellectual property theft -- even if they do not export. Both Deputy Under Secretary Pinkos and Senator Voinovich urged America's small businesses to consider protective action.

In remarks before the “Conference on Intellectual Property in the Global Marketplace,” sponsored by the Commerce Department's United States Patent and Trademark Office (USPTO), Pinkos and Voinovich emphasized the importance to businesses of obtaining intellectual property protection both in the United States and overseas. Pinkos noted that in 2004, more than 850,000 businesses (or 98% of all businesses) in Ohio were small businesses, employing nearly 50 percent of the non-farm private workforce in Ohio. And Ohio's exports are significant. It was the seventh largest exporting state last year, and the ninth largest export state to China, sending more than $934 million worth of goods. Ohio's exports to China have more than tripled since 2000.

“Piracy and counterfeiting around the world are on the rise,” Pinkos said. “Intellectual property theft worldwide costs American companies $250 billion a year and – by extension – hurts American workers and their families.” The goal of our seminar in Columbus is giving small businesses the information they need to protect their intellectual property assets in the U.S. and around the world.”

While counterfeiting and piracy pose a serious threat to all American businesses, small businesses are particularly at risk because they often lack the knowledge and expertise to effectively combat it. Because small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

This seminar is the latest in a series the USPTO is hosting across the country to help educate American small businesses about the realities of piracy and counterfeiting. During the two-day seminar in Columbus, intellectual property experts from the agency provided attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world.

The Columbus seminar represents one of the U. S. Patent and Trademark Office's many efforts to educate small businesses about intellectual property protection. The USPTO also has a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness .

The seminars and Web site are part of a much larger USPTO and federal government effort known as the Strategy Targeting Organized Piracy (STOP!). The STOP initiative aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

For more information about the U.S. government's efforts to educate American businesses about intellectual property rights, visit www.stopfakes.gov .

###

U.S. Government Official To Speak to Ohio Schoolchildren about Illegal Downloading and Copying

Posted by J Matthew Buchanan at May 12, 2006 09:48 PM

U.S. Government Official To Speak to Ohio Schoolchildren about Illegal Downloading and Copying
Kids to Learn the Value of Respecting Others' Intellectual Property

Washington, D.C. – U. S. Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos will talk to third graders at New Albany Elementary School in New Albany, Ohio, about respecting the music, art and ideas created by others. In his remarks, Pinkos will remind students that downloading and copying music, movies and video games without the permission of the artists' or copyright holders' permission is illegal.

WHAT	Remarks to local children on the importance of intellectual property, patents, copyrights and trademarks.
WHO	Deputy Under secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, Stephen Pinkos
WHEN	Monday, May 15, 2006 at 1:15 p.m.
WHERE	New Albany 2-5 Elementary 87 North High Street New Albany, Ohio 43054 Phone: 614-413-8600
WEB	Visit http://www.uspto.gov/ to learn more about the U.S. Patent and Trademark Office.

###

Semi-Finalists Chosen for Modern Marvels Invent Now Challenge

Semi-Finalists Chosen for Modern Marvels Invent Now Challenge
USPTO Co-Sponsoring Event

The History Channel and the National Inventors Hall of Fame Foundation have announced the 25 semi-finalists for the Modern Marvels Invent Now Challenge. All of the semi-finalists will travel to New York the week of May 22 where an exhibition featuring their inventions will be held at Grand Central Station. The top five inventions, including the “Modern Marvel of the Year,” will be featured on the History Channel May 24-27.

The USPTO is a co-sponsor of the challenge. Under Secretary of Commerce Jon Dudas will speak at the awards ceremony and participate in an inventor’s seminar being held in conjunction with the week’s activities.

For more information about the semi-finalists’ inventions and the Modern Marvels Invent Now Challenge, visit inventnow.org.

National Inventors Hall of Fame Inducts 2006 Class

Posted by J Matthew Buchanan at May 10, 2006 12:52 PM

National Inventors Hall of Fame Inducts 2006 Class
USPTO’s Jon Dudas Joins Celebration

The National Inventors Hall of Fame held its 34th annual induction ceremony last Saturday in Akron, Ohio. Speaking at the ceremony, Under Secretary of Commerce Jon Dudas hailed the new inductees for, “all you have given to the world. In some cases you have saved our lives or the lives of our relatives. Or you have cured our illnesses, improved our ability to enjoy life or helped us to achieve a higher standard of living.” The Under Secretary joined in presenting medals to eight inventors.

This year’s inductees were: Willard Boyle and George Smith for information storage devices that led to the development of the hand-held video camera and is the vital component in digital cameras, scanners and fax machines. Vinton Cerf and Robert Kahn, the “fathers of the Internet”, who designed a system that allows supercomputers and desktop PC’s to share the Internet. Robert Gore, the inventor of a process for producing porous products that are extremely durable and strong. The materials produced by the process are best-known by the GORE-TEX brand name. Ali Javan invented the gas optical maser, which is the most widely used laser and is an important tool in research labs, industry and telecommunications. Robert Langer was inducted for the invention of the technology that allows controlled drug delivery. He is one of the most prolific living inventors and holds over 300 U.S. and foreign patents. Julio Palmaz is the inventor of the first commercially successful intravascular stent. The Palmaz Stent has revolutionized cardiac care and over one million people every year undergo coronary stenting to repair clogged arteries.

The National Inventors Hall of Fame was co-founded by the United States Patent and Trademark Office in 1973. Since that time 313 inventors have been inducted into the Hall of Fame.

USPTO to hold Briefing on Patent Peer Review Pilot Project

Posted by J Matthew Buchanan at May 9, 2006 09:51 AM

USPTO to hold Briefing on Patent Peer Review Pilot Project
Alexandria, VA - May 12, 2006

The United States Patent and Trademark Office (USPTO) will hold a briefing on May 12, 2006, from 9:00 a.m. to noon in the agency’s Madison building, 600 Dulany Street, Alexandria, VA. The USPTO has created a partnership with academia and the private sector to launch an online, peer review pilot project that seeks to ensure that patent examiners will have improved access to all available prior art during the patent examination process.

As a follow-up to the February 16th meeting, this briefing will focus on further developing previously discussed initiatives as well as answering the question of what constitutes valid prior art and a greater in-depth analysis of the peer review pilot project that is under consideration.

The meeting is open to the public. However, space is limited so please register early. Only the first 220 registrations can be accepted.

>> Additional Information …

U.S. GOVERNMENT OFFERS CHICAGO AREA BUSINESSES COMPREHENSIVE PROGRAM ON PROTECTING INTELLECTUAL PROPERTY FROM THEFT IN CHINA

Posted by J Matthew Buchanan at May 4, 2006 02:45 PM

May 04 , 2006
#06-28

U.S. GOVERNMENT OFFERS CHICAGO AREA BUSINESSES COMPREHENSIVE PROGRAM ON PROTECTING INTELLECTUAL PROPERTY FROM THEFT IN CHINA
Part of STOP, the Federal Government's Comprehensive Anti-counterfeiting and Anti-piracy Initiative

Chicago, Ill. – U.S. Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos today warned over 100 Chicago businessmen and women that they are at risk of overseas intellectual property theft -- even if they do not export. In remarks before the conference on "Protecting Your Intellectual Property Rights in China and the Global Marketplace," sponsored by the U.S. Patent and Trademark Office (USPTO), Pinkos emphasized the importance to businesses of obtaining intellectual property protection both in the United States and overseas.

“Theft of intellectual property worldwide is rampant, costing American's their jobs and robbing U.S. businesses of approximately $250 billion annually,” Pinkos said. “China was the number one source of counterfeit products seized by the U.S. Customs and Border Patrol in 2005, accounting for 69 percent of all seizures last year, or almost $64 million in products. We recognize that China has expanded efforts to protect intellectual property rights, but there are still critical deficiencies in protection and enforcement. The goal of this seminar is to help you make the best decision for your company regarding China.”

This seminar is the latest in a series the USPTO is hosting across the country to help educate American businesses about the realities of piracy and counterfeiting. During the two-day seminar in Chicago, intellectual property experts are providing comprehensive information on protecting and enforcing intellectual property in China for companies of any size, particularly small- and medium-sized enterprises (SMEs). While counterfeiting and piracy pose a serious threat to all American businesses, small businesses are particularly at risk because they often lack the knowledge and expertise to effectively combat it. Because small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

The Chicago seminar represents one of the USPTO's many efforts to educate small businesses about intellectual property protection. The USPTO also has a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness .

The seminars and Web site are part of a much larger USPTO and federal government effort known as the Strategy Targeting Organized Piracy (STOP!). The STOP initiative aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office also maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

For more information about the U.S. government's efforts to educate American businesses about intellectual property rights, visit www.stopfakes.gov .

###

U.S. GOVERNMENT TO ASSIST CHICAGO AREA BUSINESSES IN COMBATING INTELLECTUAL PROPERTY THEFT IN CHINA

May 3, 2006
#06-27

U.S. GOVERNMENT TO ASSIST CHICAGO AREA BUSINESSES IN COMBATING INTELLECTUAL PROPERTY THEFT IN CHINA
Part of STOP, the Federal Government's Comprehensive
Anti-counterfeiting and Anti-piracy Initiative

Washington, D.C. – U.S. Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos will join over 100 Chicago businessmen and women for a conference on "Protecting Your Intellectual Property Rights in China and the Global Marketplace" on Thursday May 4, 2006, in Chicago, Illinois. The event, sponsored by the United States Patent and Trademark Office, is part of the federal government's Strategy Targeting Organized Piracy (STOP). Intellectual property experts will provide comprehensive information on protecting and enforcing intellectual property in China for companies of any size, particularly small- and medium-sized enterprises (SMEs).

WHAT	Protecting Your Intellectual Property Rights in China and the Global Marketplace Remarks on the global intellectual property marketplace and how small businesses, including those in Chicago, are increasingly at risk of intellectual property theft
WHO	Stephen Pinkos, Deputy Under Secretary of Commerce for Intellectual Property
WHEN	Thursday, May 4, 2006 9:00 a.m.
WHERE	Hyatt Regency McCormick Place 2233 S. Martin L. King Drive Chicago, IL

World Intellectual Property Day - A Message from President George W. Bush

Posted by J Matthew Buchanan at April 27, 2006 10:21 AM

World Intellectual Property Day
A Message from President George W. Bush

April 26th was World Intellectual Property Day. The power of ideas as the seedbed for innovation and creativity was the theme of this year’s observance. President Bush issued the following message to mark the sixth annual World IP Day.

>> View/Print Message… [PDF Viewer required] 

Alexandria Town Hall Meeting Focuses on Improvements to Patent Review Process

Posted by J Matthew Buchanan at April 26, 2006 08:05 AM

April 25, 2006
#06-26

Alexandria Town Hall Meeting Focuses on Improvements to Patent Review Process

Washington, D.C. — The United States Patent and Trademark Office (USPTO) today held a town hall meeting to engage the public and learn their views on USPTO's proposals intended to streamline the application review process. A four-person panel representing a spectrum of organizations with interests in the patent system offered their views on the proposals which are designed to ensure high quality patent examination and work toward decreasing the backlog of pending applications.

Suzanne Michel, Federal Trade Commission; Jay Thomas, Georgetown Law School; Charles Van Horn, American Intellectual Property Law Association; and Herbert C. Wamsley, Intellectual Property Owners Association shared their views on the proposals with a group of over 100 patent attorneys, patent agents, independent inventors and members of the small business community.

“The USPTO clearly has a responsibility to do everything it can to improve America's patent system. That is why we are undertaking this collaborative approach – putting forth quality and efficiency proposals for the patent community to give us feedback,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. “Applicants and the public deserve certainty. This focus on quality of applications and closure of the examination process will provide more certainty. Everyone agrees that better quality input will result in a better quality end product.”

In FY 2004, nearly one-third of the 355,000 new patent applications were resubmitted by applicants hoping to change the agency's decision. Also, over 40 percent of new applications in FY 2004 had more than 20 claims. Thus, the USPTO has published for comment proposed initiatives to restrict rework on old applications and limit the number of claims the USPTO will initially examine for each invention.

The proposed rules can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf. PDF viewer is required for these documents.

Senator George Voinovich (R-OH) to Keynote USPTO IP Conference

Senator George Voinovich (R-OH) to Keynote USPTO IP Conference
Columbus, OH - May 15-16

The United States Patent and Trademark Office (USPTO) will present a two-day conference on intellectual property basics for small and medium size businesses, entrepreneurs and independent inventors and will provide information on the new realities of intellectual property counterfeiting and piracy in the global marketplace.

The conference will be held May 15-16 at the Hyatt Capital Square in Columbus, Ohio. The sessions run both days from 8:30 a.m. to 5:00 p.m.

Deputy Under Secretary for Intellectual Property Steve Pinkos will deliver opening remarks for the conference on Monday morning. Senator George Voinovich will deliver a keynote address at a luncheon later that day.

The conference is a component of USPTO’s small business campaign and is a part of the federal government’s Strategy Targeting Organized Piracy (STOP) and the USPTO’s continuing effort to increase public awareness about intellectual property and the enforcement of those rights in the global marketplace.

The conference is free, but seating is limited. Register now.

USPTO to Sponsor Panel Discussion on Proposals to Improve Patent Examination

Posted by J Matthew Buchanan at April 24, 2006 09:13 AM

April 21 , 2006
#06-25

USPTO to Sponsor Panel Discussion on Proposals to Improve Patent Examination

Washington, D.C. – The United States Patent and Trademark Office (USPTO) is holding a town hall meeting to educate the public on USPTO's plans to streamline the application review process. A four-person panel representing a variety of organizations with interests in the patent system will offer their views on the proposals which are designed to ensure high quality patent examination and work toward decreasing the backlog of pending applications.

WHAT	Town Hall Meeting An overview of the challenges the USPTO faces and the reasons why proposed new rules limiting claims and rework are necessary, panel discussion and a question and answer session.
WHO	John Doll, Commissioner for Patents Jay Lucas, Deputy Commissioner for Patent Examination Policy
WHEN	Tuesday, April 25, 2006 2 p.m. – 4 p.m .
WHERE	United States Patent and Trademark Office Madison auditorium 600 Dulany Street, Alexandria, Va .
For more information, please go to http://www.uspto.gov/web/patents/townhall.htm .

###

More on the $26 Million consumer redress decision against the Davison & Associates invention promotion operation

Posted by J Matthew Buchanan at April 20, 2006 02:23 PM

Court Halts Bogus Invention Promotion Claims
Orders $26 Million in Redress For Consumers; USPTO’s Director Jon Dudas Praises Court Decision

A U.S. district court judge has ordered an invention promotion operation to pay $26 million in consumer redress and has ordered a permanent halt to the bogus claims the company used to recruit customers. The court also ordered that in future dealings with consumers, the company make specific, detailed disclosures about their track record in helping inventors market their ideas. “This affirmative disclosure statement is needed due to defendants’ blatant, varied, and repeated misrepresentations . . . ” Judge Gary L. Lancaster of the U.S. District Court for the Western District of Pennsylvania wrote in his decision.

“This outfit is typical of invention promotion scams,” said Lydia Parnes, Director of the FTC’s Bureau of Consumer Protection. “They touted their ability to turn inventors’ ideas into profitable products, but fewer than one percent of the customers who invested in their services got royalties from their patents that amounted to more than they paid the promoters.”

In a complaint filed by the FTC as part of “Project Mousetrap,” the agency charged that the company used Internet ads and classified ads to lure inventors across the country to sign up for their services. The agency charged that they made false claims about their selectivity in choosing products to promote, false claims about their track record in turning inventions into profitable products, and false claims about the relationship they had with manufacturers. They deceptively claimed that their income came from sharing royalties with inventors rather than from the $800 to $12,000 fees they charged inventors.

Jon Dudas, Under Secretary of Commerce for Intellectual Property commented, “Judge Lancaster’s decision sends a strong signal to all those invention promotion and licensing firms that prey upon America’s independent inventor community that fraudulent and unscrupulous practices will not be tolerated.”

The agency alleged that the defendants made false and misleading statements that:

• Consumers who bought their invention-promotion services stand a reasonably good chance of realizing financial gain.

• Their invention-promotion services helped many of their customers' invention ideas become profitable products.

• Their invention-promotion services helped specific inventions become profitable products.

• That they have a vast network of corporations with whom they have ongoing relationships and regularly negotiate successful licensing agreements.

• That their invention marketing services are necessary for consumers to license their invention ideas.

• That they prepare objective and expert analyses of the patentability and marketability of consumers' invention ideas.

Judge Lancaster agreed that the company had engaged in deceptive practices, noting that even after he had issued an order barring deceptive claims, “defendants continued to engage in deceptive practices, albeit in slightly different forms. Based on this past pattern of conduct, there is a very real danger that defendants will alter their business again, yet continue to engage in wrongdoing.”

To prevent those practices, he ordered the company and its principals to pay $26 million for consumer redress and to provide any future clients with a 10-point disclosure statement to allow them objectively to measure the value of the defendants’ assistance. He ordered that when they highlight or advertise specific consumer products or ideas in advertising, they disclose whether the inventor earned royalties that exceeded the total amount of fees paid by the consumer to the defendants. If the defendants claim that they have “matched” or “targeted” an invention to a corporation, they must disclose how many submissions they have made to that corporation in the past five years and the number of licenses entered into with the corporation over the past five years. He required them to disclose that the “Pre-Inventegration” and “modeling” services they sold to inventors were not necessary to achieve licensing agreements and that they disclose that they are not providing consumers with objective or expert opinion of marketability or potential commercial success.

The court also established record keeping provisions to allow the FTC to monitor compliance with Judge Lancaster’s order.

Defendants in this case were Davison & Associates Inc., now known as Davison Design and Development, Inc., Manufacturer's Support Services, Inc., George M. Davison, President and CEO, Thomas Dowler, Gordon M. Davison and Barbara Miele-Davison. The defendants are based in Pittsburgh, Pennsylvania, but have operated nationwide.

Copies of the FTC complaint, and the courts Findings of Fact and Conclusion of Law and the Order for Permanent Injunction are available from the FTC's Web site at http://www.ftc.gov and also from the FTC's Consumer Response Center, Room 130, 600 Pennsylvania Avenue, N.W., Washington, D.C. 20580. The FTC works for the consumer to prevent fraudulent, deceptive, and unfair business practices in the marketplace and to provide information to help consumers spot, stop, and avoid them. To file a complaint in English or Spanish (bilingual counselors are available to take complaints), or to get free information on any of 150 consumer topics, call toll-free, 1-877-FTC-HELP (1-877-382-4357), or use the complaint form at http://www.ftc.gov/ftc/complaint.htm. The FTC enters Internet, telemarketing, identity theft, and other fraud-related complaints into Consumer Sentinel, a secure, online database available to thousands of civil and criminal law enforcement agencies in the U.S. and abroad.

---

MEDIA CONTACT: Claudia Bourne Farrell, Office of Public Affairs | Federal Trade Commission 202-326-2181

STAFF CONTACT: Michael Milgrom, East Central Region | Federal Trade Commission 216-263-3455

FTC CONSUMER CONTACT: 216-263-3434

(19APR2006)

Court Halts Bogus Invention Promotion Claims, Orders $26 Million in Redress For Consumers; USPTO’s Director Jon Dudas Praises Court Decision

Court Halts Bogus Invention Promotion Claims
Orders $26 Million in Redress For Consumers; USPTO’s Director Jon Dudas Praises Court Decision

A U.S. district court judge has ordered an invention promotion operation to pay $26 million in consumer redress and has ordered a permanent halt to the bogus claims the company used to recruit customers. The court also ordered that in future dealings with consumers, the company make specific, detailed disclosures about their track record in helping inventors market their ideas. “This affirmative disclosure statement is needed due to defendants’ blatant, varied, and repeated misrepresentations . . . ” Judge Gary L. Lancaster of the U.S. District Court for the Western District of Pennsylvania wrote in his decision.

“This outfit is typical of invention promotion scams,” said Lydia Parnes, Director of the FTC’s Bureau of Consumer Protection. “They touted their ability to turn inventors’ ideas into profitable products, but fewer than one percent of the customers who invested in their services got royalties from their patents that amounted to more than they paid the promoters.”

In a complaint filed by the FTC as part of “Project Mousetrap,” the agency charged that the company used Internet ads and classified ads to lure inventors across the country to sign up for their services. The agency charged that they made false claims about their selectivity in choosing products to promote, false claims about their track record in turning inventions into profitable products, and false claims about the relationship they had with manufacturers. They deceptively claimed that their income came from sharing royalties with inventors rather than from the $800 to $12,000 fees they charged inventors.

Jon Dudas, Under Secretary of Commerce for Intellectual Property commented, “Judge Lancaster’s decision sends a strong signal to all those invention promotion and licensing firms that prey upon America’s independent inventor community that fraudulent and unscrupulous practices will not be tolerated.”

Town Hall Meeting on Patent Claims and Continuation Practice

Town Hall Meeting on Patent Claims and Continuation Practice
Alexandria, VA - April 25

A town hall meeting on the proposed rule changes for claims and continuations will be held April 25 in Alexandria, Virginia. The U.S. Patent and Trademark Office (USPTO) will host the event at the Madison auditorium at the USPTO, (600 Dulaney Street, Alexandria, Va). The meeting will be held from 2pm – 4pm.

Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Jay Lucas, Deputy Commissioner for Patent Examination Policy and James Toupin, the agency’s General Counsel, will provide a brief overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary. A panel of individuals with varying interests in the U.S. patent system has been invited to offer their views on the proposed rule changes. To stimulate the discussion, panel members also will answer questions posed by a USPTO moderator. A question and answer session will follow immediately after the panel presentation and then John Doll, Commissioner for Patents, will give closing remarks.

Registration is free and CLE credit may be available.

The town hall meetings are for patent attorneys, patent agents, independent inventors and members of the small business community, or anyone else interested in patent examination.

USPTO Seeks Nominees for Public Advisory Committees

Posted by J Matthew Buchanan at April 10, 2006 04:36 PM

USPTO Seeks Nominees for Public Advisory Committees
May 8 Deadline for Submissions

The United States Patent and Trademark Office is seeking qualified individuals to serve on its public advisory committees. Nominations are being requested for three members to each of the committees. Members are appointed by the Secretary of Commerce and serve for three years. Persons wishing to submit nominations should send the nominee's resume to the Chief of Staff, Office of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Post Office Box 1450, Alexandria, Virginia 22313-1450.

Electronic submissions for the patent advisory committee should be sent to PPACnominations@uspto.gov and to TPACnominatons@uspto.gov for the trademark advisory committee. Nominations must be postmarked or electronically transmitted on or before May 8, 2006.

For more information about the advisory committees and the duties and responsibilities of members see Public Advisory Committees.

Conference on Protecting Your Intellectual Property Rights in China and the Global Marketplace Set for Chicago, Illinois

Conference on Protecting Your Intellectual Property Rights in China and the Global Marketplace Set for Chicago, Illinois
May 4-5

The United States Patent and Trademark Office (USPTO) will sponsor a two-day seminar on "Protecting Your Intellectual Property Rights in China and the Global Marketplace” on Thursday and Friday, May 4-5, 2006, at the Hyatt Regency McCormick Place in Chicago, Illinois.

This free program, which is part of the federal government’s Strategy Targeting Organized Piracy (STOP), will provide comprehensive information on protecting and enforcing intellectual property in China for companies of any size, particularly small- and medium-sized enterprises (SMEs). If your company is thinking about entering the China market, if you already have an established presence in China or if you simply want to learn about how to protect your company against IP theft from abroad, you will want to attend this event.

Topics will include a review of China’s current laws and regulations affecting intellectual property (IP) protection and enforcement; protecting business assets to avoid IP problems from China; recognizing when an IP asset has been infringed; what to do if infringement occurs; and the U.S. government’s efforts to improve the IP protection and enforcement environment in China for U.S. industry.

Speakers at the seminar will include China IP experts, U.S. and/or Chinese government officials, representatives from U.S. and Chinese law firms servicing clients in China, and representatives from various U.S. companies.

The conference is free, but registration is required.

Conference on Intellectual Property in the Global Marketplace Set for Columbus, Ohio

Conference on Intellectual Property in the Global Marketplace Set for Columbus, Ohio
May 15-16

The United States Patent and Trademark Office (USPTO) will present a two-day conference on intellectual property basics for small and medium size businesses, entrepreneurs and independent inventors and will provide information on the new realities of intellectual property counterfeiting and piracy in the global marketplace.

The conference will be held May 15-16 at the Hyatt Capital Square in Columbus, Ohio. The sessions run both days from 8:30 a.m. to 5:00 p.m.

The conference is a component of USPTO’s small business campaign and is a part of the federal government’s Strategy Targeting Organized Piracy (STOP) and the USPTO’s continuing effort to increase public awareness about intellectual property and the enforcement of those rights in the global marketplace.

The conference is free, but seating is limited. Register now.

Semiconductor Customer Partnership Meeting

A Semiconductor Customer Partnership meeting will be held on Tuesday April 25, 2006 at the Alexandria headquarters of the United States Patent and Trademark Office (USPTO). Established in June 1999, the Semiconductor Customer Partnership provides a forum for the continued exchange of ideas toward improving the quality and timeliness of the examination process in semiconductor technology. The partnership also provides members of the semiconductor community with an opportunity to learn about recent business process improvements and policy changes that have occurred at the USPTO. Partnership meetings are held biannually in the Washington DC and San Francisco Bay areas.

The partnership meeting is open to anyone interested in the intellectual property issues facing the semiconductor industry. Presenters for this meeting include managers from the Semiconductor work group in Technology Center 2800, which is responsible for examining patent applications filed in Semiconductor Devices, Processing of Semiconductor Devices, Digital Logic Circuits, Solid State Electronic Circuits, Memory Circuits and Devices, Analog Circuits and Devices, and Design and Analysis of Semiconductor circuits and Masks. The semiconductor workgroup is one of the largest in the patent operation with 18 art units and over 300 examiners.

The agenda will include presentations on:

Training Program for New Examiners
State of the Semiconductor Workgroup
State of the Semiconductor Industry
Proposed new rules package
Working with Examiners in the Hoteling Environment
Prosecution issues in the Semiconductor Workgroup
Classification Harmonization with USPTO, EPO and JPO

In addition, there will be sessions devoted to customer presentations and a roundtable discussion in the afternoon.

Date and Location:

The Partnership meeting is scheduled for Tuesday, April 25, 2006, from 9:00 AM–4:00 PM in the Jefferson Conference Center at the USPTO headquarters. The Conference center is located at the lobby level of Jefferson Building, 500 Dulany Street, Alexandria, Virginia.

If you are interested in attending the meeting, please contact Tom Thomas at 571-272-1664 or by e-mail to tom.thomas@uspto.gov.

---

Note: The Semiconductor Customer Partnership is designed and developed to be a forum to share ideas, experiences, and insights between individual users and the USPTO. The USPTO does not intend to use these customer partnership groups to arrive at any consensus. Invitations to participate will indicate that individual opinions are sought, rather than a group consensus and that the meetings are intended to be informal in nature and have varying participants. These customer partnership groups are formed with full recognition of the USPTO’s responsibility under the Federal Advisory Committee Act (FACA), and that these customer partnership groups are not established as FACA compliant committees.

 

Changes to Eliminate the Disclosure Document Program, Notice of proposed rule making

You can view and/or download a copy of this notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr17399.pdf

USPTO Releases List of Top 10 Universities Receiving Most Patents in 2005

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

April 06, 2006
#06-24

USPTO Releases List of Top 10 Universities Receiving Most Patents in 2005
University of California leads U.S. academic institutions for 12th consecutive year

The Department of Commerce's United States Patent and Trademark Office (USPTO) today announced the top 10 U.S. universities receiving the most patents during calendar year 2005. Listed below are the universities receiving the most patents for inventions in 2005, along with their 2004 ranking. The University of California tops the list for the 12th consecutive year.

"America's economic strength and global leadership depend on continued technological advances,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. "Groundbreaking discoveries and patented inventions generated by innovative minds at academic institutions have paid enormous dividends, improving the lives and livelihoods of generations of Americans.”

 

PRELIMINARY LIST OF TOP PATENTING U.S. UNIVERSITIES
Calendar Year 2005

This report presents a preliminary list of the U.S. universities receiving the most patents for invention (i.e., utility patents) during the 2005 calendar year.  All campuses are included.

Rank in 2005*	Number of Patents in 2005*	U.S. University*	Rank in 2004*	Number of Patents in 2004*
1	390	University of California	(1)	(424)
2	136	Massachusetts Institute of Technology	(3)	(132)
3	101	California Institute of Technology	(2)	(135)
4**	90	Stanford University **	(6)	(75)
**	90	University of Texas **	(4)	(101)
5	77	University of Wisconsin	(8)	(64)
6**	71	John Hopkins University **	(5)	(94)
**	71	University of Michigan **	(7)	(67)
7	64	University of Florida	(13)	(41)
8	57	Columbia University	(10)	(52)
9**	43	Georgia Institute of Technology **	(19)	(37)
**	43	University of Pennsylvania **	(24)	(32)
10	41	Cornell University	(16)	(40)
* The listed patent counts are preliminary counts that are subject to correction. ** Indicates a tie in the ranking among two or more U.S. universities.

###

Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination, Notice of proposed rule making (30Mar2006) [PDF]

Posted by J Matthew Buchanan at March 30, 2006 10:29 PM

View and/or download a .pdf of this Notice at the following URL:

Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination, Notice of proposed rule making (30Mar2006) [PDF]

Reopening of Comment Period for Miscellaneous Changes to Trademark Trial and Appeal Board Rules [27Mar2006] (28Mar2006)

Posted by J Matthew Buchanan at March 29, 2006 03:56 PM

View and/or download a copy of this Notice at the following URL:

 

Reopening of Comment Period for Miscellaneous Changes to Trademark Trial and Appeal Board Rules [27Mar2006] (28Mar2006) [PDF]

U.S. Government Official Educates Northern Virginia Children About Intellectual Property Theft

U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM TO NORTHERN VIRGINIA

March 28, 2006
#06-22

U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM TO NORTHERN VIRGINIA
Efforts Focus on Small Businesses that are Particularly Vulnerable

McLean, VA . – U.S. Under Secretary of Commerce for Intellectual Property Jon Dudas and U.S. Representative Frank Wolf (Va-10) today warned members of Northern Virginia's small business community that they are increasingly at risk of overseas intellectual property theft -- even if they do not export. Both Under Secretary Dudas and Representative Wolf urged America's small businesses to consider protective action.

In remarks before the “Conference on the Global Intellectual Property Marketplace,” sponsored by the Commerce Department's U.S. Patent and Trademark Office (USPTO), Dudas and Wolf emphasized the importance to businesses of obtaining intellectual property protection both in the United States and overseas. Dudas noted that small firms employ 48 percent of all Virginia's workers.

Piracy and counterfeiting around the world are on the rise, and intellectual property-based companies—and those with widely recognized names or products—are especially vulnerable to intellectual property theft abroad,” Dudas said. “The goal of this seminar here in Northern Virginia is to arm small businesses with the information they need to protect their intellectual property assets in the U.S. and anywhere around the world they conduct business.”

While counterfeiting and piracy pose a serious threat to all American businesses, small businesses are particularly at risk because they often lack the knowledge and expertise to effectively combat it. Because small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

The Northern Virginia seminar is the latest in a series the USPTO is hosting across the country to help educate American small businesses about the realities of piracy and counterfeiting. During the two-day seminar in Northern Virginia, intellectual property experts from the agency provided attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world. Previously, USPTO seminars were held in Salt Lake City, Utah; Phoenix, Arizona; Austin, Texas; Miami, Florida; and, San Diego.

The Northern Virginia seminar represents one of the U.S. Patent and Trademark Office's many efforts to educate small businesses about intellectual property protection. The USPTO also has a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness .

The seminars and Web site are part of a much larger USPTO and federal government effort. The Strategy Targeting Organized Piracy (STOP!) initiative aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

For more information about the U.S. Patent and Trademark Office's effort to educate American businesses about intellectual property rights, visit www.stopfakes.gov .

###

United States Patent and Trademark Office Notification of Spring 2006 Business Methods Partnership Meeting

Posted by J Matthew Buchanan at March 28, 2006 07:55 AM

As part of the March 2000 business method action plan, the United States Patent and Trademark Office (USPTO) announces the Spring 2006 business methods customer partnership meeting to be hosted by the director and managers of the Business Methods workgroup. Members of the public are invited to attend the partnership meeting. The partnership meeting is an opportunity for an informal discussion on topics such as hoteling, functional/non-functional descriptive material, new 101 guidelines, and other topics specific to business methods. While public attendees will have the opportunity to provide their individual input, group consensus advice will not be sought.

DATES AND LOCATION:

The partnership meeting will be held on Wednesday May 3, 2006,
1:00 P.M.-5:00 P.M.
at the USPTO MADISON AUDITORIUM, Concourse Level,
Madison Building,
600 Dulany Street, Alexandria, VA 22313

Requests for Attendance at the Partnership Meeting

Requests for attendance will be honored on a first-come, first-served basis according to the time and date of receipt of each request. In order to ensure a broad cross- section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms must designate their official representatives. Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting. Non-accepted requesters will also be notified by the USPTO. No one will be permitted to attend without an accepted request.

Requests for attendance at the partnership meeting should be submitted to the attention of Joe Thomas via facsimile at (571) 273-6776, or by electronic mail through the Internet to Joseph Thomas. Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number. Facsimile number and Internet mail address, if available, should also be provided. Requests must be received by April 19, 2006.

FOR FURTHER INFORMATION, PLEASE CONTACT: Joe Thomas by telephone at (571) 272-6776 (in addition to the facsimile numbers and e-mail addresses given above).

U.S. Government Official To Speak to Schoolchildren about Illegal Downloading and Copying

Welcome to RSS Mojo

Posted by Stephen M. Nipper at March 27, 2006 10:33 PM

RSS Mojo currently has two components: (1) US Patent and Trademark Office News and (2) IP Lawsuit Filing Updates.

1. US Patent and Trademark Office News

Unlike the Copyright Office, the Patent and Trademark Office doesn't yet have RSS feeds of their News & Notice's page. We've done it for you. You can subscribe via RSS or via e-mail.

a. RSS feeds:
Official Gazette and Federal Register Notices
General Announcements
Patent News and Notices
Trademark News and Notices
OR, all of the above: ALL PTO News and Notices

b. E-mail subscription:

General Announcements
Patent News and Notices
Official Gazette and Federal Register Notices
Trademark News and Notices
ALL (of the above) PTO News and Notices

[Note: These RSS feeds may include information pulled from the USPTO Website and may contain information which is dedicated to the public domain. For more information, please see the USPTO's Editorial and Publication Guidelines. Of course, these RSS feeds are not endorsed, sponsored or condoned by the USPTO.]

2. Lawsuit Filings

We're reworking our Lawsuit Filings service, and as such it is currently not accepting new subscribers.

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IP Lawsuit Filing Updates

Posted by Stephen M. Nipper at March 26, 2006 01:21 PM

One of the side projects the three of us have been developing over the last 6 months is a service called "Lawsuit Mojo." Back in September we rolled out a "weekly" update of patent lawsuits that had been filed in the previous weeks. Subscription information can be found here: http://www.rethinkip.com/archives/rss_email_patent_lawsuit_filing_notices.html

This "patent lawsuit" service was taking us 30-45 minutes per update to do...ergo why it (as work/family demands changed) wasn't as regularly updated (weekly) as we had wished. That also explains why we hadn't yet rolled out trademark and copyright lawsuit updates (time).

The demand has been high enough that we decided to hire a software guru to code the process, dropping our time from 45 minutes to 5-10 minutes a week. This new system is about ready for prime time...a few initial postings (that may contain some duplicate cases as we move to the new database) and we'll be good to go.

So...it is looking like we will be able to provide weekly (every Monday) updates of patent, trademark and copyright (as well as any other federal lawsuit causes of action requested) lawsuits filed (federally).

We are going to beta test it for a couple months and then will likely move it to a weekly subscription service (to fund further development of this product and others we have in the hopper). We will likely ALSO create a monthly (or other frequency) free service.

YOUR needs will drive the development of these tools...so, the better the input you give us, the better we will be able to create the tools YOU need.

I'll probably get the intitial patent/trademark/copyright updates (data March 1-21) up later today, and will try to get our first weekly update up tomorrow (data since March 21). More details on this project to follow...

Stephen M. Nipper
snipper@gmail.com

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Plan to Change the Procedures for Assigning Co-pending Trademark Applications to Examining Attorneys

Posted by J Matthew Buchanan at March 20, 2006 03:17 PM

Plan to Change the Procedures for Assigning Co-pending Trademark Applications to Examining Attorneys

March 17, 2006

To simplify and improve the process of assigning co-pending applications to a single examining attorney, the Office is modifying the First Action System for Trademarks (FAST), to identify and assign co-pending applications electronically.  The changes will create a rolling system whereby the same examining attorney will usually handle all applications filed by the same applicant during a certain window of time.  The new system will be implemented in April 2006.  

The term “co-pending applications” refers to pending applications filed by the same applicant.  If an applicant has multiple pending applications, the issues in the applications may be similar.  For example, common issues may arise because the applications have the same or similar identifications of goods, the same or similar marks, or the same or similar specimens of use.   Unless an error in the handling of a particular application exists, the Office’s goal is to treat applications filed by the same applicant that present similar issues consistently.  

The best method of ensuring consistency in the examination of applications filed by the same applicant is to have the same examining attorney review such applications.   However, if an applicant files a large number of co-pending applications, it may not be practicable for the Office to assign all of the applications to a single examining attorney. 
The new system for assigning co-pending applications attempts to balance the sometimes-conflicting goals of ensuring consistency and processing applications in a timely manner.  The following is a summary of the new procedures:

• Ownership search:  When assigning a new application to an examining attorney, FAST will determine whether the applicant has any other unassigned pending applications filed during a specified period of time, generally about three months from the application filing date.

• Ten (10) or fewer co-pending applications:  If the applicant has ten (10) or fewer unassigned co-pending applications, FAST will assign all of the co-pending applications to the same examining attorney. 

• More than ten (10) co-pending applications: If the applicant has more than ten (10) unassigned co-pending applications, the first ten (10) unassigned applications will be assigned to same examining attorney. 

• Examination procedure:  Because FAST will only assign co-pending applications filed within a certain time period and will only assign a certain number of co-pending applications to a single examining attorney, there will still be times when an applicant has co-pending applications that are assigned to different examining attorneys.  In those situations, the examining attorney will be required to follow the procedures for handling co-pending applications set forth in TMEP §702.03 et seq.   If the applicant owns unassigned application(s) for the same or similar mark, the examining attorney is encouraged to assign those applications to himself or herself.  TMEP §702.03(a)(i).

• Docket management:  If an applicant has a large number of co-pending applications, FAST may assign the examining attorney up to nine (9) more applications than the examining attorney requested.  If the examining attorney believes he or she will be unable to examine all of the assigned applications within seven (7) days, the examining attorney should request an extension of time from his or her managing or senior attorney. 

The policy regarding conflicting applications, namely, two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, has not changed.  See TMEP §702.03(b).

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Nanotechnology Customer Partnership Meeting

Nanotechnology Customer Partnership Meeting

This Nanotechnology Customer Partnership initiative is designed and developed to be a forum to share ideas, experiences, and insights between individual users and the USPTO. The USPTO does not intend to use these customer partnership groups to arrive at a group consensus. Individual opinions are sought from varying participants, and the meetings are intended to be informal in nature. These customer partnership groups are formed with full recognition of the USPTO’s responsibility under the Federal Advisory Committee Act (FACA), and are not established as FACA compliant committees.

We value our customers and the feedback provided from individual participants is important in our efforts to continuously improve the quality of our products and services. Your willing participation in this informal process is helpful in providing us with new insights and perspectives.

DATE AND LOCATION: This meeting is scheduled for Tuesday, March 28, 2006, from 1:00 pm to 5:00 pm, in the Madison Auditorium, North Side, located at 600 Dulany Street, in Alexandria, Virginia.

Requests for Attendance at the Partnership Meeting

Due to space limitations, please RSVP by e-mail to jill.warden@uspto.gov or by telephone to Jill Warden at (571) 272-1267 to confirm your attendance. If it becomes necessary to restrict the number of attendees, we will do so on a first come-first served basis.

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Commerce Secretary Carlos Gutierrez Launches New Web-Based Filing System for Patent Applications

Posted by J Matthew Buchanan at March 17, 2006 08:59 AM

PRESS RELEASE
March 16, 2006
#06-19 Contact: Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov

Commerce Secretary Carlos Gutierrez Launches New Web-Based Filing System for Patent Applications

Washington, D.C. -- Commerce Secretary Carlos M. Gutierrez and Under Secretary for Intellectual Property Jon Dudas today launched the United States Patent and Trademark Office's (USPTO) new electronic filing system that will allow applicants to file over the Internet virtually anytime and anywhere, reducing the application process by

30 minutes and improving accuracy on filed documents.

Three early adopters—the 3M Company, the law firm of Fish & Richardson and the University of Maryland—filed the first applications using EFS-Web, the new web-based patent application tool, today at the Commerce Department officially opening the system to all patent applicants.

"This new electronic filing system is another critical step in our on-going efforts to provide innovators with the most secure and simple patent-applicant process in the world," said Gutierrez. "Our country is rich in skill and creativity. Every day this human talent develops novel and useful inventions to improve the lives and livelihoods of the American people."

"The USPTO worked with the intellectual property community to develop this new system," added Under Secretary Dudas.  "Focus groups composed of corporations, law firms and individual filers provided input about their needs. Based on this customer input, USPTO developed a tool designed to meet those needs – an efficient patent submission tool in which users have full confidence."

The shift from a paper-based system to an electronic environment offers a number of advantages to patent filers. Patent customers can file applications and related documents using their existing software. It is now possible to submit documents by simply attaching PDF files. EFS-Web offers additional practical flexibility to the intellectual property community by allowing staff to file documents prepared and reviewed by patent attorneys. Filers will also be able to pay filling fees over the Internet.

EFS-Web submissions are automatically processed through the USPTO. Patent filers receive rapid access to their applications through the Patent Application Information Retrieval (PAIR) system, so they can view their submissions and confirm that documents have been securely and accurately received. EFS-Web also offers visual proof that patent applications and documents have been received in the form of an automatic electronic receipt.

Over the last several months, the USPTO conducted beta tests of the technology. EFS-Web beta participants, representing corporations, law firms and independent inventors, received product overviews, specifications on system functionality and requirements and hands-on training. Over 80 organizations participated in the EFS-Web pilot program. Prior to deployment, close to 200 pilot participants attended the EFS-Web onsite and Web-based trainings.

For more information on EFS-Web, please visit http://www.uspto.gov .

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Commerce Secretary Carlos Gutierrez to Launch New Electronic Patent Application Filing System

Posted by J Matthew Buchanan at March 15, 2006 09:37 AM

 MEDIA ADVISORY
Contact:
Brigid Quinn or Ruth Nyblod
571-272-8400
brigid.quinn@uspto.gov
ruth.nyblod@uspto.gov March 14, 2006
#06-18

Commerce Secretary Carlos Gutierrez to Launch New Electronic Patent Application Filing System

U.S. Commerce Secretary Carlos M. Gutierrez and Under Secretary for Intellectual Property Jon Dudas will officially launch the U.S. Patent and Trademark Office's (USPTO) new electronic filing system for patent applications. EFS-Web allows patent filers anywhere in the world at any time to submit patent applications and to pay fees via the Internet.

WHAT	Launch of USPTO's new electronic filing system for patent applications. Remarks by Secretary Gutierrez and Under Secretary Dudas. First electronic filing by 3M company, Fish & Richardson PC and University of Maryland
WHO	Secretary of Commerce Carlos M. Gutierrez Under Secretary of Commerce for Intellectual Property Jon Dudas Commissioner for Patents John Doll Gary Griswold, chief intellectual property counsel for 3M company Tom Beddow, vice president for Government Affairs for 3M company Felicia Metz, intellectual property associate, Office of Technology Commercialization, University of Maryland Karl Renner, principal, Fish & Richardson P.C.
WHERE	U.S. Department of Commerce 1401 Constitution Avenue, N.W. Room 4830 Washington, D.C.
WHEN	Thursday, March 16, 2006 9:30 a.m. Press check in begins 10:00 a.m. Press conference begins

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Changes to Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005 (10Mar2006)

Posted by J Matthew Buchanan at March 10, 2006 02:18 PM

You can view and/or download a .pdf of this notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr12281.pdf

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Commerce Under Secretary Highlights Florida’s Innovation and Competitiveness

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

March 10, 2006 #06-17

Commerce Under Secretary Highlights Florida’s Innovation and Competitiveness

Orlando, Fla. -- Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas today echoed President Bush’s agenda to improve America’s ability to innovate, maintain a competitive edge and make health care more efficient. Under Secretary Dudas also presented an Export Achievement Award to NR Electronics, an Orlando small business.

“Florida is growing in terms of economy, innovation, and intellectual property,” noted Dudas. “In short, Florida and the Orlando area are helping America grow and lead the national and world economies. The President’s American Competitiveness Initiative strategy will increase federal investment in research, ensure that the United States continues to lead the world in opportunity, and help provide American young people with a strong foundation in math and science. What’s happening in Florida is certainly on the leading edge, and the President’s American Competitiveness Initiative will only strengthen what Florida is already doing.”

Dudas lauded the area’s impressive examples of innovation, including a pioneer in feature animation, Walt Disney, who invented the first film to combine animation with synchronized sound. Disney was inducted in the National Inventors Hall of Fame for his “art of animation.” Today, the Walt Disney Company, as well as neighboring large and small businesses, still rely on intellectual property protection to help support every aspect of their business.

The number of patents issued to Floridians has more than doubled in the past 20 years from about 1,100 patents in 1984 to almost 3,000 in 2004. Last year, Florida residents registered almost 3,700 trademarks and filed 17,000 more applications. The Orlando area has been ranked first in the country for gazelle jobs—those jobs in companies with annual sales revenue growth of 20 percent or more for four straight years.

Under Secretary Dudas also recognized the NR Electronics company as an example of how U.S. small businesses are growing through exports. The company, founded in 2003 as a one-man electronics distributor, specializes in obsolete and hard-to-find products. With exports growing, the company has reached almost $1 million in annual sales. In presenting the Commerce Department’s Export Achievement Certificate to the NR Electronics’ managing director, Under Secretary Dudas commended the company for “helping create more U.S. jobs, which strengthens our economy.”

# # #

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IP Global Marketplace Conference Set for McLean, Virginia - March 27-28

IP Global Marketplace Conference Set for McLean, Virginia - March 27-28

The United States Patent and Trademark Office (USPTO) will present a two-day conference on intellectual property for small and medium size businesses, entrepreneurs and independent inventors who are interested in manufacturing their products abroad. The conference will be held March 27-28 at the Ritz-Carlton Hotel at Tyson’s Corner in McLean, Virginia. Congressman Frank Wolf (R Va.) will be a special guest speaker. The sessions run both days from 8:30 a.m. to 5:00 p.m.

The conference is part of the federal government’s Strategy Targeting Organized Piracy (STOP) and the USPTO’s continuing effort to increase public awareness about intellectual property and the enforcement of those rights in the global marketplace.

The conference is free, but seating is limited. Register now.

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Comments on Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (February 2006) (08Mar2006)

Posted by J Matthew Buchanan at March 8, 2006 03:11 PM

As of February 28, 2006, the organizations and persons listed below have submitted comments in response to the Proposed Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rulemaking [PDF], first published in the Federal Register at 71 Fed. Reg. 48 (January 3, 2006) and then published in the Official Gazette at 1302 Off. Gaz. Pat. Office 1318 (January 24, 2006).

It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to Robert.Clarke@uspto.gov, or contact Robert A. Clarke by telephone at (571) 272-7735.

The comments below are grouped into the following categories: intellectual property organizations, government agencies, corporations, and individuals. Each comment is attributed to the individual submitting the comment unless the comment indicates it is made on behalf of an organization.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

---

A. Corporations

1. Hitt Gaines, P.C. [PDF]
2. Luminetx Corporation [PDF]
3. PowerDsine Ltd. [PDF]
4. Unilever Patent Group [PDF]

B. Law Firms

1. Alston & Bird LLP [PDF]
2. Harrington & Smith, LLP [PDF]
3. JLJ, Inc. [PDF]
4. Kremblas, Foster, Phillips & Pollick [PDF]
5. Lacasse & Associates, LLC [PDF]
6. Martine Penilla & Gencarella, LLP [PDF]
7. Mayer, Brown, Rowe & Maw LLP [PDF]
8. Nath & Associates [PDF]
9. Sonnenschein Nath & Rosenthal LLP [PDF]
10. Thorpe North & Western, LLP [PDF]
11. Trexler, Bushnell, Giangiorgi, Blackstone & Marr [PDF]

C. Individuals

1. Bromer, Nick [PDF]
2. Dove, Barry [PDF]
3. Eilberg, William [PDF]
4. Freedman, Immanuel [PDF]
5. Grogan, Ray [PDF]
6. Hand, Francis [PDF]
7. Herrick, William [PDF]
8. Huston, Chad [PDF]
9. Looper, Valerie [PDF]
10. Mouttet, Blaise [PDF]
11. Orange, David [PDF]
12. Rajesh, Elaine [PDF]
13. Schindler, Edwin [PDF]
14. Steinberg, Dan [PDF]
15. Vanderhye, Bob[PDF]
16. Washburn, Brian [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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Comments on Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (February 2006) (07Mar2006)

Posted by J Matthew Buchanan at March 7, 2006 07:09 PM

As of February 28, 2006, the organizations and persons listed below have submitted comments in response to the Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making [PDF], first published in the Federal Register at 71 Fed. Reg. 61 (January 3, 2006) and then published in the Official Gazette at 1302 Off. Gaz. Pat. Office 1329 (January 24, 2006).

It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to Robert.Clarke@uspto.gov, or contact Robert A. Clarke by telephone at (571) 272-7735.

The comments below are grouped into the following categories: intellectual property organizations, government agencies, corporations, and individuals. Each comment is attributed to the individual submitting the comment unless the comment indicates it is made on behalf of an organization.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

---

A. Intellectual Property Organizations]

B. Government Agencies

C. Corporations

D. Individuals

1. Cornish, Judge [PDF]
2. Dove, Barry [PDF]
3. Foster, Frank [PDF]
4. Harrington, Mark [PDF]
5. Kalis, Janal [PDF]
6. Lewis, David [PDF]
7. Maire, David [PDF]
8. Orange, David [PDF]
9. Palmer, Alun [PDF]
10. Rimell, Sam [PDF]
11. Sainio, Jeffrey [PDF]
12. Stanton, Gerald [PDF]
13. Steen, Edward [PDF]
14. Steinberg, Dan [PDF]
15. Vanderhye, Bob [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a)

Posted by J Matthew Buchanan at March 1, 2006 08:29 AM

Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a)

Pursuant to Trademark Act § 68(c)(1), 15 U.S.C. § 1141h(c)(1), the USPTO must, within 18 months of the date a request for extension of protection is transmitted to the USPTO, send to the International Bureau of the World Intellectual Property Organization notice of: (A) a refusal of registration based on examination of the request; (B) an opposition to registration; or (C) the possibility that an opposition may be filed after the conclusion of the 18-month period. If a notice under either subsection (B) or (C) is not sent within the 18-month period, the Trademark Trial and Appeal Board may not entertain an opposition to registration, and “the Director shall issue a certificate of extension of protection pursuant to the request.” Trademark Act § 68(c)(4), 15 U.S.C. § 1141h(d)(4).

The notice required under § 68(c)(1)(C), 15 U.S.C. § 1141h(c)(1)(C), was inadvertently not sent with respect to a number of requests for extension of protection, which are listed below by serial number. Because in each case more than 18 months has passed since transmission of the request for extension of protection to the USPTO, no opposition or extension of time to oppose may be considered, and if filed, will be dismissed. The USPTO will promptly issue a certificate of protection with respect to the listed requests.

Affected parties are not precluded from filing a petition for cancellation of the certificate of protection, if otherwise appropriate.

The USPTO has corrected the condition that resulted in a failure to send the notices. To ensure that this problem will not happen again, until further notice the USPTO will send both an electronic and a paper notice of possible opposition to the International Bureau. 

79001941	79002208	79002588	79003583
79002197	79002440	79002603	79002517
79002656	79002452	79002612	79002470
79002472	79002466	79002614	79003124
79002492	79002468	79002621	79000129
79002577	79002478	79002630	79001952
79002591	79002481	79002631	79002788
79002620	79002503	79003120	79003475
79002622	79002515	79003458	79002125
79002632	79002556	79003459
79003571	79002566	79003573

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USPTO Town Hall Meeting Focuses on Improvements to Patent Review Process

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

February 28, 2006 #06-15

USPTO Town Hall Meeting Focuses on Improvements to Patent Review Process

Berkeley, Calif. —Efficient and effective patent examination is critical to American competitiveness and innovation, Under Secretary of Commerce for Intellectual Property Jon Dudas today told an audience of California patent attorneys, patent agents, independent inventors and members of the small business community. The Under Secretary stressed that the USPTO is seeking the public's input on ways in which it can enhance the efficiency and effectiveness of the patent examination process.

“ The USPTO clearly has a responsibility to do everything it can to improve America's patent system. That is why we are undertaking this collaborative approach – putting forth quality and efficiency proposals for the patent community to give us feedback ,” said Dudas. “Applicants and the public deserve certainty. This focus on quality of applications and closure of the examination process will provide more certainty. Everyone agrees that better quality input will result in a better quality end product.”

The USPTO has published for comment proposed initiatives to prioritize the claims reviewed during the examination process and to better focus the agency's examination of patent applications, by requiring applicants to identify the most important claims to the invention.

The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Significant delay in granting a patent can slow new products coming to market. Under Secretary Dudas noted that simply hiring more patent examiners will not slow the growth in the time it takes to review a patent or improve the quality of examination. Expediting the process will occur only with the participation of applicants.

In FY 2004, almost one-third of the 355,000 new patent applications had already been reviewed and rejected by the USPTO, but applicants resubmitted them mostly with only minor changes. Also, over 40 percent of new applications in FY 2004 had more than 20 claims.

In the past two years, the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59 percent in FY 2004 to 70 percent in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2 percent from 82 percent the previous year. The compliance rate for final allowances improved from 94.8 percent to 96 percent from FY 2004 to FY 2005.

The proposed new rules can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf . PDF viewer is required for these documents.

Additional Town Hall Meetings are being planned for Texas and Washington, D.C.

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U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM TO SOUTHERN CALIFORNIA

Posted by J Matthew Buchanan at February 27, 2006 03:10 PM

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

February 27, 2006 #06-14

U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM
TO SOUTHERN CALIFORNIA
Efforts Focus on Small Businesses that are Particularly Vulnerable

San Diego, Calif . – U.S. Under Secretary of Commerce for Intellectual Property Jon Dudas and U.S. Representative Darrell Issa (CA-49) today warned members of California's small business community that they are increasingly at risk of overseas intellectual property theft -- even if they do not export. Both Under Secretary Dudas and Representative Issa urged America's small businesses to consider protective action.

In remarks before the “Conference on the Global Intellectual Property Marketplace,” sponsored by the Commerce Department's U.S. Patent and Trademark Office (USPTO), Dudas and Issa emphasized the importance to businesses of obtaining intellectual property protection both in the United States and overseas. Dudas noted that California alone has about 1.1 million small businesses employing 7.8 million residents.

“In 2004, California exported almost $110 billion in products. The top four destinations for California's exports are Mexico, Japan, Canada and China. Piracy and counterfeiting around the world are on the rise, and intellectual property-based companies—and those with widely recognized names or products—are especially vulnerable to intellectual property theft abroad,” Dudas said. “The goal of this seminar here in San Diego is to arm small businesses with the information they need to protect their intellectual property assets in the U.S. and anywhere around the world they conduct business.”

While counterfeiting and piracy pose a serious threat to all American businesses, small businesses are particularly at risk because they often lack the knowledge and expertise to effectively combat it. Because small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

The San Diego seminar is the latest in a series the USPTO is hosting across the country to help educate American small businesses about the realities of piracy and counterfeiting. During the two-day seminar in San Diego, intellectual property experts from the agency are providing attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world. Previously, USPTO seminars were held in Salt Lake City, Utah; Phoenix, Arizona; Austin, Texas; and Miami, Florida.

The San Diego seminar represents one of the U.S. Patent and Trademark Office's many efforts to educate small businesses about intellectual property protection. The USPTO also has a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness .

The seminars and Web site are part of a much larger USPTO and federal government effort. The Strategy Targeting Organized Piracy (STOP!) initiative aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America's borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

For more information about the U.S. Patent and Trademark Office's effort to educate American businesses about intellectual property rights, visit www.stopfakes.gov .

# # #

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Berkeley Town Hall Meeting to Focus on Improvements to Patent Review Process

MEDIA ADVISORY Contact: Brigid Quinn or Ruth Nyblod 571-272-8400 brigid.quinn@uspto.gov ruth.nyblod@uspto.gov

February 24, 2006 #06-13

Berkeley Town Hall Meeting to Focus on Improvements to Patent Review Process

Washington, D.C. – Under Secretary of Commerce for Intellectual Property Jon Dudas will lead a town hall meeting to provide background information regarding proposed new rule changes to improve patent examination. The changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and reducing the time it takes for the patent review process. In addition, the USPTO will demonstrate its new Web-based patent electronic filing system ( EFS Web ).

What	Town Hall Meeting An overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary. A question and answer session will follow immediately after presentations.
Who	Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Patent attorneys, patent agents, independent inventors and members of the small business community
When	Tuesday, February 28, 2006 1:00 p.m.
Where	University of California, Berkeley International House 2299 Piedmont Avenue Berkeley, California

For more information, please go to http://www.uspto.gov/web/patents/townhall.htm .

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Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Interim rule (23Feb2006)

Posted by J Matthew Buchanan at February 24, 2006 06:34 PM

View and/or download a copy of the Notice at the following URL:

 

http://www.uspto.gov/web/offices/com/sol/notices/71fr9260.pdf

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Proposed Rule Changes to Focus the Patent Process in the 21st Century

Background

The U.S. Patent and Trademark Office continues to propose new initiatives to make the Office more efficient, to ensure that the patent application process promotes innovation, and to improve the quality of issued patents. These pages have been developed to provide full transparency to the public about these ongoing efforts. We inaugurate these pages with information about rules proposed on January 3, 2006 related to claims practice and continuation practice. These proposed rule changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and reducing the time it takes for the patent review process. In addition they will improve the quality of issued patents and ensure that the USPTO continues to promote innovation. The information below includes an overview of the challenges the USPTO faces, the reasons why proposed new rules are necessary, the proposed rule changes, and supporting material. We have also included a schedule of dates and places where USPTO representatives will make presentations concerning the proposed rules. We will continue to update these pages as new information or proposals are unveiled.

USPTO Chicago Town Hall Meeting Focuses on Proposed Rule Changes to Improve Patent Examination

The Commerce Department’s United States Patent and Trademark Office (USPTO) on February 1, 2006 provided an audience of nearly 500 Chicago-area patent attorneys, patent agents, independent inventors and members of the small business community with background information regarding proposed new rule changes. Commissioner for Patents John Doll and James Toupin, the agency's general counsel, discussed the challenges the USPTO faces and the reasons why the proposed new rules limiting claims and rework are necessary. They then took questions from the audience.

Specifically, these initiatives will prioritize the claims reviewed during the examination process and better focus the agency’s examination of patent applications by requiring applicants to identify the most important claims to the invention.

The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Since the USPTO's resources have not increased at the same rate as filings, it has become much more difficult to provide reliable, consistent and prompt patentability decisions. Delay in granting a patent can slow new products coming to market, and issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth. Simply hiring more patent examiners will not slow the growth in the time it takes to get a patent or improve the quality of examination. This will occur only through the participation of applicants in facilitating more effective and efficient patent examination.

“Improving the patent process will take everyone working together-applicants and the USPTO,” Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office Jon Dudas noted earlier. “Better quality applications mean better examination. We need more focus throughout and closure to the examination process.”

In FY 2004, almost one-third of the 355,000 new patent applications had already been reviewed and rejected by the USPTO, but applicants resubmitted them mostly with only minor changes. Also, over 40% of new applications in FY 2004 had more than 20 claims. These practices waste the limited time examiners have to review an application and prevent examiners from focusing on the most important issues in an application.

In the past two years, the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59% in FY 2004 to 70% in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2% from 82% the previous year. The compliance rate for final allowances improved from 94.8% to 96% from FY 2004 to FY 2005.

Complete slide set presented at this Town Hall Meeting (html version) (zip version)
For background and justification, see slides 8-30 and 48-60.
For proposals on continuations, see slides 31-38 and 72-85.
For proposals on claims, see slides 39-47 and 61-71.

---

 

1. Claims Practice Federal Register - 71 Fed. Reg. 61 (03 January 2006) Official Gazette
Topics:	Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (03Jan2006) [PDF]
	Examples
	Comments from Public

(top of page)

2. Continuation Practice Federal Register - 71 Fed. Reg. 48 (03 January 2006) Official Gazette
Topics:	Proposed Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rulemaking (03Jan2006) [PDF]
	Examples
	Comments from Public

(top of page)

Presentation Materials

In addition to the Chicago Town Hall slides described and available above, the following presentation materials are available: Slides (25 January 2006 presentation regarding background and justification) (html version) (zip version) Slides (25 January 2006 presentation by Robert Spar regarding Claims Practice) (html version) (zip version) Slides (25 January 2006 presentation by Robert Spar regarding Continuation Practice) (html version) (zip version) Slides (February 2006 presentation by John Whealan regarding all proposals) (html version) (zip version)

(top of page)

Presentation Schedule

Additional Town Hall meetings sponsored by the USPTO. Check www.uspto.gov for additional information or contact the Office of Public Affairs at 571-272-8400. 02/28/2006 - Boalt Hall School of Law - Berkeley, CA TBA Mar - Houston, TX 04/21/2006 - USPTO - Alexandria, VA The following is a list of events that are not sponsored by the USPTO, but USPTO representatives will make (or have made) presentations. For more information on these events, please contact the sponsor unless otherwise identified below. 02/11/2006 - ABA Counsel - Chicago, IL 02/13/2006 - Orange County Bar Assoc. - Newport Beach, CA 02/14/2006 - Century City Bar Assoc. - Century City, CA 02/17/2006 - Duke Law School - Durham, NC 02/23/2006 - Franklin Pierce Law School - Concord, NH (contact: 603-228-1541 ext 1150) 02/28/2006 - Federal Circuit Bar Assoc. - Washington, DC 03/09/2006 - Biotechnology Industry Org. - San Francisco, CA (contact: www.bio.org/ip/ipmeeting) 03/20/2006 - State Bar of Michigan Intellectual Property Law Section - East Lansing, MI (contact: 877-229-4350) 04/05/2006 - Georgetown Law Center - Washington, DC 04/07/2006 - American Intellectual Property Law Assoc. - New York, NY (contact: www.aipla.org) 04/12/2006 - Biotechnology Industry Org. - Chicago, IL (contact: www.bio.org)

(top of page)

NOTE: The information contained on this page was correct at the time of original publication. Some information may no longer be applicable. Amendments may have been made to the rules of practice since the original date of a publication, there may have been a change in any fees indicated, and certain references to publications may no longer be valid. Wherever there is a reference to a statute or rule, please check carefully whether the statute or rule in force at the date of publication of the information has since been amended.

For questions concerning the proposals, please contact the Office of Patent Legal Administration at 571-272-7701 or Patent.Practice@uspto.gov.

Some contents linked to on this page require a plug-in for ZIP , PDF and PowerPoint Files.

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New Private Pair

Posted by Stephen M. Nipper at February 23, 2006 02:55 PM

Matt Buchanan and I (Stephen M. Nipper) listened to the USPTO presentation on Private Pair earlier. Here are our notes.

The four main new features touted:

1. web based digital certificate security—you don’t need USPTO Direct anymore. Log in using your browser (Internet Explorer…they pointed out that FireFox may or may not work (worked just fine for both of us)). All you (and your secretary) need is your digital certificate (your old .EFS file) and your EFS password. USPTO Direct will still work but will be eventually phased out.

2. first action prediction—new tab in Private Pair gives you a prediction as to when you can expect a first office action. They’ll even generate a letter for you which you can print for your file (and your client).

3. new look and feel - a uniform, tabbed browser interface is easy to navigate and fairly intuitive

4. supplemental content—biosequence listings, text tables, computer program listings, etc.

Later today, the presentation (audio and slides) will be available here: http://webex.client.ninesystems.com/uspto

It is working right now! We’ve both tested it. Here is the login: http://portal.uspto.gov/external/portal/home . It says “private beta” (we bet that is removed later today) but you can still log in. Then select “Enter Private Pair.” The next page is where you enter your digital certificate and password.

Kudos to the PTO team that is responsible for this effort -- the new system is a major step forward. Also, the presenation was well-organized and nicely handled. Great job!

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Under Secretary of Commerce To Open Berkeley Town Meeting on Patent Claims and Continuation Practice

Under Secretary of Commerce To Open Berkeley Town Meeting on Patent Claims and Continuation Practice -- Register Now
Berkeley, California - February 28

This town hall meeting on the proposed rule changes for claims and continuations will be held February 28 in Berkeley, California. The USPTO and Berkeley Center for Law and Technology (BCLT) will co-sponsor the event at International House (across from BCLT, Boalt Hall in Berkeley) The meeting will be held from 1pm – 3pm. In addition the USPTO will have a demonstration from 3pm – 4pm at the same location of its new Web-based patent electronic filing system (EFS Web).

Jon Dudas, Under Secretary of Commerce and Director of the United States Patent and Trademark Office, Jay Lucas, Acting Deputy Commissioner for Patent Examination Policy and James Toupin, the agency’s General Counsel, will provide an overview of the challenges the USPTO faces, the reasons why the proposed new rules are necessary, and information on the proposed rule changes. A question and answer session will follow immediately after their presentation.

Registration is free and CLE credit may be available.

These town hall meetings are for patent attorneys, patent agents, independent inventors and members of the small business community, or anyone else interested in patent examination.

>> For more information, including registration, please go to http://www.uspto.gov/web/patents/townhall.htm.

The first town hall meeting was in Chicago on February 1, 2006. Details regarding future town hall meetings in Texas and Washington, DC, will be posted at a later date.

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USPTO To Hold Live On-Line for Independent Inventors

Posted by J Matthew Buchanan at February 17, 2006 08:24 AM

USPTO To Hold Live On-Line for Independent Inventors

Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line on Wednesday, February 22, from 2 to 3 pm (ET). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the online will be posted on the home page of the USPTO website at 10:30 am (ET) on Wednesday. Inventors can begin logging on for the on-line at 1:30 pm.

The independent inventor on-line is part of the USPTO's continuing efforts to promote and protect America 's independent inventors. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.

We have transcripts and frequently-asked questions and answers from previous onlines available on the Inventors Resources pages. Check them out and save time — your question may already have an answer waiting for you!

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Commerce Under Secretary to Highlight North Carolina’s Innovation and Competitiveness

Posted by J Matthew Buchanan at February 16, 2006 04:20 PM

MEDIA ADVISORY Contact: Brigid Quinn or Ruth Nyblod 571-272-8400 brigid.quinn@uspto.gov ruth.nyblod@uspto.gov

February 16, 2006 #06-10

Commerce Under Secretary to Highlight North Carolina’s Innovation and Competitiveness
Charlotte event to focus on UNC Charlotte leadership in health care–related innovation

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas will speak at UNC Charlotte to highlight President Bush’s competitiveness initiative and a genda to make the health care system more efficient while continuing to lead the world in cutting edge medicine .

What	USPTO event celebrating competitiveness and innovation in health care technology-as follow-up to President’s State of the Union address. Learn about UNC Charlotte’s leadership in bringing ideas to market, their benefits to the region and the country, and important role of the U.S. patent and trademark systems. A question and answer session will follow immediately after the speech.
Who	Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office John Doll, Commissioner for Patents Congressman Robin Hayes (N.C.-8 th District) Researchers and administrators at University of North Carolina-Charlotte and the Charlotte Research Institute, independent inventors, local technology-oriented companies.
Where	UNC Charlotte Campus Woodward Hall / Science and Technology Building Room 106
When	Friday, February 17, 2006 2:00 p.m.

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United States Patent & Trademark Office Issues 7 Millionth Patent

Posted by J Matthew Buchanan at February 14, 2006 01:06 PM

United States Patent & Trademark Office Issues 7 Millionth Patent
Patent Assigned to DuPont for Novel Fibers

WASHINGTON, D.C.– The Department of Commerce’s United States Patent and Trademark Office (USPTO) today issued patent No. 7 million to DuPont senior researcher John P. O’Brien for “polysaccharide fibers” and a process for their production. The fibers have cotton-like properties, are biodegradable and are useful in textile applications.

It took 75 years to get from patent No.1 to patent 1 million. It has taken less than one tenth of that time to go from 6 million to 7 million patents.

• Patent No. 1 million was issued on August 8, 1911, for a tubeless vehicle tire.


• Twenty-four years later, on April 30, 1935, patent No. 2 million issued for a vehicle wheel to increase the safety and longevity of pneumatic tires.


• Patent No. 3 million issued 26 years later on September 12, 1961, to an inventor at the General Electric Co., for an automated system that translated letters, numbers and symbols to data processing code.


• Patent No. 4 million issued 15 years later on December 28, 1976 for a process for recycling asphalt aggregate compositions.


• Fifteen years later, on March 19, 1991, Patent No. 5 million issued to a University of Florida inventor, for a more efficient way to produce fuel ethanol.


• Only eight years later, patent No. 6 million issued on December 7, 1999, to 3Com Corporation’s Palm Computing for its HotSync® technology.


• And now just a little more than six years later, patent No. 7 million issues.

Patent No. 1 was issued in 1836. Earlier patents were not numbered, although the first U.S. patent was issued in 1790. Approximately 10,000 patents were issued between 1790 and 1836. The USPTO issued 151,079 utility patents in fiscal year 2005.

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USPTO’s Town Hall Meeting on Proposed Rules on Claim and Continuation Practice Coming to Berkeley CA, February 28, 2006

USPTO’s Town Hall Meeting on Proposed Rules on Claim and Continuation Practice Coming to Berkeley CA, February 28, 2006

Register Now

The second in a series of town hall meetings on the proposed rule changes for claims and continuations will be held February 28 in Berkeley, California. The USPTO and Berkeley Center for Law and Technology (BCLT) will co-sponsor the event at International House (across from BCLT, Boalt Hall in Berkeley). The meeting will be held from 2pm – 4pm. In addition the USPTO will have a demonstration from 1pm – 2pm at the same location of its new Web-based patent electronic filing system (EFS Web).

Jay Lucas, Acting Deputy Commissioner for Patent Examination Policy and James Toupin, the agency’s General Counsel, will provide an overview of the challenges the USPTO faces, the reasons why the proposed new rules are necessary, and information on the proposed rule changes. A question and answer session will follow immediately after their presentation.

Registration is free and CLE credit may be available.

These town hall meetings on the proposed changes to the rules are for patent attorneys, patent agents, independent inventors and members of the small business community, or anyone else interested in patent examination.

>> For more information, including registration, please go to http://www.uspto.gov/web/patents/townhall.htm.

The first town hall meeting was in Chicago on February 1, 2006. Details regarding future town hall meetings in Texas and Washington, DC, will be posted at a later date.

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Commerce Under Secretary Highlights Nevada’s Innovation and Competitiveness

Posted by J Matthew Buchanan at February 8, 2006 09:32 AM

Commerce Under Secretary Highlights Nevada’s Innovation and Competitiveness
Nevada Doubles Patents and Leads Nation with Most Business Start-ups

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas last week in Las Vegas highlighted Nevada’s innovation and competitiveness as a follow-up to President George W. Bush's State of the Union address announcing the American Competitiveness Initiative (ACI).

“Nevada is growing in terms of its intellectual property, skilled work force and economic strength,” Under Secretary Dudas said. “In short, Nevada is helping America continue to lead the national and world economies.”

In highlighting the President’s American Competitiveness Initiative during remarks to local government officials, inventors, business representatives and educators, Dudas lauded the area’s impressive examples of innovation, noting that such regional development is “key to our nation’s economic future.”

In the past 10 years, the number of patents awarded to residents of Nevada has more than doubled, from 212 patents in 1994 to 461 in fiscal year 2005. Nevada also ranked first in the nation in having the most business start-ups, according to the most recent State New Economy Index.

An essential component of any regional economy is a thriving university. The University of Nevada-Las Vegas is a premier research university. UNLV, known for its growing technology transfer program, is building a $75 million science, engineering and technology complex scheduled to open next year, which will integrate teaching and research space. The university’s leading-edge work and partnerships with industry provide an all-around winning equation for the university and for the American economy.

Nevada’s independent inventors and small businesses, such as a company that makes batteries used for hybrid electric vehicles, exemplify American ingenuity. And to stimulate the next generation of American inventors, Nevada has Camp Invention, a summer educational outreach program for children, sponsored by the USPTO and the National Inventors Hall of Fame. Camp Invention runs 15 weeklong camps throughout Nevada designed to encourage the creative process that leads to problem solving, discovery and invention.

“The President’s American Competitiveness Initiative will encourage innovation through new federal funding for research, tax certainty for research and development, and strengthening education in math and science,” Dudas said. “ACI will reinforce what Nevada is already doing.

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USPTO to hold Open Source Software Community Meeting February 16, 2006

USPTO to hold Open Source Software Community Meeting February 16, 2006

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has created a partnership with the open source community to ensure that patent examiners have improved access to all available prior art relating to software code during the patent examination process.

In December the USPTO representatives met with members of the open source software community, which provided an opportunity for members to discuss with the USPTO prior art access issues related to software patent quality. The meeting focused on getting the best prior art references to the examiner during the initial examination process.

As a follow-up to their December 6th meeting, USPTO representatives will hold another meeting on February 16th, 2006. This meeting will be open to the public and will focus on further developing previously discussed initiatives as well as any new prior art initiatives offered at that time.

All members of the open source software community are encouraged to attend. However, space is limited so please register early. Only the first 220 registrations can be accepted. For additional information go to http://www.uspto.gov/web/patents/opensource2006.htm.

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COMMERCE DEPARTMENT FY 2007 BUDGET MAINTAINS COMMITMENT TO JOB GROWTH AND U.S. COMPETITIVENESS

Posted by J Matthew Buchanan at February 6, 2006 05:17 PM

COMMERCE DEPARTMENT FY 2007 BUDGET MAINTAINS
COMMITMENT TO JOB GROWTH AND U.S. COMPETITIVENESS

WASHINGTON, D.C. – U.S. Commerce Secretary Carlos M. Gutierrez today announced that President Bush’s $6.1 billion budget request for the U.S. Department of Commerce maintains the Department’s priorities of promoting job growth and U.S. competitiveness while also restraining discretionary Federal spending.

“This budget request reflects President Bush’s commitment to maintaining a strong and vibrant economy that enables U.S. businesses to innovate, compete and succeed in the global marketplace,” said Gutierrez. “This administration is determined to continue providing American entrepreneurs and workers with the tools they need to fuel our economy while also reining in federal spending.”

The Commerce Department’s budget will focus on its main goals of providing information and tools to maximize U.S. competitiveness; fostering science and technological leadership, including protecting intellectual property rights; and observing, protecting and managing the earth’s resources to promote environmental stewardship.

Maximizing Competitiveness and Economic Growth

A central theme for the President’s FY 2007 Budget is economic growth and maximizing U.S. competitiveness.

The International Trade Administration (ITA) supports U.S. commercial interests at home and abroad by strengthening the competitiveness of American industries and workers, promoting international trade, opening markets to U.S. businesses, and ensuring compliance with domestic and international trade laws and agreements. The President’s FY 2007 Budget requests $409 million for ITA to serve its goals along with an increase of $2 million to support the President’s Asia-Pacific Partnership on Clean Development and Climate. This partnership will reduce the barriers to energy efficient American products and technologies in Australia, China, India, Japan and South Korea.

The Economic Development Administration (EDA) is charged with leading the federal economic development agenda by promoting innovation and competitiveness while preparing American regions for growth and success in the worldwide economy. The President’s FY 2007 Budget expands the programs of EDA by $47 million to $327 million. This is a 17 percent increase reflecting the Administration’s emphasis on regional competitiveness and measuring performance as the underlying strategy for federal economic development policy. EDA will work collaboratively with other federal partners in the establishment of a proactive, regionally based federal economic development framework to empower America’s communities to be globally competitive.

The Bureau of Economic Analysis (BEA) promotes the understanding of the United States economy and its competitive position. Under the umbrella of the Economics and Statistics Administration (ESA), BEA provides key objective data on the Nation’s economic condition in a timely and cost-effective manner. The President’s FY 2007 Budget requests $80 million to continue providing statistics that are critical to public and private sector decision-making.

In support of their role as the leading source of quality data regarding the nation’s people and economy, the President’s FY 2007 Budget request for ESA’s Census Bureau is $878 million. Among the additional funding for programmatic changes included in this budget request for Census is an increase of $44 million to reengineer the collection of basic census data to meet constitutional and legal mandates in preparation for the 2010 Decennial Census, implement the American Community Survey to obtain detailed annual data, and modernize the Bureau’s geographic database. Other program additions include $11 million to develop tools and systems to support the 2007 Economic Census and $3 million for the Census of Governments to collect data supporting the 2007 Census.

The Bureau of Industry and Security (BIS) regulates the export of sensitive goods and technologies to protect the security of the U.S. The President’s FY 2007 Budget requests $78.6 million to enable BIS to effectively carry out this mission. The proposed budget includes an increase to modernize the Export Control Automated Support System which is critical for processing export licenses.

To continue their focus on accelerating the competitiveness and growth of minority-owned businesses, the President’s FY 2007 Budget request for the Minority Business Development Agency (MBDA) is $29.6 million.

Fostering Leadership in Science and Technology

The President’s FY 2007 Budget request of $581 million for the National Institute of Standards and Technology (NIST), a part of the Technology Administration (TA), will advance measurement science, standards, and technology disciplines such as nanotechnology, quantum information science and neutron research. This request includes a $104 million increase for NIST laboratories, National Research Facilities, and Construction and Major Renovations to implement the President’s ten-year American Competitiveness Initiative.

For the third year in a row, President Bush is recommending that the U.S. Patent and Trademark Office (USPTO) keep all of the fees it will collect. USPTO will use the $1.8 billion in spending authority contained in the President’s FY 2007 Budget request to reduce application processing time and increase the quality of its products. This funding would allow for the hiring of additional examiners, the refining of the electronic patent application filing and processing system, the improvement of quality assurance programs, and the implementation of higher standards for examiner certification and recertification.

For the National Telecommunications and Information Agency (NTIA), the President’s FY 2007 Budget request proposes programs in support of the Digital Television Transition and Public Safety Fund. These programs will provide consumers with vouchers to aid in purchasing digital-to-analog television converter boxes, assist public safety agencies in acquiring interoperable communications systems, and support an interim digital television broadcast system for New York City. The Digital Television Transition and Public Safety Fund, created by the Deficit Reduction Act of 2005, funds a number of programs with the auction proceeds of electromagnetic spectrum recovered from discontinued analog television signals.

Promoting Environmental Stewardship

The President’s FY 2007 Budget request of $3.6 billion for the National Oceanic and Atmospheric Administration (NOAA) reflects the Administration’s commitment to environmental stewardship. Within Operations, Research and Facilities, the request provides an increase of $12.4 million to operate the U.S. Tsunami Warning System, increases to several programs that will support a variety of fisheries in the Gulf of Mexico, and $6 million for the Open Rivers Initiative (ORI): a competitive grant program using a community-based model to remove river barriers in coastal states, thus enhancing populations of key NOAA trust species and supporting the President’s Cooperative Conservation Initiative.

For Procurement, Acquisition and Construction, major program increases include funding to have the NOAA Center for Weather and Climate Prediction facility ready to begin operations in 2008, $20 million for NOAA’s share of the National Polar-Orbiting Environmental Satellite System (NPOESS) which will replace the Polar-Orbiting Environmental Satellite series, and $113 million to continue the Geostationary Operational Environmental Satellite (GOES-R) series system acquisition which will be the next generation follow-on to the current GOES-N satellites used to track storm development and movement.

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Commerce Under Secretary Highlights Nevada’s Innovation and Competitiveness

Posted by J Matthew Buchanan at February 3, 2006 08:41 AM

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

February 2, 2006 #06-08

Commerce Under Secretary Highlights Nevada’s Innovation and Competitiveness
Nevada Doubles Patents and Leads Nation with Most Business Start-ups

Las Vegas, Nev. -- Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas today highlighted Nevada’s innovation and competitiveness as a follow-up to President George W. Bush's State of the Union address announcing the American Competitiveness Initiative (ACI).

“Nevada is growing in terms of its intellectual property, skilled work force and economic strength,” Under Secretary Dudas said. “In short, Nevada is helping America continue to lead the national and world economies.”

In highlighting the President’s American Competitiveness Initiative during remarks to local government officials, inventors, business representatives and educators, Dudas lauded the area’s impressive examples of innovation, noting that such regional development is “key to our nation’s economic future.”

In the past 10 years, the number of patents awarded to residents of Nevada has more than doubled, from 212 patents in 1994 to 461 in fiscal year 2005. Nevada also ranked first in the nation in having the most business start-ups, according to the most recent State New Economy Index.

An essential component of any regional economy is a thriving university. The University of Nevada-Las Vegas is a premier research university. UNLV, known for its growing technology transfer program, is building a $75 million science, engineering and technology complex scheduled to open next year, which will integrate teaching and research space. The university’s leading-edge work and partnerships with industry provide an all-around winning equation for the university and for the American economy.

Nevada’s independent inventors and small businesses, such as a company that makes batteries used for hybrid electric vehicles, exemplify American ingenuity. And to stimulate the next generation of American inventors, Nevada has Camp Invention, a summer educational outreach program for children, sponsored by the USPTO and the National Inventors Hall of Fame. Camp Invention runs 15 weeklong camps throughout Nevada designed to encourage the creative process that leads to problem solving, discovery and invention.

“The President’s American Competitiveness Initiative will encourage innovation through new federal funding for research, tax certainty for research and development, and strengthening education in math and science,” Dudas said. “ACI will reinforce what Nevada is already doing.”

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USPTO Town Hall Meeting Focuses on Proposed Rule Changes to Improve Patent Examination

Posted by J Matthew Buchanan at February 2, 2006 04:23 PM

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

February 1, 2006 #06-07

USPTO Town Hall Meeting Focuses on Proposed Rule Changes to Improve Patent Examination

Chicago, IL -- The Commerce Department’s United States Patent and Trademark Office (USPTO) today provided an audience of Chicago-area patent attorneys, patent agents, independent inventors and members of the small business community with background information regarding proposed new rule changes. Commissioner for Patents John Doll and James Toupin, the agency's general counsel, discussed the challenges the USPTO faces and the reasons why the proposed new rules limiting claims and rework are necessary.

Specifically, these initiatives will prioritize the claims reviewed during the examination process and better focus the agency’s examination of patent applications by requiring applicants to identify the most important claims to the invention.

The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Since the USPTO's resources have not increased at the same rate as filings, it has become much more difficult to provide reliable, consistent and prompt patentability decisions. Delay in granting a patent can slow new products coming to market, and issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth. Simply hiring more patent examiners will not slow the growth in the time it takes to get a patent or improve the quality of examination. This will occur only through the participation of applicants in facilitating more effective and efficient patent examination.

“Improving the patent process will take everyone working together—applicants and the USPTO,” Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office Jon Dudas noted earlier. “Better quality applications mean better examination. We need more focus throughout and closure to the examination process.”

In FY 2004, almost one-third of the 355,000 new patent applications had already been reviewed and rejected by the USPTO, but applicants resubmitted them mostly with only minor changes. Also, over 40% of new applications in FY 2004 had more than 20 claims. These practices waste the limited time examiners have to review an application and prevent examiners from focusing on the most important issues in an application.

In the past two years, the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59% in FY 2004 to 70% in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2% from 82% the previous year. The compliance rate for final allowances improved from 94.8% to 96% from FY 2004 to FY 2005.

The proposed new rules can be found at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf. PDF viewer is required for these documents.

Additional Town Hall Meetings are being planned for California, Texas, and Washington, D.C.

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USPTO to Hold Seminar on China's Impact on Intellectual Property

USPTO to Hold Seminar on China's Impact on Intellectual Property
Atlanta, Georgia, March 2 - 3, 2006

Continuing its efforts to help U.S. businesses protect their intellectual property in China, the United States Patent and Trademark Office (USPTO) is sponsoring a seminar on "China's Impact on Intellectual Property: Understanding the New Realities within a Global Economy," on Thursday and Friday, March 2 and 3, 2006, at the Hyatt Regency-Atlanta in Atlanta, Georgia.

The free, two-day program will provide comprehensive information on protecting and enforcing intellectual property in China for companies of any size -- from those contemplating entering the China market to those with an established presence in China as well as those who simply want to know more about better protecting themselves against IP theft from abroad.

Topics will include a review of China's laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems from China in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China for U.S. industry. Speakers at the seminar will include representatives from U.S. law firms servicing clients in China, Chinese law firms representing U.S. companies, academic experts on China's intellectual property system, representatives from various U.S. companies, Chinese government officials, and members of the USPTO's China intellectual property rights team.

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Commerce Under Secretary to Highlight Nevada’s Innovation and Competitiveness

Posted by J Matthew Buchanan at February 1, 2006 04:07 PM

MEDIA ADVISORY Contact: Brigid Quinn or Ruth Nyblod 571-272-8400 brigid.quinn@uspto.gov ruth.nyblod@uspto.gov

February 1, 2006 #06-06

Commerce Under Secretary to Highlight Nevada’s Innovation and Competitiveness
Nevada Doubles Patents and Leads Nation with Most Business Start-ups

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas will be in Las Vegas to highlight the innovation and economic competitiveness of the area following President George W. Bush’s State of the Union address announcing the American Competitiveness Initiative.

In the past 10 years, Nevada has more than doubled the number of patents awarded to residents. In 1994, Nevadans were granted 212 patents; and in fiscal year 2005, they were awarded 461 patents. Nevada also is ranked first in the nation in having the most business start-ups, according to the most recent State New Economy Index.

WHAT:	USPTO event celebrating competitiveness/innovation -- as follow-up to President’s State of the Union address. Learn about the state of innovation and competitiveness in Nevada and the U.S as well as the U.S. patent and trademark systems. A question and answer session will follow immediately after presentation.
WHO:	Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office John Doll, Commissioner for Patents Innovators at University of Nevada-Las Vegas, independent inventors, local technology-oriented companies, and those associated with Camp Invention, a summer creativity enrichment program for students in grades 2 - 6.
WHERE:	Clark County Library 1401 E. Flamingo Road Las Vegas, NV
WHEN:	Thursday, February 2, 2006 1:00 p.m.

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Chicago Town Hall Meeting to Focus on Proposed Rule Changes to Improve Patent Examination

Posted by J Matthew Buchanan at January 31, 2006 11:29 AM

MEDIA ADVISORY Contact: Brigid Quinn or Ruth Nyblod 571-272-8400 brigid.quinn@uspto.gov ruth.nyblod@uspto.gov

January 31, 2006 #06-05

Chicago Town Hall Meeting to Focus on Proposed Rule Changes to Improve Patent Examination

Washington, D.C. -- In a Town Hall Meeting, the United States Patent and Trademark Office (USPTO) will provide background information regarding proposed new rule changes to improve patent examination. The changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and reducing the time it takes for the patent review process.

WHAT:	Town Hall Meeting An overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary. A question and answer session will follow immediately after presentations.
WHO:	John Doll, Commissioner for Patents James Toupin, USPTO General Counsel Patent attorneys, patent agents, independent inventors and members of the small business community
WHEN:	Wednesday, February 1, 2006 2:00 p.m. – 4:00 p.m.
WHERE:	Downtown campus of Northwestern University in the Arthur Rubloff Building, Thorne Auditorium, 375 East Chicago Avenue, Chicago, IL.

For more information, please go to http://www.uspto.gov/web/patents/townhall.htm.

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USPTO Mourns the Death of Former Commissioner Banner

USPTO Mourns the Death of Former Commissioner Banner

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Jon Dudas issued the following statement upon learning of the death on January 29, 2006, of Donald W. Banner, a former Commissioner of Patents and Trademarks (1978-1979).

"On behalf of the United States Patent and Trademark Office, I want to extend our deepest sympathy to the family of Donald W. Banner. “As Commissioner of Patents and Trademarks, President of the American Intellectual Property Law Association, and in many other capacities, Don worked tirelessly to promote respect for intellectual property. He gained national attention for intellectual property rights when he led the bicentennial celebration of U.S. patent and copyright law in 1990. Don Banner and his important efforts to encourage innovation will long be remembered by our Office and by inventors across America."

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USPTO to Hold IP Conference for California Small Businesses on Protecting Their Intellectual Property From Theft

Posted by J Matthew Buchanan at January 29, 2006 07:59 AM

USPTO to Hold IP Conference for California Small Businesses on Protecting Their Intellectual Property From Theft

The United States Patent and Trademark Office (USPTO) will open a two-day conference for small businesses on “Intellectual Property in the Global Marketplace” on Monday, February 27 at the Westin Horton Plaza Hotel, 910 Broadway Circle, San Diego, California. The conference is part of STOP (Strategy Targeting Organized Piracy) a major federal government effort to protect American businesses from falling victim to intellectual property theft - both domestically and abroad.

In today's global marketplace, an individual or a business halfway around the world can steal American products and branding without the rightful owner even being aware of it. Small businesses are particularly at risk because they may lack the knowledge and expertise to effectively combat such theft. In recognition of this need, USPTO is hosting a series of seminars across the country to help educate American small businesses about the realities of piracy and counterfeiting and steps they can take to protect themselves.

During the two-day seminar, patent, trademark and copyright experts and lawyers from the USPTO will provide small- and medium-sized businesses, entrepreneurs, and independent inventors interested in manufacturing or selling their products abroad with specific details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world.

A day-two feature will be one-on-one consultations with intellectual property experts available for conference attendees.

There is no charge for the conference, but seating is limited.

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Electronic Processing of Information Disclosure Statement [signed 24 January 2006] (24Jan2006)

Posted by J Matthew Buchanan at January 26, 2006 08:17 PM

 Electronic Processing of Information Disclosure Statement [signed 24 January 2006] (24Jan2006)

View and/or download a .pdf of this notice at the following URL:

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/e_IDSprocess012406.pdf

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USPTO Announces PatentIn 3.3 Training

Posted by J Matthew Buchanan at January 24, 2006 08:46 AM

USPTO Announces PatentIn 3.3 Training

The United States Patent and Trademark Office (USPTO) is pleased to announce a free training session for PatentIn 3.3 on Friday, March 24, 2006. The session will run from 9:30 AM to 3:30 PM, with a one-hour lunch break from 11:30 AM to 12:30 PM.

Course Content:

The class will include:

• Overview of molecular biology
• Overview of the sequence rules
• Hands-on authoring of several sequence listings varying in complexity

Questions are welcome throughout the training. In addition, the instructor is available after class to assist customers with their sequence listings.

Course Instructor:

The instructor is Robert Wax, a Primary Examiner in Art Unit 1653, the former Project Manager of PatentIn and one of the USPTO's sequence rule experts.

Course Location:

The class will be held at USPTO's new headquarters in the Madison West Building. The Madison Building is located at 600 Dulany Street, Alexandria, Virginia. Participants will meet in the lobby and be escorted through Security to the training room. Please visit our website for directions to our office: http://www.uspto.gov/main/directions_alex.htm.

Registration Information:

To register for this class or for additional information, please send an email to patin3help@uspto.gov or call (571) 272-0623.

This session has a maximum capacity of 16 participants. Attendees will be accepted on a first-come, first-served basis. If the USPTO receives more requests than space permits, additional sessions will be scheduled at a future date.

Parking information:

Parking is available in the West Garage, located at 550 Elizabeth Lane or the East Garage, located at 551 John Carlyle Street, Alexandria, Virginia. The daily rates are:

Garage Rates*:

* Rates apply to all vehicle types including motorcycles.
1 hour $3.00
2 hours $6.00
3 hours $9.00
Maximum $10.00

Directions from Metro:

• Take the yellow or blue line to the King Street station in Alexandria;
• Walk three (3) blocks SOUTH, across the parking lot, Diagonal Road, and Duke Street.

The George Washington Masonic Memorial will be to your RIGHT and behind you and the USPTO Headquarters will be in front of you.

The Madison Building is the center building at the end of Dulany Street. Madison West Building is on your right when you enter the front of the building with the peaked glass ceiling.

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Miscellaneous Changes to Trademark Trial and Appeal Board Rules

Posted by J Matthew Buchanan at January 20, 2006 04:14 PM

Miscellaneous Changes to Trademark Trial and Appeal Board Rules (17Jan2006).

 

View and/or download a .pdf of this notice at the following URL:

http://www.uspto.gov/web/offices/com/sol/notices/71fr2498.pdf

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USPTO Kicks Off Town Hall Meeting in Chicago February 1

Posted by J Matthew Buchanan at January 19, 2006 08:21 AM

USPTO Kicks Off Town Hall Meeting in Chicago February 1
Register Now

In an upcoming series of Town Hall Meetings, the United States Patent and Trademark Office (USPTO) will provide background information regarding proposed new rule changes. The first Town Hall Meeting will be held February 1, 2006, in Chicago, IL. The USPTO and Northwestern University will co-sponsor the event at the downtown campus of Northwestern University in the Arthur Rubloff Building, Thorne Auditorium. The meeting will be held from 2:00 p.m. – 4:00 p.m.

The proposed rule changes relate to the examination of claims, continuing applications, requests for continued examination and applications containing patentably indistinct claims. The changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and the time it takes for the patent review process. In addition they will improve the quality of issued patents and ensure that the USPTO continues to promote innovation.

Commissioner for Patents John Doll and James Toupin, the agency’s general counsel, will provide an overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary. A question and answer session will follow immediately after their presentations.

Registration is free and CLE credit may be available.

The Town Hall Meetings are for patent attorneys, patent agents, independent inventors and members of the small business community.

For registration information, please go to http://www.uspto.gov/web/patents/townhall.htm or call 571-272-8850.

Details regarding future Town Hall Meetings in California, Texas and Washington, D.C., will be posted on the USPTO Web site at a later date.

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Extension of the Pilot Pre-Appeal Brief Conference Program [signed 10 January 2006] (11Jan2006) [PDF]

Posted by J Matthew Buchanan at January 12, 2006 09:13 AM

View and/or download a copy of this .pdf at the link below:

 

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

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USPTO PARTNERS WITH OPEN SOURCE COMMUNITY TO EXPAND PATENT EXAMINER ACCESS TO SOFTWARE CODE

USPTO PARTNERS WITH OPEN SOURCE COMMUNITY TO EXPAND
PATENT EXAMINER ACCESS TO SOFTWARE CODE
Alliance will focus on software-related patents

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has created a partnership with the open source community to ensure that patent examiners have access to all available prior art relating to software code during the patent examination process.

Last month, USPTO representatives met with members of the open source software community, which provided an opportunity for members to discuss with the USPTO issues related to software patent quality. The meeting focused on getting the best prior art references to the examiner during the initial examination process.

The group agreed to improve prior art resources available to the USPTO; to develop a system to alert the public when USPTO publishes certain software-related applications so that interested parties can submit related prior art in accordance with relevant rules and law; and, to explore developing additional criteria for measuring the quality of software patents.

“For years now, we have been hearing concerns from the software community about the patent system,” Under Secretary of Commerce for Intellectual Property Jon Dudas commented. “It is important that those in the open source community are joining USPTO to provide resources that are key to examining software-related applications.”

A follow-up meeting on the new initiatives will be held at the USPTO headquarters in Alexandria, Va., on February 16. The session will be open to the public and devoted to working on details of the three initiatives and the development of additional proposals.

Details on the registration process and the agenda will be provided on our website later this month.

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USPTO RELEASES ANNUAL LIST OF TOP 10 ORGANIZATIONS RECEIVING MOST U.S. PATENTS

USPTO RELEASES ANNUAL LIST OF TOP 10 ORGANIZATIONS
RECEIVING MOST U.S. PATENTS
American Innovation Continues to Top the Field

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today the 2005 top 10 global private sector patent recipients. Listed below are the 10 corporations receiving the most U.S. patents for inventions in 2005, along with their 2004 ranking.

“America’s technological and economic strength is the result of its tremendous ingenuity,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. “The USPTO has taken and will continue to take aggressive steps that will enhance quality and improve productivity to ensure that U.S. intellectual property protection remains the best in the world, protecting American innovation and sustaining economic growth.”

Top 10 Private Sector Patent Recipients for the 2005 Calendar Year

Preliminary Rank in 2005	Preliminary Number of Patents in 2005	Organization	(Final Rank in 2004)	(Final Number of Patents in 2004)
1	2,941	International Business Machines Corporation	(1)	(3,248)
2	1,828	Canon Kabushiki Kaisha	(3)	(1,805)
3	1,797*	Hewlett-Packard Development Company, L.P. *	(4)	(1,775)
4	1,688	Matsushita Electric Industrial Co., Ltd.	(2)	(1,934)
5	1,641	Samsung Electronics Co., Ltd.	(6)	(1,604)
6	1,561	Micron Technology, Inc.	(5)	(1,760)
7	1,549	Intel Corporation	(7)	(1,601)
8	1,271	Hitachi, Ltd	(8)	(1,513)
9	1,258	Toshiba Corporation	(9)	(1,311)
10	1,154	Fujitsu Limited	(11)	(1,296)

*Calendar year counts for 2005 for Hewlett-Packard Development Company, L.P. include seven patents issued to Hewlett-Packard Company.

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Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rule making (03Jan2006)

Posted by J Matthew Buchanan at January 5, 2006 01:52 AM

Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rule making (03Jan2006)

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Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (03Jan2006)

Changes to Practice for the Examination of Claims in Patent Applications, Notice of proposed rule making (03Jan2006)

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USPTO Proposes Measures To Improve Patent Examination

Posted by J Matthew Buchanan at January 4, 2006 09:28 AM

USPTO Proposes Measures To Improve Patent Examination
Limiting claims and rework will improve quality and reduce the time it takes to issue a patent

The Department of Commerce’s United States Patent and Trademark Office (USPTO), in its continuing efforts to make the patent examination process more effective and efficient, is proposing changes that would reduce the amount of rework by the USPTO and reduce the time it takes to issue a patent and the patent review process. Specifically, these initiatives will prioritize the claims reviewed during the examination process and better focus the agency’s examination of patent applications by requiring applicants to identify the most important claims to the invention.

The recognized value of patents to innovation has led to enormous increases in the number of patent applications filed each year. Since the USPTO's resources have not increased at the same rate as filings, it has become much more difficult to provide reliable, consistent and prompt patentability decisions. Delay in granting a patent can slow new products coming to market, and issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth. Simply hiring more patent examiners will not slow the growth in the time it takes to get a patent or improve the quality of examination. This will occur only through the participation of applicants in facilitating more effective and efficient patent examination.

“Improving the patent process will take everyone working together—applicants and the USPTO,” noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. “Better quality applications mean better examination. We need more focus throughout and closure to the examination process.”

In FY 2004, almost one-third of the 355,000 new patent applications were directed to inventions that had already been reviewed by the USPTO, but applicants resubmitted them mostly with only limited changes to the claims or, sometimes with the same claims that the USPTO had previously rejected. While some resubmissions are necessary, addressing them detracts from the agency’s ability to examine new patent applications. Also, over 40% of new applications in FY 2004 had more than 20 claims. Although the initial examination of large numbers of claims may sometimes be necessary in certain complex applications, when these must be filed, applicants should be prepared to assist the agency in ensuring these applications don’t absorb a disproportionate amount of the limited time the USPTO has to review applications.

In the past two years the USPTO has instituted a number of measures to improve patent quality and also has implemented new metrics to measure the results. Results indicate that quality is improving. The percentage of patent examiners certified for promotion to full performance level increased from 59% in FY 2004 to 70% in FY 2005. The number of office actions complying with applicable laws and rules during examination improved to 86.2% from 82% the previous year. The compliance rate for final allowances improved from 94.8% to 96% from FY 2004 to FY 2005.

The new rules can be found at:

>> http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf [PDF] and
>> http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf [PDF].
>> PDF viewer is required for these documents.

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MPEP Eight Edition, Revision 4 released

Posted by J Matthew Buchanan at December 23, 2005 02:48 PM

The following is from the Blue Pages for the recently released MPEP Eighth Edition, Revision 4.  The Blue Pages highlight the changes incorporated into the MPEP by the new revision.

For more information on the current version of the MPEP, visit the following URL:  http://www.uspto.gov/web/offices/pac/mpep/index.htm

 

U.S. DEPARTMENT OF COMMERCE

U.S. Patent and Trademark Office

P.O. Box 1450

Alexandria, Virginia 22313-1450

MANUAL OF PATENT EXAMINING PROCEDURE

Eighth Edition

Instructions Regarding Revision No. 4

This revision incorporates the changes necessitated by the following final rules:

“Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004,” which became effective on September 14, 2005.

This revision consists of replacement pages for the Title Page in the front of the Manual, entire Chapter 2300, Appendices II – List of Decisions Cited, R – Patent Rules, and AI – Administrative Instructions Under the PCT, and entire Index. 

Pages which have been printed in this revision are labeled as “Rev. 4” on the bottom.  Sections of the Manual that have been changed by this revision are indicated by “[R-4]” after the section title.  Additions to the text of the Manual are indicated by arrows (><) inserted in the text.  Deletions are indicated by a single asterisk (*) where a single word was deleted and by two asterisks (**) where more than one word was deleted. The use of three or five asterisks in the body of the laws and rules indicates a portion of the law or rule that was not reproduced.

Chapter 2300 was prepared with the assistance of the Board of Patent Appeals and Interferences.  Their efforts are greatly appreciated.

Magdalen Y. C. Greenlief, Editor of the Manual of Patent Examining Procedure

Remove Pages	Insert Pages
Title Page	Title Page
2300-1 through 2300-38	2300-1 through 2300-24
A-7 through A-48	A-7 through A-48
R-1 through R-334	R-1 through R-334
AI-1 through AI-94	AI-1 through AI-92
I-1 through I-112	I-1 through I-112

Particular attention is called to the changes in the following sections:

CHAPTER 2300:

2301 – 2309    Chapter 2300 has been rewritten to incorporate the new Board of Patent Appeals and Interferences rules that became effective on September 13, 2004. The rules directed to interferences are in Part 41, Subparts D and E of title 37, Code of Federal Regulations.

 

Thanks to Larry Kasoff of the Seed Intellectual Property Law Group for the tip that the fourth edition had been released.

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United States and Korean Patent Offices Enter Into Agreement on International Search and Examination Services

 United States and Korean Patent Offices Enter Into Agreement on International Search and Examination Services
Part of USPTO effort to reduce backlog of U.S. national patent applications

The U.S. Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) entered into an agreement this week in which KIPO will act as an available international searching and examining authority for international applications filed with the USPTO under the Patent Cooperation Treaty (PCT). The agreement will allow applicants additional flexibility to choose a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examination of international applications. The agreement goes into effect January 1, 2006. Additionally, this action will benefit the ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.

The USPTO receives over 350,000 patent applications per year. If PCT applicants take advantage of the availability of KIPO to perform international searches and examinations, the USPTO can dedicate more resources to reducing the backlog of pending national applications, with the goal of increasing productivity and quality.

Under the terms of the agreement, an applicant designating KIPO as the International Searching Authority (ISA) will pay a search fee of $218 instead of $300 or $1000, as applicable if the USPTO is the ISA. An applicant designating KIPO as the International Preliminary Examining Authority (IPEA) will pay an international examination fee to KIPO equivalent of $218 instead of $600 or $750, as applicable if the USPTO is the IPEA. Applicants filing international applications with the USPTO may, generally, also elect to have them searched and/or examined at the European Patent Office.

The PCT is an international agreement that simplifies the filing of patent applications in its 128 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and KIPO are among the national patent offices authorized to conduct PCT searches and examinations.

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USPTO Expands Telework Program for Patent Employees (21Dec2005)

Posted by J Matthew Buchanan at December 22, 2005 09:57 AM

USPTO Expands Telework Program for Patent Employees
500 patent employees will work from home next year

The Department of Commerce’s United States Patent and Trademark Office (USPTO) has announced a new patents hoteling program, which will offer patent employees the opportunity to work from home regularly. Participants will have all the communications tools and application processing capabilities they need to do their jobs remotely. The program incorporates hoteling, by which participants can reserve time in on-campus “shared offices” to conduct certain business such as interviewing applicants and attorneys, receive training, attend meetings, and use on-site resources as needed.

“The patents hoteling program represents an important commitment to our organization and to our environment,” said Under Secretary of Commerce for Intellectual Property Jon Dudas. “Through this program, we can help boost the quality of life for USPTO employees, help reduce traffic and improve the environment, while continuing to attract and retain the highest quality employees.”

Priority will be given to applicants who are already in the patent telework program or the patent management telework program. In February, the USPTO will begin training and deploying approximately 40 employees every two weeks. The goal is to have 500 patents employees in the program by September 2006.

# # #

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Request for Comments on Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (20Dec2005)

Posted by J Matthew Buchanan at December 20, 2005 01:32 PM

View and/or download a.pdf of this notice here:

 

http://www.uspto.gov/web/offices/com/sol/notices/70fr75451.pdf

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USPTO Co-Sponsors Invention Contest

Posted by J Matthew Buchanan at December 14, 2005 08:32 AM

USPTO Co-Sponsors Invention Contest
$25,000 Top Prize Winner Featured on History Channel - Deadline for Entries: December 31

The United States Patent and Trademark Office is joining the National Inventors Hall of Fame and the History Channel in sponsoring the Modern Marvels Invent Now Challenge. This is a new contest that invites the everyday inventor to share their vision and ingenious design with the world. Twenty-five semi-finalists will have the opportunity to be recognized, have their invention exhibited and receive valuable information to help them realize the full potential of their invention.. The most remarkable invention submitted will be named the 2006 “Modern Marvel of the Year.” The inventor will win $25,000 and be featured on the History Channel during a special Invention Week of Modern Marvels programs. The deadline for entry is December 31.

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USPTO Publishes Patent Search Templates

Posted by J Matthew Buchanan at November 29, 2005 08:58 AM

 

USPTO Publishes Patent Search Templates
New Tool To Enhance Patent Quality by Helping Examiners Do Better-Focused Research

The Department of Commerce’s United States Patent and Trademark Office (USPTO) is building a library of search templates for use by applicants, patent practitioners and patent examiners to assist them in finding evidence, known as prior art, to help determine if an invention is patentable. Similar to a library card catalog, the search templates will direct searchers to information on relevant fields of search, databases and scientific journals considered germane to particular technologies and inventions. The search templates will aid in more thorough prior art searches, which should result in better quality patents.

"These new tools are just part of the USPTO's larger effort to make the U.S. patent examination process even more efficient and effective," noted Under Secretary for Intellectual Property Jon Dudas. "Quality is a shared responsibility. With input and information from our patent examiners and the public, the USPTO can provide a better compilation of relevant resources for all users of America's patent system. Effective search templates will help both the USPTO and the public determine where to find the most relevant prior art more easily and accurately."

An important aspect of examining a patent is the examiner’s review of patent documents, both U.S. and foreign, and other literature related to the invention. During this search, the examiner consults the appropriate patent databases, scientific and technical journals and other printed material, which might disclose the invention claimed in the application. The examiner then can determine the patentability of a claimed invention in light of the prior art discovered by this search.

Thirty-eight templates are available now on the USPTO’s Web site at http://www.uspto.gov/web/patents/searchtemplates/class.htm, and approximately 50 templates will be added to the site each week. When the initial project is completed, about 1,300 search templates covering more than 600 classes and subclasses of technology will be available.

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USPTO Receives Record Number of Patent and Trademark Applications for 2005

Posted by J Matthew Buchanan at November 23, 2005 09:05 AM

 

USPTO Receives Record Number of Patent and Trademark Applications for 2005

In fiscal year 2005, the Department of Commerce’s United States Patent and Trademark Office (USPTO) received a record number of patent and trademark applications. The agency received 406,302 patent applications, and 323,501 applications for trademark registration as reported in its fiscal year 2005 Performance and Accountability Report released last week.

"During fiscal year 2005, the USPTO continued its efforts to make the world's best patent and trademark office even better," Under Secretary of Commerce for Intellectual Property Jon Dudas commented. "We developed aggressive new reform proposals that will enhance quality and improve productivity. This was accomplished while we maintained our commitment to strengthen intellectual property protection and fought piracy and counterfeiting through a variety of educational outreach programs."

The USPTO granted 165,485 patents, including 151,079 utility (inventions), 13,395 design, and 816 plant patents. Since 1790, over seven million U.S. patents have been granted.

U.S. resident inventors received 85,238 U.S. patents in fiscal year 2005. California resident inventors received the highest share (23 percent, 19,928 patents) of these patents, followed by inventors from New York (7 percent, 5,631 patents), Texas (7 percent, 5,660 patents), Michigan (5 percent, 3,907 patents), and Massachusetts (4 percent, 3,443 patents).

The USPTO registered 143,396 trademarks and renewed 32,279 registrations in fiscal year 2005. Over 3 million trademarks have been registered since the first in 1870. At the end of fiscal year 2005, there were 1,255,570 active trademark registrations.

For the complete report, see: http://www.uspto.gov/web/offices/com/annual/2005/2005annualreport.pdf.

Download PDF Viewer

# # #

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USPTO’s 2005 Performance and Accountability Report Now Available

Posted by J Matthew Buchanan at November 20, 2005 09:04 AM

 USPTO’s 2005 Performance and Accountability Report Now Available

The United States Patent and Trademark Office’s annual Performance and Accountability Report is now posted on our website. The report provides a comprehensive account of the agency’s programmatic activities for the year as well as production and financial data for FY 2005.

The 2002, 2003 and 2004 reports received the Association of Government Accountants’ prestigious Certificate of Excellence.

 

 

 

 

You can access the report at the following URL:  http://www.uspto.gov/web/offices/com/annual/2005/index.html

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Comments on Green Paper Concerning Restriction Practice (September 2005) (14Nov2005)

Posted by J Matthew Buchanan at November 14, 2005 05:18 PM

 

As of September 16, 2005, the organizations and persons listed below have submitted comments in response to the Notice of Availability of and Request for Comments on Green Paper Concerning Restriction Practice, first published in the Federal Register at 70 Fed. Reg. 32761 [PDF] (June 6, 2005) and then published in the Official Gazette at 1295 Off. Gaz. Pat. Office 146 (June 28, 2005), and published to announce an extension of the comment period in the Federal Register at 70 Fed. Reg. 45370 [PDF] (August 5, 2005).

It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message to Robert.Clarke@uspto.gov, or contact Robert A. Clarke by telephone at (571) 272-7700.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

---

A. Intellectual Property Organizations

1. Bar Association of the District of Columbia, Patent, Trademark & Copyright Section [PDF]
2. Biotechnology Industry Association (BIO) [PDF]
3. Fédération Internationale des Conseils en Propriété Industrielle [PDF]
4. Japan Intellectual Property Association (JIPA) [PDF]
5. National Association of Patent Practitioners (NAPP) [PDF]

B. Government Agencies

1. National Institutes of Health, Department of Health & Human Services (NIH) [PDF]

C. Corporations

1. Genentech, Inc. [PDF]
2. IBM Corporation [PDF]

D. Individuals

1. Henry, Jon [PDF]
2. Johnson, Robert T. [PDF]
3. Juneau, Todd L. [PDF]
4. Lindeen, Gordon [PDF]
5. Lindon, James [PDF]
6. Morgan, Paul F. [PDF]
7. Parker, Raymond S., III and Knight, Julie Anne [PDF]
8. Webster, Robert J. [PDF]

Some contents linked to on this page require a plug-in for PDF files.

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USPTO Co-Sponsors Invention Contest

USPTO Co-Sponsors Invention Contest $25,000 Top Prize Winner Featured on History Channel

The United States Patent and Trademark Office is joining the National Inventors Hall of Fame and the History Channel in sponsoring the Modern Marvels Invent Now Challenge. This is a new contest that invites the everyday inventor to share their vision and ingenious design with the world. Twenty-five semi-finalists will have the opportunity to be recognized, have their invention exhibited and receive valuable information to help them realize the full potential of their invention.. The most remarkable invention submitted will be named the 2006 “Modern Marvel of the Year.” The inventor will win $25,000 and be featured on the History Channel during a special Invention Week of Modern Marvels programs. The deadline for entry is December 31.

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United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 02Nov2005] (08Nov2005)

Posted by J Matthew Buchanan at November 9, 2005 11:08 PM

View and/or download a .pdf of this Notice at the link below:

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

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United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 02Nov2005]

View and/or download a .pdf of this Notice at the link below:

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

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USPTO Patents Search Templates

Posted by J Matthew Buchanan at November 8, 2005 11:33 AM

 

USPTO Patents Search Templates

This website provides access to templates describing search resources for the classified areas of science and technology found in the USPTO Manual of Classification. When completed, this version of the search template project will present almost 1,300 search templates covering the more than 600 USPC classes and subclasses.

Search Templates Defined

Search templates define the field of search, search tools, and search methodologies which should be considered each time a patent application is examined in that classification area. The templates describe search tools for U.S. and foreign patents and non-patent literature. Additionally, general Internet search tools used by patent examiners are listed.

The search templates are based upon input from patent examiners and other searchers at the USPTO and capture their institutional knowledge of the most relevant prior art search sources for determining the patentability of subject matter in the area of technology. The listed areas represent where (what resources) and how (methodology) most of the prior art considered in the examination process is found during the search process.

Benefits

The templates provide more structure to the search activity and set a standard to measure the completeness of any search. Within USPTO, the templates will be especially valuable to new examiners. The USPTO also plans to use the search templates for a pilot program to outsource U.S. patent searches for PCT applications (Support for Patent Cooperation Treaty (PCT) Search Activity). In addition to the "where to search" information, the search templates provide important guidance on what tools and methodologies; e.g. structure searches (tool) and classified searching, respectively, should be employed in the search process.

Applicants can use the templates in formulating their own pre-examination searches prior to the filing of a U.S. patent application or the submission of a "Petition to Make Special" (based on MPEP § 708.02, subsection VIII. - special examining procedure for certain new applications - accelerated examination).

A long-term objective of this effort is to generate discussion, and ultimately consensus, with respect to what should constitute a proper field of search and use of search tools in conducting a search of various subject matters for purposes of the examination process at the USPTO.

Examiners and Search: Background

A patent examiner is responsible for reviewing prior patent documents, both U.S. and foreign, and other printed literature related to an application's subject matter during the examination process. This review, called the search, is performed by consulting the appropriate classes, and their respective subclasses, in the U.S. classification scheme, and classified and text searches of other patent document databases, or any other printed media (also known as "non-patent literature" or NPL), which might disclose the invention disclosed/claimed in a pending application for a patent. This search may include the use of various search tools or methodologies in the process. Once the search is performed, the examiner determines the patentability of a claimed invention in light of the prior art uncovered by this search.

When determining the appropriate field of search for an invention, the examiner must consider three sources of information: domestic patent documents, foreign patent documents, and NPL. The current requirements for conducting that search are set forth in the Manual of Patent Examining Procedure (MPEP) section 904.02. An examiner may not eliminate any of these resources from consideration unless the examiner can justify to a reasonable certainty that no more pertinent references will be found in a further search. Although the general guidance set forth in the MPEP is accurate, the search templates will provide additional information that expands upon the MPEP's general guidance. For each particular field of subject matter, the search templates will include what resources should be searched, and by which of the available search tools or methodologies. Detailed guidance on the choice and use of specific search tools are left to be established by each Technology Center (see MPEP § 904.02(b)).

Patent examiners are not required to search every listed resource in the examination of every application. Rather, relying upon their professional judgment and assessment of the disclosed and claimed subject matter in the application under consideration, the examiner will determine the most appropriate resources for that application. What the search templates provide is a compilation of the resources found to most frequently discover the most relevant prior art disclosures for the particular subject matter. Searching is highly dependent upon the experience and job knowledge of the individual performing and/or reviewing the search.

Public Comments on the Search Templates

Public comments on the search templates are invited. Comments should address the points enumerated in the Criteria for Evaluating Recommended Search Resources listed below. Comments can be submitted via the Search Template Project e-mail link on each template page or by mail addressed to:

Mail Stop Patents Search Template Comments
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Electronic submission is preferred. The Office will respond to comments in writing.

USPTO Criteria for Evaluating Recommended Search Resources

Recommended search resources must be publicly available. The databases and tools will be evaluated based on the criteria listed below. In your submission, please provide as much information as possible on the listed criteria:

• Class/Subclass combination - Identify the class and subclass range for which you are recommending a resource.


• Database/Resource identification - Provide the full name and other names (e.g. acronyms or shortened names) by which a database/resource may be identified; the name, address and phone number for the producer; the name, address and phone number for the entity that provides access to the database/resource.


• Database/Resource scope - Indicate whether this tool is of general or specific use.


• Content - Years of coverage of the database/resource; subject matter of the database; whether the resource is an abstract or full text database; and whether the bibliographic information includes documented publication dates.


• Reasons for Recommendation - Specify the reasons for recommending the database for inclusion in the search template, focusing on the specific value of the content and search features of the database.


• Accessibility - The database/resource must be publicly available. Indicate if there are any restrictions on hours of availability. USPTO must be able to obtain full-text copies of the cited art. The full-text must also be accessible to applicants.


• Technical support - Availability of technical support and hours of availability.


• Continuity - Describe the database policy on maintaining backfile data.


• Mode of Access - e.g. online, web-based, stand-alone system.

Removal of Resources - The public can also suggest that resources be removed from the templates. In this case, the recommender should indicate reasons for removal that focus on coverage, search features, or accessibility.

Updating the Search Templates

The Office will provide periodic updates on the number of published search templates available and the status of the evaluation of public comments. The templates will be updated twice a year.

The search templates will continue to evolve as technologies and search tools evolve. The public will have an ongoing opportunity to comment on how to improve the templates. This process may require several iterations before there is general agreement on the contents of the search templates.

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Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a)

 

Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a)

Pursuant to Trademark Act § 68(c)(1), 15 U.S.C. § 1141h(c)(1), the USPTO must, within 18 months of the date a request for extension of protection is transmitted to the USPTO, send to the International Bureau of the World Intellectual Property Organization notice of: (A) a refusal of registration based on examination of the request; (B) an opposition to registration; or (C) the possibility that an opposition may be filed after the conclusion of the 18-month period. If a notice under either subsection (B) or (C) is not sent within the 18-month period, the Trademark Trial and Appeal Board may not entertain an opposition to registration, and “the Director shall issue a certificate of extension of protection pursuant to the request.” Trademark Act § 68(c)(4), 15 U.S.C. § 1141h(d)(4).

The notice required under § 68(c)(1)(C), 15 U.S.C. § 1141h(c)(1)(C), was inadvertently not sent with respect to a number of requests for extension of protection, which are listed below by serial number. Because in each case more than 18 months has passed since transmission of the request for extension of protection to the USPTO, no opposition or extension of time to oppose may be considered, and if filed, will be dismissed. The USPTO will promptly issue a certificate of protection with respect to the listed requests.

Affected parties are not precluded from filing a petition for cancellation of the certificate of protection, if otherwise appropriate.

79000003	79000836	79001205	79001571
79000022	79000924	79001288	79001576
79000233	79000972	79001346	79001620
79000242	79000987	79001393	79001634
79000297	79001011	79001409	79001635
79000443	79001024	79001438	79001642
79000522	79001025	79001471	79001646
79000534	79001037	79001530	79001658
79000546	79001047	79001551	79001666
79000552	79001048	79001560	79001679
79000584	79001129	79001561	79001680
79000756	79001179	79001568	79001687
79001688

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United States and Australian Patent Offices Launch Pilot Project on International Search and Examination Services

Posted by J Matthew Buchanan at November 6, 2005 11:07 AM

 United States and Australian Patent Offices Launch Pilot Project on International Search and Examination Services
Pilot part of USPTO effort to reduce backlog of U.S. national patent applications

The U.S. Patent and Trademark Office (USPTO) and IP Australia, Australia ’s national patent office, has initiated a pilot project to test the feasibility of IP Australia performing search and examination services for the USPTO on international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).

The pilot, launched last week, is part of ongoing USPTO efforts to bring down the growing backlog of U.S. national patent applications waiting to be examined.

Each year, the USPTO receives nearly 50,000 PCT international applications in addition to over 350,000 national applications. The USPTO is testing whether, by having international applications processed elsewhere, it can dedicate more resources to examining the 600,000 national applications currently in the pipeline, with the goal of increasing productivity and enhancing quality.

Under the terms of the pilot project, IP Australia will process 100 PCT applications covering a wide range of technologies. The USPTO will review IP Australia’s work to ensure that it meets USPTO standards for quality and accuracy.

“Efficient and high quality government operations are cornerstones of the President’s Management Agenda and guiding principles for this effort,” said Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “A large backlog is bad for U.S. innovation and bad for the U.S. economy. The ability to reallocate resources from PCT-related activities to search and examination of U.S. national applications will allow us to open another front in our battle to reduce our growing backlog.”

Explaining the benefits of the project for his office, IP Australia Director General Dr. Ian Heath noted that “by assisting the USPTO to process applications filed under the PCT, IP Australia will continue to move towards its vision of being an office of choice.” “This opportunity also provides a means for enhancing our international reputation as a quality International Search and Preliminary Examination Authority under the PCT, providing world-class intellectual property services which promote innovation, investment and international competitiveness for the benefit of all Australians,” Dr. Heath said.

The PCT is an international agreement that simplifies the filing of patent applications in its 128 member states. A PCT application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT search and examination reports to help them determine if an application meets basic patent criteria before committing to the high cost of translating and filing an application in one or more PCT countries. The USPTO and IP Australia are among the national patent offices authorized to conduct PCT searches and examinations.

The pilot project tracks recommendations in the USPTO “21st Century Strategic Plan” and builds on the long history of cooperation between the the USPTO and IP Australia.

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Trademark News and Notices via E-mail

Posted by Stephen M. Nipper at November 3, 2005 12:23 PM

Earlier today we had a reader point out that we didn't provide an easy way to subscribe to the Trademark News and Notices feed via email. To remedy that we created a subscription box which we'll have to incorporate into the border:

Enter your Email





Powered by FeedBlitz

You can also directly access that Trademark Feed sign up form by going to this URL: http://www.feedblitz.com/f/?Sub=7256

While I'm at it, here are our Patent Lawsuit email subscription feed and our All USPTO News email subscription feed.

As always, please forward this to any of your colleagues who would find it useful.

USPTO Hosts Chinese Lawmakers

Posted by J Matthew Buchanan at October 21, 2005 03:04 PM

 USPTO Hosts Chinese Lawmakers

This week, the United States Patent and Trademark Office hosted a conference for senior-level copyright lawmakers from China on “Internet Copyright Issues in China and the United States: Implementing the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.”

The Chinese lawmakers are drafting legislation that will implement two World Intellectual Property Organization (WIPO) Internet treaties in China — the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. In the Joint Committee on Commerce and Trade meetings this summer, China committed to submitting the legislative and regulatory package to join the WIPO treaties by 2006.

On Tuesday, Under Secretary of Commerce for Intellectual Property Jon Dudas met with the group, noting that China has the second-largest number of Internet users in the world. “Without adequate and effective copyright protection in China for Chinese intellectual property, a Chinese electronic marketplace for copyrighted works cannot develop,” Mr. Dudas said.

The WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, concluded in 1996, are critical parts of the basic legal framework for electronic commerce. The treaties update international copyright standards for the digital realm, clarifying that the traditional rights of copyright apply in cyberspace. The United States implemented these important WIPO Internet treaties through passage of the Digital Millennium Copyright Act in 1998.

Notification of First Rules Customer Partnership Meeting, November 9, 2005

Posted by J Matthew Buchanan at October 19, 2005 03:08 PM

View and/or download a .pdf of this notice by clicking on the following link:

 

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/firstrules-v10132005.pdf

NOTICE OF MARKS PUBLISHED BY MISTAKE

Posted by J Matthew Buchanan at October 5, 2005 04:21 PM

NOTICE OF MARKS PUBLISHED BY MISTAKE

The October 4, 2005 Official Gazette includes 143 trademark applications that were published for opposition by mistake. Each of these applications had been published for opposition previously; the statement of use had been accepted; and the application had been allowed for registration pursuant to §1(d) of the Trademark Act. Due to a processing error, the applications were assigned a new publication date instead of a registration date.

These applications have been withdrawn from publication. Regarding these cases, the Trademark Trial and Appeal Board (TTAB) will not accept oppositions or requests for extension of time to file an opposition that are based on the October 4, 2005 publication date. Anyone considering filing an opposition to, or request for extension of time to oppose, any application that published in the October 4, 2005 Official Gazette, should first review the prosecution history of the application in the Trademark Application and Registration Retrieval (TARR) system on the USPTO website. If the prosecution history indicates “second publication in error,” the TTAB will not accept an opposition or a request for extension of time to file an opposition based on the October 4, 2005 publication date. Note that although some applications may indicate that the application has been “withdrawn” from publication, only those applications that also indicate “second publication in error” are not subject to opposition. For any questions concerning this matter please contact Bonita Royall at 571-272-4382 or bonita.royall@uspto.gov.

USPTO Videos Now Available Online

Posted by J Matthew Buchanan at October 3, 2005 03:14 PM

 

Videos about current issues and events at the United States Patent and Trademark Office (USPTO) are now available on this website. There are currently three videos posted. Topics covered include highlights of the USPTO’s annual independent inventors conference and a video targeted at young people to educate them on the consequences of copying and downloading music and other entertainment from unauthorized sources.

The featured video this month deals with the vital issues of protecting geographical indications. It explains the United States government’s position regarding a type of intellectual property that indicates the origin of goods or services in a particular geographic area with particular characteristics. Some examples are Parma Ham, Roquefort Cheese, Florida Oranges and Idaho Potatoes.

Geographical indications (GIs) are an important topic because of the ongoing debate at the World Trade Organization (WTO) regarding whether the international rules for the protection of GIs at the national level are sufficient or should be rewritten to accommodate some WTO Members’ trading goals. There are some WTO Members demanding a rewrite of the international rules in order to accomplish worldwide automatic protection for their geographical indications. Such a system would extinguish many uses of generic terms like parmesan, feta, sherry, or champagne in the United States and other WTO Members and would negatively impact the existing trademark uses of these types of terms, even to the point of potentially eliminating the registration of any geographic term as part of a trademark. Such proposals would obviously have a significant and decidedly negative impact on the U.S. trademark system and on U.S. producers and exporters. This video was designed by the USPTO and the U.S. Department of Agriculture to outline the U.S. protection system for GIs and to address some concerns about changing the international rules for GIs.

You can view the videos at the following URL:  http://www.uspto.gov/video/index.htm

 

 

United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 27Sept2005]

Posted by J Matthew Buchanan at September 29, 2005 08:17 AM

View and/or download a .pdf of this announcement at the link below:

United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 27Sept2005]

United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 27Sept2005]

View and/or download a .pdf of this announcement at the link below:

United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a) [signed 27Sept2005]

Provisions for Claiming the Benefit of a Provisional Application With a Non-English Specification and Other Miscellaneous Matters

Posted by J Matthew Buchanan at September 28, 2005 09:31 AM

View and//or download a .pdf of this Official Gazette Notice at the link below:

Provisions for Claiming the Benefit of a Provisional Application With a Non-English Specification and Other Miscellaneous Matters (26Sep2005)

U.S. Government Brings Anti-Counterfeiting and Piracy Program to South Florida

Posted by J Matthew Buchanan at September 26, 2005 08:47 PM

 U.S. Government Brings Anti-Counterfeiting and Piracy Program to South Florida
Efforts Focus on Small Businesses, Particularly Those Investing In or Exporting to Latin America

U.S. Under Secretary of Commerce for Intellectual Property Jon Dudas on Monday warned an audience of South Florida small-businessmen and –women that they are increasingly at risk of overseas intellectual property theft -- even if they do not export -- and urged them to consider protective action.

In his remarks before the “Conference on the Global Intellectual Property Marketplace,” sponsored by the Commerce Department’s U.S. Patent and Trademark Office (USPTO), Dudas cited Florida’s export-dependant [sic] economy—particularly those small businesses that export to Latin America--as a major reason why businesses in the state should make intellectual property protection in the United States and overseas a priority business decision.

“More than 90% of Florida’s exporters are small and medium-sized businesses. While trade allows these businesses to enter into new markets and grow their bottom lines, it also makes them especially vulnerable to intellectual property theft abroad,” Dudas said. “The goal of this seminar and other efforts by the U.S. Patent and Trademark Office here in Miami is to arm Florida’s small businesses with the information they need to protect their intellectual property assets in the U.S. and anywhere around the world they conduct business.”

While counterfeiting and piracy pose a serious threat to all American businesses, small businesses are particularly at risk because they often lack the knowledge and expertise to effectively combat it. Because small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

The Miami seminar is the latest in a series the USPTO is hosting across the country to help educate American small businesses about the realities of piracy and counterfeiting. During the two-day seminar in Miami, intellectual property experts from the agency are providing attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world. Previously, USPTO seminars were held in Salt Lake City, Utah; Phoenix, Arizona; and in Austin, Texas.

The Miami seminar represents one of the U.S. Patent and Trademark Office’s many efforts to educate small businesses about intellectual property protection. Currently, the agency is conducting a nationwide awareness campaign that is providing information to small businesses about when to file for intellectual property protection, what type of protection to file for, where to file and how to go about it. The effort features outreach targeting industry sectors especially at risk of intellectual property theft, a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness.

The campaign, in turn, is part of a much larger USPTO and federal government effort. The Strategy Targeting Organized Piracy (STOP!) initiative, also directed at small businesses, aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America’s borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

Since Miami is viewed by many to be America’s gateway to Latin America, the USPTO also placed an intellectual property attorney in Miami, Florida earlier this month to serve as an on-the-ground expert in all facets of intellectual property protection and enforcement for Latin America. USPTO’s legal expert will routinely meet with representatives from Latin American nations to advise them on intellectual property policy and provide technical training and guidance on understanding complex intellectual property issues.

For more information about the U.S. Patent and Trademark Office’s effort to educate American businesses about intellectual property rights, visit www.stopfakes.gov.

Commerce Secretary Carlos Gutierrez Announces USPTO-Related IPR Initiatives

Posted by J Matthew Buchanan at September 24, 2005 07:08 AM

Commerce Secretary Carlos Gutierrez Announces USPTO-Related IPR Initiatives

U.S. Commerce Secretary Carlos M. Gutierrez this week unveiled new Bush administration initiatives to fight intellectual property theft. The new initiatives include the appointment of Intellectual Property Rights (IPR) Experts in key overseas countries including Brazil, China, India and Russia, a new Small Business Outreach program to educate U.S. small businesses on how to protect their intellectual property rights, and a Global Intellectual Property Academy that will provide training programs for foreign government officials on global IPR issues.

“The protection of intellectual property is vital to our economic growth and global competitiveness and it has major consequences in our ongoing effort to promote security and stability around the world,” Gutierrez said. “The Bush administration is committed to stopping trade in pirated and counterfeit goods. Theft of intellectual property is not tolerated and will not be tolerated.”

The small business outreach initiative includes a Web site; www.stopfakes.gov/smallbusiness that is specifically designed to answer common questions of small business so they can better identify and address their IP protection needs. Additionally, the Department of Commerce is working closely with organizations like the U.S. Chamber of Commerce and the National Association of Manufacturers to help spread the word about the benefits of filing for IP protection both domestically and abroad.

Informational materials have been developed that can be downloaded off the Web site to help small businesses through the often complicated world of intellectual property protection. Small businesses are also being alerted to the resources available to them through advertising on Web sites they commonly turns to, such as Inc. Magazine.

The USPTO will continue to hold small-business outreach seminars all across the country to give Americans face-to-face contact with government IP experts. The next seminar will be held this coming Monday and Tuesday in Miami, FL.

The IPR experts in embassies will advocate for U.S. intellectual property policy and interests, conduct training on IPR matters and assist U.S. businesses. The program builds on the success of previous IPR expert postings in Geneva, Switzerland and China.

The Global IPR Academy is an aggressive expansion of existing training, technical assistance and capacity-building programs of the USPTO. The expanded academy will offer a full catalogue of both general overview courses and ones more focused on a variety of specialized IPR topics. It will be located at the USPTO headquarters in Alexandria, Virginia.

USPTO Contracts International Patent Application Searches to Commercial Firms Pilot program to determine viability of contracting out U.S. searches

Posted by J Matthew Buchanan at September 22, 2005 07:29 AM

USPTO Contracts International Patent Application Searches to Commercial Firms
Pilot program to determine viability of contracting out U.S. searches

Washington, D.C. - The United States Patent and Trademark Office (USPTO) announced today that it has awarded contracts to Landon IP, Inc., and IP Data Miner Inc., to participate in a Patent Cooperation Treaty (PCT) search pilot program. This pilot will determine whether searches by commercial entities can maintain the accuracy and quality standards for searches conducted by the USPTO during the patent examination process while remaining cost effective.

This year, USPTO expects to receive over 45,000 requests to search and/or examine international applications. USPTO's patent examiners currently do this in addition to the 350,000 U.S. applications the agency receives each year. By outsourcing some of the processing of international applications, the USPTO can focus on reducing the backlog of pending national applications, thus increasing productivity and enhancing quality. Efficient and high quality government operations are cornerstones of the President’s Management Agenda and guiding principles for this effort.

The PCT, an international agreement to which the United States is a party, simplifies filing patent applications in its 128 member states. The USPTO is one of many authorized offices that searches and examines international patent applications filed under the PCT. An international application may be used as a national application for a patent in any of the designated PCT countries. International applicants request PCT-related search and examination reports to help them determine if an application meets basic patent criteria, such as novelty and non-obviousness, before committing to the high cost of translating and filing an application in one or more PCT countries.

The USPTO is also exploring contracting out some of its PCT-related work, on a pilot basis, to other established government intellectual property offices that currently perform PCT-related searches/examinations. This pilot is expected to begin next month.

Information concerning the existing pilot program is available at http://www.uspto.gov/web/offices/ac/comp/proc/pctsearch/pctsearchhom.html.

# # #

U.S. GOVERNMENT TO ASSIST FLORIDA SMALL BUSINESSES IN COMBATING INTELLECTUAL PROPERTY THEFT

Posted by J Matthew Buchanan at September 21, 2005 01:09 PM

 
U.S. GOVERNMENT TO ASSIST FLORIDA SMALL BUSINESSES IN COMBATING
Miami Event Part of National Crackdown on Counterfeiting, Piracy

Washington, D.C.--U.S. Under Secretary of Commerce for Intellectual Property Jon Dudas will join hundreds of Florida small-businessmen and -women for a conference on the “Global Intellectual Property Marketplace” on September 26-27, 2005 in Miami, Fla. The event is part of the federal Strategy Targeting Organized Piracy (STOP), a major USPTO and U.S. government effort to protect American businesses from falling victim to intellectual property theft, both at home and abroad.

During the two-day Miami seminar, patent, trademark and copyright experts as well as lawyers from the USPTO will provide small- and medium-sized businesses, entrepreneurs and independent inventors with useful tips on protecting and enforcing their intellectual property rights in the United States and around the world.

WHAT: “Global Intellectual Property Marketplace” seminar

Remarks on the global intellectual property marketplace and how small businesses, including those in Florida, are increasingly at risk of intellectual property theft

 
WHO: The Honorable Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
Florida small-business owners 
WHEN: September 26-27, 2005
WHERE: Marriott Miami Airport
Grand Ballroom
1201 NW LeJeune Road
Miami, FL

Information about the seminars and other USPTO efforts to educate small businesses can be found at www.stopfakes.gov/smallbusiness.

# # #

Updated Lists of Exceptions to the Centralized Delivery and Facsimile Transmission Policy for Patent Related Correspondence (signed 19Sept2005)

Posted by J Matthew Buchanan at September 20, 2005 03:48 PM

View and/or download a .pdf of this announcement from the PTO here:

Updated Lists of Exceptions to the Centralized Delivery and Facsimile Transmission Policy for Patent Related Correspondence (signed 19Sept2005)

COMMERCE SECRETARY GUTIERREZ NAMES NEW MEMBERS TO PATENT AND TRADEMARK PUBLIC ADVISORY COMMITTEES

 

COMMERCE SECRETARY GUTIERREZ NAMES NEW MEMBERS TO
PATENT AND TRADEMARK PUBLIC ADVISORY COMMITTEES

Washington, D.C. - U.S. Commerce Secretary Carlos M. Gutierrez recently named three new members to the Patent Public Advisory Committee (PPAC) and three to the Trademark Public Advisory Committee (TPAC). They will serve three-year terms on the committees, which were created by the 1999 American Inventors Protection Act to advise the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) on the agency's operations, including its goals, performance, budget and user fees. The committees have nine voting members who are appointed by and serve at the pleasure of the Secretary of Commerce.

The new PPAC members are:

Maximilian A. Grant, an associate in the litigation department of the Washington, D.C. office of Latham & Watkins. He is the local chair for the intellectual property and technology practice group. He joined Latham & Watkins in 2002 after serving as Deputy Assistant Secretary of Defense.

Gerald J. Mossinghoff, senior counsel to Oblon, Spivak, McClelland, Maier and Neustadt, an intellectual property law firm in Alexandria, Va. He is a former Assistant Secretary of Commerce and Commissioner of Patents and Trademarks and former president of the Pharmaceutical Research and Manufacturers of America.

Lisa Norton, an attorney at DLA Piper, Rudnick, Gray, Cary US LLP. Prior to this position, she practiced in the Washington, D.C. office of King & Spalding. Her practice focuses on all aspects of patent law.

The new TPAC members are:

Ayala Deutsch, vice president and senior intellectual property counsel at NBA Properties, Inc., in New York. Her specialties include trademark law, copyright law and Internet law. Ms. Deutsch is a member of the board of directors of the International Trademark Association and co-chairs the New York State Bar Association Committee on Sports Law.

Van H. Leichliter, intellectual property leader and corporate counsel-trademarks at DuPont Corporate. He is a member of the government relations committee of the International Trademark Association.

Albert Tramposch, director of trademark registry services, Morgan, Lewis & Bockius in Washington, D.C. He has practiced exclusively in the area of intellectual property law for more than 19 years, and has worked in private practice in Alexandria, Va., Seattle, Wash., and Washington, D.C.

# # #

Recordation of Trademark Registrations with United States Customs and Border Protection

Posted by Stephen M. Nipper at September 16, 2005 12:05 PM

RECORDATION OF TRADEMARK REGISTRATIONS WITH UNITED STATES

CUSTOMS AND BORDER PROTECTION

 

Please note that U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a trademark recordation system for marks registered at the United States Patent and Trademark Office. Parties who register their marks on the Principal Register may record these marks with CBP, to assist CPB in its efforts to prevent the importation of goods that infringe registered marks. The recordation database includes information regarding all recorded marks, including images of these marks. CBP officers who actively monitor imports to prevent the importation of goods bearing infringing registered marks can view the recordation database at each of the ports of entry where these officers work.

 

Information about how to obtain a recordation, and about CBP's Intellectual Property Rights border enforcement program, is available at CBP's web site, www.cbp.gov.

UPDATE: A reader asked where I found this. The answer: "The text came from an insert inside a trademark registration I received this morning from the USPTO."

UPDATED NOTICE: Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 15Sept2005]

NOTE:  THIS NOTICE SUPERCEDES THE NOTICE SIGNED ON 9–14–05 (available via Rethink(IP) here).

View and/or download the new notice by clicking the link below:

Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 15Sept2005] (15Sep2005) [PDF] (This notice supercedes the one that was signed 09/14/05)

USPTO To Hold Live On-Line for Independent Inventors

Posted by J Matthew Buchanan at September 15, 2005 04:42 PM

 USPTO To Hold Live On-Line for Independent Inventors

Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line on Tuesday, September 20 , from 2 to 3 pm (EST). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the online will be posted on the home page of the USPTO website at 10 am (EST) on Thursday. Inventors can begin logging on for the on-line at 1:30 pm.

The independent inventor on-line is part of the USPTO's continuing efforts to promote and protect America 's independent inventors. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.

We have transcripts and frequently-asked questions and answers from previous onlines available on the Inventors Resources pages. Check them out and save time — your question may already have an answer waiting for you!

Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004 [FINAL RULE]

Posted by J Matthew Buchanan at September 14, 2005 05:17 PM

Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004 [FINAL RULE]

 

View and/or download a .pdf at the following link:  http://www.uspto.gov/web/offices/com/sol/notices/70fr54259.pdf

Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 14Sept2005]

Office Actions and Notice of Allowances Previously Mailed to Areas of Alabama, Louisiana, and Mississippi Affected by Hurricane Katrina [signed 14Sept2005]

 

View and/or download a .pdf at the following link:  http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/oa-katrina.pdf

U.S. Government Official Educates Texas Children About Intellectual Property Theft

 

U.S. Government Official Educates Texas Children About Intellectual Property Theft
Official Reminds Kids that Illegal Downloading, Copying is a Crime

U.S. Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos asked elementary students in Austin to help combat piracy, counterfeiting and copyright violations by refraining from illegally copying and downloading music, movies, software and computer games. Pinkos reminded the children that copying or downloading others’ property without their permission is a crime and that such theft has real consequences on our economy. Pinkos delivered his remarks to approximately 300 students at Gattis Elementary School in Round Rock, Texas on Tuesday.

“Intellectual property can be anything-a car, medicine, a toy, a video game or a CD-as long as the product began as an idea,” Pinkos told the students. “It is important that people-especially children-show respect for others' property. That includes not illegally copying and downloading video games and movies from the Internet. This is not okay-it's breaking the law.”

Pinkos' appearance at Gattis Elementary School came as part of his visit to Austin, where he and the USPTO hosted a two-day “Conference on the Global Intellectual Property Marketplace” on September 12-13, 2005. The seminar was the third in a series that the USPTO is hosting across the county to help educate American small businesses about the realities of piracy and counterfeiting.

For more information about the U.S. Patent and Trademark Office’s effort to educate Americans about intellectual property rights, visit www.stopfakes.gov/smallbusiness.

>> view our anti-piracy

Under Secretary Dudas before the Subcommittee on Courts, The Internet, and Intellectual Property Committee on The Judiciary United States House of Representatives “USPTO Oversight Hearing”

Posted by J Matthew Buchanan at September 12, 2005 08:45 PM

Under Secretary Dudas before the Subcommittee on Courts, The Internet, and Intellectual Property Committee on The Judiciary United States House of Representatives "USPTO Oversight Hearing"

(a .pdf of the Statement of Under Secretary Jon Dudas for the September 8, 2005 hearing of the House Subcommittee on Courts, The Internet, and Intellectual Property is available at the following link: http://www.uspto.gov/web/offices/com/speeches/2005sep08.pdf)

U.S. Government Official to Remind Texas Schoolchildren That Illegal Downloading and Copying is a Crime

U.S. Government Official to Remind Texas Schoolchildren That Illegal Downloading and Copying is a Crime
Kids to Be Taught the Value of Respecting Others’ Intellectual Property

Austin, Texas –U.S. Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos will stress the importance of respecting others’ intellectual property in remarks before the third, fourth and fifth grade classes at Gattis Elementary School on Tuesday, September 13, 2005 at 8:30 a.m. In his remarks, Pinkos will remind students that downloading and copying music, movies and video games without the permission of the artists’ or copyright holders’ permission is illegal. Pinkos will also talk to the children about the importance of intellectual property and describe the value of patents, copyrights and trademarks throughout American history.

The young inventors at Gattis Elementary School are participating in Camp Invention, a weeklong enrichment day camp offered to children entering the first through sixth grades. The program is co-sponsored by the U.S. Patent and Trademark Office and the National Inventors Hall of Fame.
WHO:  

“Stephen M. Pinkos, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office
WHAT:  Remarks to local children on the importance of intellectual property, copyrights and trademarks
WHEN:  Tuesday, September 13, 2005 at 8:30 a.m.
WHERE:  Gattis Elementary School
2920 Round Rock Ranch
Round Rock, TX 78664
Phone: 512-428-2000
WEB:  Visit http://www.uspto.gov/ to learn more about the U.S. Patent and Trademark Office

Information about the seminars and other USPTO efforts to educate small businesses can be found at www.stopfakes.gov/smallbusiness.

# # #

Petitions to Accept a Delayed Patent Maintenance Fee Payment where Non-Payment was due to the effects of Hurricane Katrina (signed 09 September 2005)

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

U.S. GOVERNMENT URGES TEXAS BUSINESSES TO PROTECT THEIR INTELLECTUAL PROPERTY FROM THEFT OVERSEAS

U.S. GOVERNMENT URGES TEXAS BUSINESSES TO PROTECT
THEIR INTELLECTUAL PROPERTY FROM THEFT OVERSEAS
Small Businesses Particularly Vulnerable, Says U.S. Patent & Trademark Office

Austin, Texas – U. S. Deputy Under Secretary of Commerce for Intellectual Property Steven Pinkos and U.S. Representative Lamar Smith (TX-21) today warned an audience of Austin small-businessmen and -women that they are increasingly vulnerable to overseas intellectual property theft -- even if they do not export -- and urged them to consider protective action.

In remarks before the “Conference on the Global Intellectual Property Marketplace,” sponsored by the Commerce Department’s U.S. Patent and Trademark Office (USPTO), Pinkos and Smith urged the audience to consider intellectual property protection in the United States and overseas a priority business decision. Pinkos noted that 90 percent of the companies exporting goods from Texas in 2002 were small- and medium-sized firms. Pinkos referred the audience to the USPTO’s new Web site, www.stopfakes.gov/smallbusiness, for information about how they can protect their businesses.

“Texas’ innovators and inventors are among the best that our country has to offer, and the intellectual property that they develop is critical to the U.S. economy as a whole,” Pinkos said. “This seminar in Austin will educate Texas small business owners and arm them with the information they need to protect their intellectual property and continue to grow our economy.”

Congressman Lamar Smith, Chairman of the House of Representatives Subcommittee on Courts, the Internet and Intellectual Property, also attended the seminar and emphasized the importance of new legislation supporting intellectual property rights.

While theft of intellectual property poses a serious threat to all American businesses, small businesses are particularly vulnerable because they often lack the knowledge and expertise to effectively combat it. Because small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

The Austin seminar is the third in a series the USPTO is hosting across the country to help educate American small businesses about the realities of piracy and counterfeiting. During the two-day seminar (September 12-13, 2005) in Austin, intellectual property experts from the agency are providing attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world. The next seminar will be held September 26-27 in Miami, Florida.

The Austin seminar represents one of the U.S. Patent and Trademark Office’s many efforts to educate small businesses about intellectual property protection. Currently, the agency is conducting a nationwide awareness campaign that helps small businesses know when to file for intellectual property protection, what type of protection to file for, where to file and how to go about it. The effort features outreach targeting industry sectors especially at risk of intellectual property theft, a Web site specifically designed to address the needs of small businesses, and free informational materials informing small businesses about the problem and steps they can take to mitigate it.

The campaign, in turn, is part of a much larger government effort. The Strategy Targeting Organized Piracy (STOP!) initiative aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America’s borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

For more information about the U.S. Patent and Trademark Office’s effort to educate American businesses about intellectual property rights, visit www.stopfakes.gov/smallbusiness.

# # #

RSS / E-mail Patent Lawsuit Filing Notices

The fact that a lawsuit has been filed can be an incredibly valuable piece of information, especially in the practice of patent law.

Today, Rethink(IP) announces the availability of another tool that allows you to acquire that valuable piece of information, every week with little to no effort.

Why is the existence of a lawsuit such a valuable piece of information?

First, the defendant might not know that he/she/it has been sued!

Your company, or your client, might have no idea that a patent lawsuit has been filed. How can this be? Remember that in the United States, a plaintiff has 120 days from the date of filing to serve a Complaint upon the defendant(s). To reserve a preferred venue/forum, many times a plaintiff will preemptively file the suit and not serve the Complaint, spending up to the next 120 days putting their case together, acquiring additional evidence, and (sometimes) attempting to settle the dispute.

Knowing that your company or client has been sued (but hasn't been served) can be priceless information when counseling them. How's that for a valuable "heads up"?

Second, the filing of a lawsuit can also be a valuable piece of competitive intelligence.

Knowing that competitor X just sued competitor Y may change discussions you're having with competitor X, Y, and/or A! It could also help in decision-making on several issues, such as marketing and product development. Best of all, it may allow you to monitor the case for information that might be helpful in a variety of situations.

We here at Rethink(IP) recognize the value of this information, and have created another RSS feed to deliver it to you.

The new RSS feed covers US patent lawsuit filings. We plan to update the feed at least weekly -- an interval that we expect will deliver value in a timely manner.

Each item in the feed will contain information on the lawsuits filed in the prior period (e.g., the past week). For each individual lawsuit, the names of the parties, name of the district court, and the case number.

A sample weekly report appears at the bottom of this post.

The RSS feed is available here: http://feeds.feedburner.com/RethinkIP_SUITS_PATENT

If you don't use an RSS aggregator (blog reader) and would like to subscribe to the feed via email, enter your e-mail address in the following form box and click the button:

Enter your Email





Powered by FeedBlitz

Remember, if you want to learn about RSS and need help, feel free to contact any of us.

Comments, questions, suggestions...let us know. steve@rethinkip.com

EXAMPLE POST DATA

HULL vs. ROTHHAMMER INTERNATIONAL, INC.
Court: candce
3:2005cv03538
Filed: 9/1/2005

ALZA CORPORATION vs. IMPAX LABORATORIES INC.
Court: dedce
1:2005cv00642
Filed: 9/1/2005

NOVO NORDISK A/S vs. SANOFI-AVENTIS
Court: dedce
1:2005cv00645
Filed: 9/2/2005

U.S. Government Takes Intellectual Property Protection Campaign to Texas Small Businesses Events in Austin to Educate Small Businesses about Rising IP Theft in China, other high-risk nations

Posted by J Matthew Buchanan at September 7, 2005 05:17 PM

MEDIA ADVISORY
Contact:
Brigid Quinn
571-272-8400
brigid.quinn@uspto.gov

Neil Grace
(202) 530-4558
 

September 7, 2005
#05-42

U.S. Government Takes Intellectual Property Protection Campaign to Texas Small Businesses
Events in Austin to Educate Small Businesses about Rising IP Theft in China, other high-risk nations

Washington, D.C.--U.S. Deputy Under Secretary of Commerce for Intellectual Property Stephen Pinkos and U.S. Representative Lamar Smith (TX-21) will join hundreds of Texas small-businessmen and -women for a conference on the “Global Intellectual Property Marketplace” on September 12-13, 2005 in Austin Texas. The event is part of the federal Strategy Targeting Organized Piracy (STOP), a major U.S. government effort to protect American businesses from falling victim to intellectual property theft, both at home and abroad.

During the two-day Austin seminar, patent, trademark and copyright experts as well as lawyers from the USPTO will provide small- and medium-sized businesses, entrepreneurs and independent inventors with useful tips on protecting and enforcing their intellectual property rights in the United States and around the world.
WHAT:  

“Global Intellectual Property Marketplace” seminar

Remarks on the global intellectual property marketplace and how small businesses, including those in Texas, are increasingly at risk of intellectual property theft

Media availabilities with Deputy Under Secretary of Commerce Stephen Pinkos to discuss U.S. government’s response to intellectual property theft.
WHO:  The Honorable Stephen Pinkos, Deputy Under Secretary of Commerce for Intellectual Property
The Honorable Lamar Smith, U.S. House of Representatives
Texas small-business owners
WHEN:  September 12-13, 2005
WHERE:  Hyatt Regency
Texas Ballroom
208 Barton Springs
Austin, Texas

Information about the seminars and other USPTO efforts to educate small businesses can be found at www.stopfakes.gov/smallbusiness.

# # #

USPTO Museum Open in Alexandria

 

USPTO Museum Open in Alexandria

The public is invited to visit the United States Patent and Trademark (USPTO) Museum to learn about America’s inventive spirit and marvel at the ingenuity of mankind. Today, U.S. innovation is one of our most treasured and envied assets. The USPTO works to record, share, and preserve this inventive spirit.

“The United States Patent and Trademark Office Museum showcases the innovation and creativity of Americans. We hope it will inspire a new generation of Americans to explore, create, and contribute to the prosperity of this great nation,” noted Under Secretary Jon Dudas.

Since the beginning of time, people have been developing better ways to do things, and for over 200 years the American patent and trademark systems have been there to protect and encourage innovation. Everyone benefits, and that story is told well in the opening exhibit, The Invention Machine: A Day in My Life.

The museum’s visitors will realize that they take advantage of inventions and rely on trademarks every day of their lives without ever stopping to think of their origins. Visitors will see how intellectual property is found in the routines they follow at the beginning of the day, in methods they use for travel, in medical innovations they rely upon for good health, and in the different ways they relax and play. The Invention Machine: A Day in My Life will run through January 2006.

The museum and gift shop are located in the atrium of the Madison Building, 600 Dulany Street, Alexandria, VA, and easily accessible from the King Street and Eisenhower Avenue Metro stations. The hours are 9:00 a.m. to 5:00 p.m., Monday through Friday and noon to 5:00 p.m. Saturday; closed on Sundays and federal holidays. School groups are most welcome and encouraged to schedule a tour.

The United States Patent and Trademark Office Museum and Store were developed and are maintained by the National Inventors Hall of Fame Foundation.

>> Directions to the museum
>> Schedule a museum tour

United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a)

The United States Patent and Trademark Office (USPTO) is designating the interruption in service of the United States Postal Service (USPS) in the areas affected by Hurricane Katrina in Louisiana, Mississippi, Alabama, and Florida on August 28, 2005, as a postal service interruption and an emergency within the meaning of 35 U.S.C. section 21(a) and 37 CFR 1.10(i) and 2.195(e).

View a .pdf of the announcement here:

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

United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a)

Posted by J Matthew Buchanan at September 6, 2005 11:11 AM

The United States Patent and Trademark Office (USPTO) is designating the interruption in service of the United States Postal Service (USPS) in the areas affected by Hurricane Katrina in Louisiana, Mississippi, Alabama, and Florida on August 28, 2005, as a postal service interruption and an emergency within the meaning of 35 U.S.C. section 21(a) and 37 CFR 1.10(i) and 2.195(e).

View a .pdf of the announcement here:

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

US Patent Office Scammers

Posted by Douglas Sorocco at September 5, 2005 10:34 AM

Contact Information for USPTO Customers Affected by Hurricane Katrina

Posted by J Matthew Buchanan at September 2, 2005 10:35 AM

    Contact Information for USPTO Customers Affected by Hurricane Katrina

    Patents

    USPTO customers in the areas affected by Hurricane Katrina who have questions or problems regarding patent applications or other patent proceedings should contact Eugenia Jones at 571-272-7727 or eugenia.jones@uspto.gov. For questions or problems regarding Board of Patent Appeals and Interferences (BPAI) matters, please contact Craig Feinberg at 571-272-9797 or craig.feinberg@uspto.gov.

    The content of and status information for USPTO files of published and patented applications are available on the USPTO web site via public PAIR at http://portal.uspto.gov/external/portal/pair. The content of and status information for other applications are maintained in confidence and are available on the USPTO web site only to persons having authority to access the application via private PAIR. Additional information on private PAIR is available at http://www.uspto.gov/main/faq/p120pair016.htm.

    Trademarks

    USPTO customers in the areas affected by Hurricane Katrina who have questions or problems regarding trademark applications or registrations should contact Janis Long at 571-272-9573 or janis.long@uspto.gov. For questions or problems regarding Trademark Trial and Appeal Board (TTAB) matters, please contact David Mermelstein at 571-272-4292 or david.mermelstein@uspto.gov.
    The contents of USPTO files for trademark applications, many registrations, and international applications filed under the Madrid Protocol, are available on the USPTO website at http://portal.uspto.gov/external/portal/tow. If a party needs a file that is not available on the USPTO web site, the party may e-mail a request to add the contents of that file to the USPTO database to TM_Scanning@uspto.gov.

    Status information about trademark applications, registrations and international applications filed under the Madrid Protocol is also available on the USPTO web site at http://tarr.uspto.gov.

    Information about TTAB proceedings is available in the TTABVue database at http://ttabvue.uspto.gov//ttabvue.

Comments on Changes to Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005 (August 2005)

Posted by Douglas Sorocco at August 31, 2005 09:38 PM

As of August 25, 2005, the organizations and persons listed below have submitted comments in response to the proposed rule Changes to Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005, published in the Federal Register at 70 Fed. Reg. 35571 [PDF] (June 21, 2005), and in the Official Gazette at 1296 Off. Gaz. Pat. Office 69 (July 12, 2005). It is hoped that the public will review this list to determine if it is complete. If any person or organization has submitted comments but is not included in this listing, please submit the comment by electronic mail message at AB79.Comments@uspto.gov, or contact Robert W. Bahr by telephone at (571) 272-8800.

Please note that the following documents are provided as submitted by persons and organizations but may contain spelling corrections, artifacts of scanning, OCR, or document format conversion.

A. Intellectual Property Organizations

1. American Intellectual Property Law Association (AIPLA) [PDF]

B. Law Firms

1. Oliff & Berridge, PLC [PDF]

C. Individuals

1. Apley, Dick [PDF]
2. Usher, Robert W.J. [PDF]

Some contents linked to on this page require a plug-in for PDF files.

Reciprocal Access to and Usage of Documents in Application Files of Trilateral Offices [signed 29August2005]

.pdf of preog notice available here:  http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/tda.pdf

USPTO Announces Seminars for Texas and Florida Businesses on Protecting Their Intellectual Property from Theft

Posted by Stephen M. Nipper at August 30, 2005 10:19 AM

USPTO Announces Seminars for Texas and Florida Businesses on Protecting Their Intellectual Property from Theft
Part of federal government’s Strategy Targeting Organized Piracy (STOP) efforts to combat intellectual property theft in China and other high-risk nations

The USPTO will open a two-day conference for small businesses on “Intellectual Property in the Global Marketplace” on Monday, September 12, 2005, at the Hyatt Regency, 208 Barton Springs Road in Austin, TX and on Monday, September 26 at the Marriott Miami, 1201 NW LeJeune Road in Miami, FL. These two events, sponsored by the United States Patent and Trademark Office (USPTO), are part of STOP (Strategy Targeting Organized Piracy) a major federal government effort to protect American businesses from falling victim to intellectual property theft — both domestically and abroad.

In today's global marketplace, American products and branding can be stolen by an individual or a business halfway around the world without the rightful owner even being aware of it. Small businesses are particularly at risk because they may lack the knowledge and expertise to effectively combat such theft. In recognition of this need, USPTO is hosting a series of seminars across the country to help educate American small businesses about the realities of piracy and counterfeiting and steps they can take to protect themselves.

During the two-day seminars, patent, trademark and copyright experts and lawyers from the USPTO will provide small- and medium-sized businesses, entrepreneurs, and independent inventors interested in manufacturing or selling their products abroad with specific details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world. Deputy Under Secretary of Commerce for Intellectual Property Steve Pinkos will kick off the seminar in Austin.

There is no charge for the conference, but seating is limited. For more information and to register for either the Austin or Miami conference, select one of the follwing links:
Austin, TX – September 12-13
Miami, FL – September 26-27

Announcement Regarding New Trademark Official Gazette Search Line In TESS, The Trademark Electronic Search System

Posted by J Matthew Buchanan at August 28, 2005 12:15 AM

The United States Patent and Trademark Office (USPTO) is pleased to announce that the on-line Trademark Electronic Search System, TESS, now features a new Trademark Official Gazette (TMOG) “search line.” By entering the publication date of a particular TMOG into the new search line, users can generate a list of all marks published for opposition  in that TMOG, or a list of all new registrations  published in that TMOG.

Additionally, users can refine those lists so that they include only marks published in a particular TMOG that have particular characteristics. For example, users could generate a list of all the marks published for opposition in the TMOG of August 2, 2005 that identify goods classified in international class 9. To do so, users would enter the following into TESS:

   1. In the “OG Date” line, enter 20050802;
   2. In the corresponding field line, select “publish for opposition date” from the pull-down menu;
   3. In the operator field, select “and” from the pull-down menu;
   4. In the “search term” line, enter 009; and
   5. In the corresponding field, select “international class” from the pull-down menu.

Please note that although the TMOG search line is specifically designed for searching particular issues of the TMOG, other search lines in TESS can be used to conduct more complex searches of individual TMOGs.

Please also note that whereas the TMOG is published each Tuesday, the TESS records for particular marks generally do not include the TMOG publication date for the mark until the following Wednesday. Hence, a search of a particular TMOG issue that is conducted on the day that issue is published may not yield any results.

Announcement Regarding Upcoming Issues Of The Trademark Official Gazette

Posted by J Matthew Buchanan at August 26, 2005 11:34 PM

The United States Patent and Trademark Office wishes to advise the public that the issues of the Trademark Official Gazette (TMOG) that will be published during the months of August, September, and October, as well as early November, will feature an unusually large number of marks. While the USPTO cannot predict precisely how many marks will appear in each of these TMOG issues, the USPTO expects that the different issues will include a minimum of approximately 6,000 marks, and as many as approximately 10,000 marks. These large volumes are the result of a processing backlog that the USPTO accumulated when it moved its offices to its current facility in Alexandria, Virginia. The USPTO deeply regrets any inconvenience

The USPTO notes that the on-line Trademark Electronic Search System (TESS) can be used to search an individual volume or volumes of the TMOG. For example, parties can conduct a search that will generate a list of all marks published for opposition in a particular TMOG volume that include a particular word or a particular design, or that are owned by particular parties, or whose associated goods or services are classified in a particular class.

Examples of possible TESS searches of individual TMOG volumes follow. Please note that whereas the TMOG is published each Tuesday, the TESS records for particular marks generally do not include the TMOG publication date for the mark until the following Wednesday. Hence, a search of a particular TMOG issue that is conducted on the day that issue is published may not yield any results.

   1. Example #1. Search for all marks published for opposition in the TMOG of August 9, 2005 that are comprised of or feature the term DOG, using the "structured form search" option.
         1. Enter 20050809 as the first search term;
         2. Select "Published for Opposition Date" as the field within which the term identified in 1. a. above should be searched for;
         3. Select AND as the Boolean operator;
         4. Enter *DOG* as the second search term; and
         5. Select "Basic Index" as the field within which the term identified in 1. b. above should be searched.
   2. Example #2: Search for all marks published for opposition in the TMOG of August 2, 2005 that feature a design of either a dog or the head of a dog, using the "free form search" option.
         1. Enter the following into the search field: 20050802[po] and (030108 OR 030116)[DC]
   3. Example #3: Conduct a sequence of searches, each of which builds on the previous search, using the "free form" search option.
         1. Generate a list of all marks published for opposition in the TMOG of August 2, 2005 by entering the following in the search field: 20050802[po]
         2. After generating the list referred to in 3 a. above, generate a list of all marks published for opposition in the TMOG of August 2, 2005 that identify goods classified in international class 9 by entering the following in the search field: s1 and 009[ic]
         3. After generating the list referred to in 3 b. above, generate a list of all marks published for opposition in the TMOG of August 2, 2005 that identify goods classified in international class 9, AND that include the word "software" in the identification of goods, by entering the following in the search field: s2 software[gs]

Notice of Availability of and Request for Comments on Green Paper Concerning Restriction Practice

Posted by J Matthew Buchanan at August 21, 2005 11:14 PM

http://www.uspto.gov/web/offices/com/sol/notices/70fr45370.pdf

Requirements To Receive a Reduced Fee for Filing an Application Through the Trademark Electronic Application System

http://www.uspto.gov/web/offices/com/sol/notices/70fr38768.pdf

Changes To Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005

http://www.uspto.gov/web/offices/com/sol/notices/70fr35571.pdf

Acceptance, Processing, Use and Dissemination of Chemical and Three-Dimensional Biological Structural Data in Electronic Format

http://www.uspto.gov/web/offices/com/sol/notices/70fr35573.pdf

Revision of Search and Examination Fees for Patent Cooperation Treaty Applications Entering the National Stage in the United States

http://www.uspto.gov/web/offices/com/sol/notices/70fr35375.pdf

U.S. INTELLECTUAL PROPERTY CHIEF SALUTES AMERICA’S INDEPENDENT INVENTORS

 

Alexandria, VA – U. S. Under Secretary of Commerce for Intellectual Property Jon Dudas today asked independent inventors to protect American ingenuity by safeguarding their inventions from intellectual property theft. Small businesses—such as independent inventors—are often at particular risk for IP theft, a growing problem around the world. Dudas urged attendees at the 10th annual Independent Inventor’s Conference to make patent, trademark and copyright protection a core part of their business strategy.

“The strength of our nation’s economy rests on the ingenuity of American inventors,” Dudas said. “In the 21st century, securing protection for your inventions is almost as important as the invention itself.”
“As inventors turn their ideas and discoveries into viable, marketable products, it is critically important for them to get the protection they need to safeguard their inventions and help protect our overall economy,” he continued.

From Willis Carrier’s air conditioning to Clarence Birdseye’s frozen food technology, independent inventors have shaped the American economy throughout history. More than 200 independent inventors at the conference heard from Al Langer, the engineer on the medical team that invented the first automatic implantable cardioverter defibrillator, a life-saving device. Langer’s device has revolutionized the way doctors treat heart patients, and his success as an inventor and entrepreneur provided valuable insights for conference attendees.

“Throughout history, inventors have helped people discover new worlds, build communities, and cure sickness and disease, said Deputy Under Secretary of Commerce for Intellectual Property Steve Pinkos. “This conference celebrates all that inventors have accomplished in our nation’s history, and will create in the future.”

The U.S. continues to be the driver of ingenuity around the world, evidenced by the surge in patent, trademark and copyright applications from inventors and the resulting patents issued by USPTO. In 2004, the USPTO received more than 376,000 applications for patents, and patent applications have more than doubled since 1992. In fact, the USPTO issued more patents in 2004 than it did during its first 40 years.

Dudas and Pinkos also used their remarks to talk to inventors about what the U.S. government is doing to combat intellectual property theft. While they pointed out that intellectual property theft poses a threat to all American businesses, both officials said that most small businesses and independent inventors are particularly at risk because they often lack the knowledge and expertise to effectively combat it. To address this, Dudas said that the USPTO is hosting the Independent Inventor’s Conference—which is co-sponsored by the National Inventors’ Hall of Fame—and a series of seminars across the country to help educate American inventors and small businesses about the realities of piracy and counterfeiting. During these events, intellectual property experts from the agency will provide attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world.

The USPTO is also currently conducting a nationwide awareness campaign that is providing information to small businesses about when to file for intellectual property protection, what type of protection to file for, where to file and how to go about it. The effort features outreach targeting industry sectors especially at risk of intellectual property theft, a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness.

For more information about the U.S. Patent and Trademark Office’s effort to educate American small businesses about intellectual property rights, visit www.stopfake.gov/smallbusiness or www.uspto.gov.

# # #

Bush Administration Official Reminds Arizona Children that U.S. Intellectual Property Protection Begins With Them

 U. S. Under Secretary of Commerce for Intellectual Property Jon Dudas on Monday asked elementary students attending Camp Invention to help combat piracy, counterfeiting and copyright violations by refraining from illegally copying and downloading music, movies, software, and computer games. Dudas reminded the children that copying or downloading others’ property without their permission is a crime, and that this crime has real economic consequences for our economy. Dudas addressed eighty 2nd – 6th graders participating in Camp Invention at Lone Mountain Elementary School in Cave Creek, Arizona.

“Illegally copying computer games, DVDs and other products is just as wrong as stealing these items from the store,” Dudas said. “Copying and downloading Star Wars video games and movies is not okay—it’s breaking the law because it is stealing someone else’s property. It’s up to all of us to show respect for others’ property, whether it’s our next- door neighbor, our classmate or a company that’s far away.”

Camp Invention, cosponsored by the USPTO and the National Inventors Hall of Fame, is a nationwide educational outreach program designed to give children in grades 2-6 an alternative to traditional classroom experiences. Camp Invention's purpose is to stimulate the imaginations of America's next generation of inventors, and the weeklong day camp builds on a child's innate curiosity and intuition about the way things work. Emphasis is placed on the creative process that leads children to problem solving, discovery and invention.

In sessions such as “I Can Invent,” campers take apart old appliances and use the parts to create their own inventions. In another session, they simulate the process of applying for a patent. The thought-provoking learning experience teaches young people the importance of respecting people’s intellectual property just as they would any tangible property, as well as how the patent and trademark system works to support our economy.

Dudas also used his remarks to educate the students about what constitutes intellectual property, explaining that the term ‘intellectual property’ can be used to describe many products—a car, a medicine, a toy, a video game or a CD—as long as the product began as an idea. Dudas talked about patents, trademarks and copyrights and their importance to our nation’s economy and our daily lives. “The jobs of the future depend on our nation’s ability to continue to generate new inventions and innovations and to stay one step ahead of other nations in today’s global marketplace,” he said.

Dudas’ visit to Camp Invention was part of his visit to Phoenix, where he and the USPTO hosted a two-day “Conference on the Global Intellectual Property Marketplace” on July 18-19, 2005. The seminar was the second in a series that the USPTO is hosting across the county to help educate American small businesses about the realities of piracy and counterfeiting.

(20JUL2005)

Government Seeks Help from Arizonal Schoolchildren in Fight against Illegal Downloading and Copying of Music, Movies, Video Games

 
Government Seeks Help from Arizonal Schoolchildren in Fight against Illegal Downloading and Copying of Music, Movies, Video Games

Message to be delivered during meeting with next generation of inventors, entrepreneurs in Cave Creek

Washington, D.C. – Under Secretary of Commerce for Intellectual Property Jon Dudas will speak with young innovators attending Camp Invention at Lone Mountain Elementary School in Cave Creek, Arizona on July 19, 2005. Under Secretary Dudas will speak to students on the importance of intellectual property rights and remind them that downloading and copying music, movies and video games without the permission of the artists’ or copyright holders’ permission is illegal—and that the government needs their help in stopping these crimes. Dudas will also talk to the children about the importance of intellectual property, describing the value of patents, copyrights and trademarks to our economy.

Camp Invention, cosponsored by the USPTO and the National Inventors Hall of Fame, is a nationwide educational outreach program designed to give children an alternative to traditional classroom experiences. The weeklong day camp emphasizes problem-solving techniques while trying to stimulate the imaginations of America’s next generation of inventors. The experience provides children with an opportunity to explore new ideas while learning the importance of the patent and trademark system in our economy.

WHO: The Honorable Jon Dudas, Under Secretary of Commerce for Intellectual Property, Director of the U.S. Patent and Trademark Office

WHAT: Discussion with elementary students attending Camp Invention

WHEN: Tuesday, July 19, 2005 10:00 a.m.

WHERE: Lone Mountain Elementary School, 5250 E. Montgomery Road, Cave Creek, Arizona 85327

WEB: Visit http://www.uspto.gov/ to learn more about the U.S. Patent and Trademark Office

U.S. GOVERNMENT URGES ARIZONA'S BUSINESSES TO PROTECT THEIR INTELLECTUAL PROPERTY FROM THEFT OVERSEAS

 

U.S. GOVERNMENT URGES ARIZONA'S BUSINESSES TO
PROTECT THEIR INTELLECTUAL PROPERTY FROM THEFT OVERSEAS
Small Businesses Especially At Risk, Says U.S. Patent & Trademark Office

Phoenix, Arizona – U. S. Under Secretary of Commerce for Intellectual Property Jon Dudas today warned an audience of Arizona small-businessmen and –women that they are increasingly at risk of overseas intellectual property theft -- even if they do not export -- and urged them to consider protective action. In his remarks before the “Conference on the Global Intellectual Property Marketplace,” sponsored by the Commerce Department’s U.S. Patent and Trademark Office (USPTO), Dudas cited Arizona’s export-dependant economy—particularly the state’s 300% increase in exports to China since 2000—as a major reason why businesses in the state should make intellectual property protection in the United States and overseas a priority business decision.

“Piracy and counterfeiting are on the rise around the world, and all American businesses--including the thousands of small businesses here in Arizona--are at risk,” Dudas said. “The U.S. Patent and Trademark Office is sponsoring seminars like this one to arm small businesses with the information they need to protect their intellectual property, in the United States as well as around the world.”

While theft of intellectual property pose a serious threat to all American businesses, small businesses are particularly at risk because they often lack the knowledge and expertise to effectively combat it. Because small businesses typically do not have personnel or maintain large operations in other countries, theft of their intellectual property overseas can go undetected.

The Phoenix seminar is the second in a series the USPTO is hosting across the country to help educate American small businesses about the realities of piracy and counterfeiting. During the two-day seminar (July 18-19, 2005) in Phoenix, intellectual property experts from the agency are providing attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world.

The Phoenix seminar represents one of the U.S. Patent and Trademark Office’s many efforts to educate small businesses about intellectual property protection. Currently, the agency is conducting a nationwide awareness campaign that is providing information to small businesses about when to file for intellectual property protection, what type of protection to file for, where to file and how to go about it. The effort features outreach targeting industry sectors especially at risk of intellectual property theft, a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness.

The campaign, in turn, is part of a much larger USPTO and federal government effort. The Strategy Targeting Organized Piracy (STOP!) initiative, also directed at small businesses, aims to combat criminal networks that traffic in fakes, stop trade in pirated and counterfeit goods at America’s borders and help small businesses secure and enforce their rights in overseas markets. As part of the initiative, the U.S. Patent and Trademark Office maintains a toll-free telephone hotline, 1-866-999-HALT, that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

For more information about the U.S. Patent and Trademark Office’s effort to educate American businesses about intellectual property rights, visit www.uspto.gov.

# # #

USPTO Museum Opens at New Headquarters

 

Washington, D.C. -- U.S. Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas was joined today by Alexandria Mayor William D. Euille, U.S. Representatives Jim Moran and Frank Wolf, and David Fink, President and CEO of the National Inventors Hall of Fame, in a ribbon-cutting ceremony opening the agency’s new museum.

“The Patent and Trademark Office Museum is our opportunity to showcase innovation and the men and women whose creativity have helped foster a strong and prosperous America,” noted Under Secretary Dudas.

The National Inventors Hall of Fame and the exhibit design company Chermayeff & Geismar designed an exciting space in a modern aesthetic style using a rich palette of exhibit techniques—such as videos, interactives, artifacts and touch-screen technology—to feature patents, trademarks, inventors and inventions.

“The National Inventors Hall of Fame is pleased to bring the story of the USPTO to life,” said David Fink. “Through the state-of-the-art displays we’ve designed, we hope that visitors to the museum will take away an understanding of the USPTO’s rich history as well as its exciting future.”

Since the beginning of time, people have been developing better ways to do things, and for over 200 years the American patent and trademark systems have been there to protect and encourage innovation. Everyone benefits, and that story is told well in the opening exhibit, The Invention Machine: A Day in My Life.

The museum’s visitors will realize, as they view the exhibit, that they take advantage of inventions and rely on trademarks every day of their lives without ever stopping to think of their origins. Visitors will see how intellectual property is found in the routines they follow at the beginning of the day, in methods they use for travel, in medical innovations they rely upon for good health, and in the different ways they relax and play.

The museum and gift shop will open to the public on Thursday, July 14, 2005. It is located in the atrium of the Madison Building, 600 Dulany Street, Alexandria, VA, and easily accessible from the King Street and Eisenhower Avenue Metro stations. The hours will be 10:00 a.m. to 6:00 p.m., Tuesday through Friday and noon to 5:00 p.m. Saturday and Sunday; closed on Mondays and federal holidays.

# # #

USPTO REDUCES FEES FOR TRADEMARK ELECTRONIC APPLICATION FILING

 

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that beginning July 18, 2005, the agency will offer applicants for trademark registrations a new Trademark Electronic Application System (TEAS) known as TEAS Plus that will add up to considerable savings for many filers.

The fee for filing a trademark application will be reduced by $50 per class for those using TEAS Plus. Most filers seek trademark protection for more than one class of goods and services in their application. In return for paying the lower filing fee, applicants who file using TEAS Plus agree to submit complete applications electronically, and to communicate electronically only with the USPTO about the application.

"This change reflects the mandate of the President's Management Agenda for citizen-centered, results-oriented government," noted Under Secretary of Commerce of Intellectual Property and Director of the USPTO Jon Dudas. "Specifically, TEAS Plus offers applicants an opportunity to save money by filing and managing their applications electronically. We hope the TEAS Plus option will make our already popular system even more useful to the public."

Nearly 82 percent of all trademark applications filed so far this year were transmitted electronically. That represents an increase of nearly 20 percent over last year.

# # #

Lynne G. Beresford Named Commissioner for Trademarks

 

U.S. Secretary of Commerce Carlos M. Gutierrez has named Lynne G. Beresford to be Commissioner for Trademarks at the Commerce Department’s U.S. Patent and Trademark Office (USPTO). Beresford has been acting Commissioner for Trademarks since September 1, 2004.

In response to the appointment, Under Secretary of Commerce for Intellectual Property Jon Dudas noted, “Lynne Beresford has a track-record of excellence and achievement, both as a manager and as a trademark expert. The Secretary’s appointment ensures continuity of our successful trademark operations.”

As Commissioner for Trademarks, Beresford is responsible for the productivity and quality of the work done by more than 300 examining attorneys, paralegals and other support professionals. She also oversees budget and trademark-related information technology (IT) decisions.

Beresford began her career at the USPTO in 1979 as a trademark examining attorney. She has held a variety of management positions throughout her career, including managing attorney, trademark legal administrator, deputy commissioner for trademark examination policy, and acting deputy commissioner for trademark operations. Beresford also served as a senior attorney in the USPTO’s Office of International Relations.

In 1989 Beresford managed the computer aspects of the implementation of the Trademark Law Revision Act of 1988. She chaired every meeting of the World Intellectual Property Organization’s Standing Committee on Trademarks, Industrial Designs and Geographical Indications from its inception in 1997 until late 2001 and was instrumental in drafting the legislation to implement the Madrid Protocol and the Trademark Law Treaty.

# # #

Requirements To Receive a Reduced Fee for Filing an Application Through the Trademark Electronic Application System

http://www.uspto.gov/web/offices/com/sol/notices/70fr38768.pdf

John J. Doll Named Commissioner for Patents

 

U.S. Secretary of Commerce Carlos M. Gutierrez has named John J. Doll to be Commissioner for Patents at the United States Patent and Trademark Office (USPTO). Doll has been Acting Commissioner for Patents since April 2005.

In response to the appointment, Under Secretary of Commerce for Intellectual Property Jon Dudas noted, “I am pleased that the Secretary has chosen John Doll to be the Commissioner for Patents. John has excellent management skills combined with a dedication to outstanding service to the public and a focus on internal reform.”

As Commissioner for Patents, Doll is responsible for the productivity and quality of the work done by more than 4,000 patent examiners, paralegals and other support professionals, for patent examination policy, budget decisions, and for patent-related Information Technology (IT) decisions.

From January – April 2005, Doll served as the Deputy Commissioner for Patent Resources and Planning directing information processing and technology, and budget formulation and execution for patent operations. He previously served as Special Assistant to the Under Secretary. Doll was a group director from 1995-2005 in the technology center responsible for examination of biotechnology, organic chemistry, and pharmaceutical patent applications. He was an integral part of the team responsible for last year’s implementation of the Image File Wrapper (IFW), the USPTO’s electronic patent application processing system.

Doll has received numerous awards throughout his USPTO career, including the Vice Presidential Hammer Award for his work in establishing the Biotech Customer Partnership; a Department of Commerce Gold Medal for his work on the team that implemented IFW; and a Silver Medal for his work on automating patent examiner tools.

During his tenure as a group director, Doll managed the development and implementation of training materials used by patent examiners to apply the enablement provisions of the patent statute in reviewing applications. He also helped develop and implement the guidelines and training materials used by examiners evaluating patent applications for compliance with the utility and written description provisions of patent law.

Doll holds a Bachelor of Science degree from Bowling Green State University in chemistry and physics and a Master of Science degree in physical chemistry from Penn State University. He joined the USPTO in 1974.

# # #

USPTO IMPROVES PROCESS FOR REVIEWING PATENTS

 

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) has implemented new processes for handling reexamination proceedings to improve timeliness and quality. Patent reexamination is a valuable, low-cost alternative to litigation for determining the patentability of the claims in an issued patent. Requests for the USPTO to reexamine a patent can be made as long as written evidence is presented that raises a substantial new question of patentability.

“Timeliness and correctness of decisions in reexamination proceedings are important to providing certainty for all users of the patent system,” noted Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “We have a duty to the American public to get reexaminations right and to conduct them with dispatch so they remain an effective tool.”

The USPTO’s goal is that reexaminations that have been pending with an examiner more than two years now will be resolved by October 1, 2005. In addition, all future reexamination proceedings will be completed within a specific timeframe, which is expected to be less than two years. In March 2005 there were over 420 reexaminations that had been pending more than two years and that number would have grown to over 600 by the end of September 2005. Today, fewer than 360 cases remain, with nearly half in the final stages. To ensure the quality of these proceedings, all reexamination decisions now require a thorough review by a panel of supervisors and senior patent examiners. Reexaminations where an initial decision has been made will remain with the examiner originally assigned to the reexamination. All other reexaminations will be reassigned to a newly formed central reexamination unit.

Prior to the new initiative, reexamination cases were assigned to examiners according to technology. Under the new initiative, 20 highly skilled primary examiners who have a full understanding of reexamination practice and relevant case law will concentrate solely on reexamination. The 20-examiner unit began operation earlier this week and all new requests for reexamination will be assigned to them. Using skilled examiners assigned to a single unit will enhance the quality and reduce the time of reexaminations by allowing the USPTO to monitor more effectively the reexamination operations.

# # #

IMPROVED PATENT APPEAL PROCESS WILL SAVE PATENT APPLICANTS $30 MILLION ANNUALLY

 

The Department of Commerce’s U.S. Patent and Trademark Office (USPTO) announced today that patent applicants can now request an appeal conference and learn its results before incurring the costs of drafting and filing an appeal brief. This change is expected to save patent applicants at least $30 million annually.

"This simple reform saves applicants a significant amount of money and reflects the mandate of the President's Management Agenda for citizen-centered and results-oriented government," noted Jon Dudas, under secretary of Commerce for Intellectual Property and Director of the USPTO.

Previously, when an applicant wished to appeal a patent examiner’s rejection of his/her patent application to the Board of Patent Appeals and Interferences (BPAI), the applicant was required to file a notice of appeal and an appeal brief before the appeal to the BPAI. Depending on the complexity of the invention, appeal briefs cost between $5,000 and $20,000 to prepare.

Before the appeal goes to the BPAI docket, however, the agency holds an appeal conference with the examiner handling the application and two other experienced examiners. The purpose of the conference is to determine if the application is ready for appeal. Under the new procedures, an appeal brief isn’t filed until the outcome of the conference is known. If the case is not ready for appeal, applicants will no longer incur the costs associated with needlessly preparing and filing the brief.

For more information on appeal brief procedures, go to: http://www.uspto.gov/web/patents/patog/week28/OG/TOC.htm#ref12.

# # #

New Pre-Appeal Brief Conference Pilot Program

 

United States Patent and Trademark Office OG Notices: 12 July 2005

                New Pre-Appeal Brief Conference Pilot Program


Effective Date: Effective upon publication of this notice

   This new program offers applicants an avenue to request that a panel of

examiners formally review the legal and factual basis of the rejections in

their application prior to the filing of an appeal brief. Effective

immediately, the USPTO is offering applicants an optional procedure to

review the examiner's rejection prior to the actual filing of an appeal

brief. The program is intended to spare applicants the added time and

expense of preparing an appeal brief if a panel review determines an

application is not in condition for appeal.  Although this procedure will

not be appropriate in every appealed application, in the proper situations

it can save both the resources of the applicant and the Office. Applicants

continue to have available to them the normal practice and procedures

already in effect under Part 41 of the Title 37 of the Code of Federal

Regulations relating to appeals and practice before the Board of Patent

Appeals and Interferences.

Contents

   1. General Provisions

   2. Conditions Necessary to Request a Panel Review

   3. Content of Request

   4. Content of Remarks or Arguments

   5. USPTO Consideration of the Request

   6. Format of Panel Decision

   7. Time Periods Before/After a Panel Decision

   8. Administrative Matters

1. General Provisions:

. What is this program?

   Under the current practice every applicant whose claims have been twice

rejected may appeal the examiner's decision to the Board of Patent Appeals

and Interferences.  To do so, the applicant first files a notice of appeal

accompanied by the appropriate fee i within the appropriate time period ii.

Within two months from the date of the filing of the notice of appeal,

applicant must file an appeal brief accompanied by the appropriate fee iii.

Applicants may buy extensions of time for filing the appeal brief.

   This pilot program offers applicants an opportunity to request a review

of identified matters on appeal employing an appeal conference currently

employed in the Office, but prior to the filing of an appeal brief.  The

goals of the program are (1) to identify the presence or absence of clearly

improper rejections based upon error(s) in facts, or (2) to identify the

omission or presence of essential elements required to establish a prima

facie rejection.

. Who can use this program?

   Any applicant who has filed a notice of appeal and who wants a panel of

experienced examiners to perform a detailed review of appealable issues

within a set period of time.

. How to decide if you should request this panel review?

   If the applicant feels the rejections of record are clearly not proper

and are without basis, then filing this request may result in a panel

decision that eliminates the need to file an appeal brief. This should be

based upon a clear legal or factual deficiency in the rejections rather than

an interpretation of the claims or prior art teachings. The latter is more

appropriate for the traditional appeal process currently employed by

applicants.

. What happens during a panel review?

   A panel of examiners (including the examiner of record) will consider

the merits of each ground of rejection for which appeal has been requested

and will issue a written decision as to the status of the application.

. When should you file an appeal brief or other correspondence?

   This program is designed to allow applicants who think there is a clear

deficiency in the  prima facie case in support of a rejection to file the

request at the same time that they file a notice of appeal.  This affords

the Office the best opportunity to ensure that applicant will promptly

receive a decision on the request. If the request is filed with the notice

of appeal, the period of time for filing the appeal brief will be the later

of the two-month period set in 37 CFR 41.37(a) or one month from the mail

date of the decision on the request.

. What actions will terminate the panel's review?

   If applicant files any of the following responses after filing a

request, but prior to a decision by the appointed panel of examiners

assigned to conduct the review, the review process will end and a decision

will not be made on the merits of the request:

   - an appeal brief

   - a request for continued examination (RCE)

   - an after-final amendment

   - an affidavit or other evidence

   - an express abandonment

   A request for the declaration of an interference will also result in

an end to the review process. Applicant will be promptly notified by an

Office communication of termination or of dismissal of the request. If any

of the above-noted actions occur, the period for filing the appeal brief

(if applicable) will be the later of the two-month period set in 37 CFR

41.37(a) or one month from the mail date of the decision on the request.

2. Conditions Necessary to Request a Panel Review:

   - Applicant must file a notice of appeal in compliance with 37 CFR

     41.31.

   - Applicant must file the request with the filing of a notice of appeal

     and before the filing of an appeal brief. 1

3. Content of Request:

   a. File the request and accompanying arguments in a separate paper

entitled, "Pre-Appeal Brief Request for Review". A sample request form has

been created and is available on the USPTO Internet Website, on the forms

page, as PTO/SB/33.

   b. In five (5) or less total pages, provide a succinct, concise and

focused set of arguments for which the review is being requested.

   c. File the request with the notice of appeal.

   d. Address the notice of appeal and the request to

      - Mail Stop AF

      - Commissioner for Patents

      - P.O. Box 1450

      - Alexandria, VA 22313-1450

      - Fax the notice of appeal and the request to the Central FAX Number

        (now 571 273-8300)

      - Hand carry the notice of appeal and the request to the

        USPTO Customer Service Window, ATTN: Mail Stop AF

        Randolph Building

        401 Dulany Street

        Alexandria, VA 22314

   e. No after-final or proposed amendments may accompany the request. iv

   A request that fails to comply with the above noted submission

requirements may be dismissed.

4. Content of Remarks or Arguments:

   The request should specify-

   . clear errors in the examiner's rejections; or

   . the examiner's omissions of one or more essential elements needed

     for a prima facie rejection.

   For example, the request should concisely point out that a limitation is

not met by a reference or the examiner failed to show proper motivation for

making a modification in an obviousness rejection (35 U.S.C. 103).

Applicants are encouraged to refer to arguments already of record rather

than repeating them in the request. This may be done by simply referring

to a prior submission by paper number and the relevant portions thereof

(e.g., see paper number 3 at pages 4 to 6).  However, references such as

"see the arguments of record" or "see paper number X" are not helpful and

will just obfuscate the real issues for review.

   The request may not be more than five (5) pages total and the remarks

should be drafted with the expectation that for a clear error in fact or

other deficiency, a long detailed explanation is not needed.  Requests are

limited to appealable, not petitionable matters.

   Any actual issues lacking factual basis, including interpretations of

the prior art teachings or claim scope as contrasted with clear error in

facts, are appropriate for the traditional appeal process and submission

of the appeal brief. For grounds where a clear issue on proper interpreta-

tion exists, applicant is advised to proceed to appeal with the timely

filing of the appeal brief.  This program is not intended to be, and is

not, an alternative for filing an appeal.

5. USPTO Consideration of the Request:

   Upon receipt of a properly filed request, a Technology Center Art Unit

supervisor will designate a panel of examiners experienced in the field of

technology to review the applicant's remarks and the examiner's rejections.

The panel will include at least a supervisor and the examiner of record.

The applicant will not be permitted to attend the review and no interviews

will be granted prior to issuance of the panel's decision.

   The panel members will review the rejection(s) identified by applicant in

the request.  They will also review the application and the appropriate

evidence in support of the rejections to the extent necessary.  The panel

will then decide if an issue for appeal is, in fact, present in the record.

The Office should mail a decision within 45 days of receipt of a properly

filed request.

6. Format of Panel Decision:

   After the review is complete, the Office will mail a decision on the

status of the application.  The decision will state one of the following:

   . Finding 1: The application remains under appeal because there is at

     least one actual issue for appeal.

   . Finding 2: Prosecution on the merits is reopened and an appropriate

     Office communication will follow in due course.  In appropriate

     circumstances, a proposed amendment may accompany the panel's decision

     proposing changes that, if accepted, may result in an indication of

     allowability for the contested claim(s).

   . Finding 3: The application is allowed on the existing claims and

     prosecution remains closed.

   . Finding 4: The request fails to comply with the submission

     requirements and is dismissed.

   The decision will summarize the status of the pending claims (still

rejected, withdrawn rejections, objected to or allowable claims).

   A decision by a pre-appeal brief conference panel to withdraw the

rejections of any or all of the claims on appeal is not a decision by a

panel of the Board of Patent Appeals and Interferences, and, as such, would

not result in any patent term extension of adjustment under 35 U.S.C.

Sec. 154(b) (37 CFR 1.701(a)(3) and 1.702(e)).

   The decision will not contain any additional grounds of rejection or

any restatement of previously made rejections. Such matters will be

addressed, as appropriate, in the Examiner's Answer.

7. Time Periods Before/After a Panel Decision:

   . The request must be filed with the filing of a notice of appeal and

     before the filing of the appeal brief.  No extensions of time are

     available for filing the request for review.

   . The time period for filing an appeal brief will be reset to be one

     month from mailing of the decision on the request, or the balance of

     the two-month time period running from the receipt of the notice of

     appeal, whichever is greater. Further, the time period for filing of

     the appeal brief is extendible under 37 CFR 1.136 based upon the mail

     date of the decision on the request or the receipt date of the notice

     of appeal, as applicable.  To the extent that any existing USPTO rule

     is inconsistent with this pilot program, the rule is waived until

     regulations directed to pre-appeal brief conferences are promulgated,

     or the pilot program is ended.  For example, if a request for a

     pre-appeal brief conference is filed with a notice of appeal, the time

     period set in 37 CFR 41.37(a)(1) is waived so that an appeal will not

     stand dismissed if an appeal brief is not filed within two months of

     the filing date of a notice of appeal, but is filed within one month

     of the decision on the request.

  Applicant's period for filing the appeal brief or other appropriate

response ends on the mailing date of a panel decision that indicates all

claims are allowed or that prosecution is reopened.

8. Administrative Matters:

   . Applicants should ensure that requests are mailed or faxed with the

     notice of appeal to ensure timely filing.  The request should contain

     a certificate of mailing or transmission under 37 CFR 1.8 and be listed

     on any postcard receipt (MPEP 503).

   . No supplemental requests or arguments will be accepted.

   . The notice of appeal fee is not refundable, even in the event of a

     decision favorable to applicant.

   . A request filed after the date of receipt of the notice of appeal will

     be dismissed as untimely.

   . This procedure does not affect petitions to invoke supervisory

     authority under 37 CFR 1.181 because such petitions address procedural

     matters, not appealable, matters.

   . Panel decisions will not be petitionable because a decision to maintain

     a rejection is subject to appeal.

   . A pre-appeal brief conference panel decision that the application

     remains under appeal is not final agency action for purposes of court

     review. An applicant dissatisfied with the result of the appeal

     conference must pursue the appeal before the Board of Patent Appeals

     and Interferences.

   . This process does not apply to reexamination proceedings.

   . Following a panel review under this pilot program, the examiner retains

     the option to reopen prosecution or to allow an application after the

     filing of an appeal brief. This unlikely situation might arise, for

     example, where new arguments or evidence are presented in the appeal

     brief.

   . This pilot program will run for at least six months from its effective

     date. The Office may extend, terminate, revise or otherwise take

     appropriate action after evaluating its effectiveness at the end of

     that period.  If the program is to be made permanent, the Office will

     promulgate the appropriate changes to title 37 of the Code of Federal

     Regulations.

   Please direct inquiries with respect to a pending request for a

pre-appeal brief conference to the examiner to whom the patent application

is assigned, or the examiner's immediate supervisor. Please direct comments

and inquiries on this pilot program to Anton Fetting via email addressed

to anton.fetting@uspto.gov.  You may also contact Mr. Fetting at

(571) 272-7701.

June 20, 2005                                               JOSEPH J. ROLLA

                                                    Deputy Commissioner for

                                                  Patent Examination Policy

1 Under this pilot program, the request must be filed with the notice of

appeal.  The Office is considering, as part of a more permanent

implementation of the pre-appeal brief conference program, permitting

applicants to file the request within two months (non-extendable) of the

receipt of the notice of appeal for a fee ($130.00), in which case the

period for filing an appeal brief would simply be the two-month period set

in 37 CFR 41.37(a)(i.e., the mailing of a decision on the request would not

provide any new time period for filing the appeal brief). This procedure

would be included to encourage applicants to file the request with the

notice of appeal and thereby provide the best opportunity for the Office to

provide the decision in a timely manner.

i   Set forth in 37 CFR 41.20(b)(1)

ii  See 37 CFR 1.134

iii Set forth in 37 CFR 41.20(b)(2)

iv  37 CFR 41.33(a)

New Patents Central FAX Number and Updated Lists of Exceptions to the Centralized Delivery and Facsimile Transmission Policy for Patent Related Correspondence

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/cfax062005.pdf

New Patents Central FAX Number and Updated Lists of Exceptions to the Centralized Delivery and Facsimile Transmission Policy for Patent Related Correspondence

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/cfax062005.pdf