Archives: USPTO

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Actual Use, Not Preparations For Use, Of A Service Mark Is Necessary For The USPTO To Register It

Photo of Robert HorowitzBy Robert Horowitz on Posted in Service Mark, USPTO
If you desire to register a service mark asserting use that is preparatory for the rendering of your services, your application will fail in the U.S. Patent and Trademark Office (USPTO). Instead, the services must be actually rendered in connection with the mark for a registration to be granted. In In re Alessandra Suuberg, SN … Continue Reading

USPTO Sanctions Chinese Law Firm for Fraud and Terminates More Than 15,000 US Trademark Applications

Photo of Lisa Bollinger GehmanBy Lisa Bollinger Gehman on Posted in Trademark, USPTO, USPTO Litigation
On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme … Continue Reading

Thinking of Registering a Service Mark That Primarily Benefits Your Company? Think Again

Photo of Robert HorowitzBy Robert Horowitz on Posted in Trademark, USPTO, USPTO Litigation
If you are contemplating registering a service mark that primarily benefits your company and not others, don’t bother; it will be refused registration. This issue was recently addressed by the Trademark Trial and Appeal Board (TTAB) in In re California Highway Patrol, SN 88796327 (TTAB Nov. 4, 2021) [not precedential] (CHiP). In CHiP, the TTAB … Continue Reading

Courts Rule That AI Inventorship Can Rust in Peace

Photo of Alaina J. LakawiczBy Alaina J. Lakawicz on Posted in Federal Circuit, Patent, Patents, USPTO
On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer” is no. The Patent Applications Plaintiff Stephen Thaler, Ph.D., is the owner of a Device … Continue Reading

Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

Photo of Kevin WallacePhoto of Nancy R. FrandsenBy Kevin Wallace and Nancy R. Frandsen on Posted in Music Industry, Patent, Patents, Trademark, USPTO
On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of … Continue Reading

No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

Photo of Scott SkilesBy Scott Skiles on Posted in Federal Circuit, Patents, Trademark, USPTO
This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading

A Brief Overview of the USPTO’s Interim Procedures Implementing Arthrex

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that … Continue Reading

Tips for Benefitting from a U.S. Trademark Examiner’s Amendment

Photo of Deborah A. WilcoxPhoto of Gabrial MitchellBy Deborah A. Wilcox and Gabrial Mitchell on Posted in USPTO
Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners, even though the window of opportunity is usually quite short. Notably, prosecution will proceed much more quickly if applicants can take … Continue Reading

USPTO Provides Guidance in View of ‘Booking.com’

Photo of Yeshesvini ChandarPhoto of Nancy R. FrandsenPhoto of Lesley GrossbergBy Yeshesvini Chandar, Nancy R. Frandsen and Lesley Grossberg on Posted in Trademark, USPTO
On June 30, 2020, the Supreme Court of the United States decided USPTO v. Booking.com B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] Booking.com arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the … Continue Reading

The USPTO Harmonizes the Indefiniteness Standard Used for AIA Trials Making it More Difficult to Find a Claim Indefinite

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for AIA trials. The PTAB must now use the indefiniteness test set forth by the Supreme Court … Continue Reading

Strategic Considerations for Participation in the USPTO’s COVID-19 Deferred-Fee Provisional Application Pilot

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
On Sept. 17, the United Patent and Trademark Office (USPTO) issued a notice implementing a deferred-fee provisional application pilot program for COVID-19-related technologies. The pilot is designed “[t]o disseminate information designed to combat COVID-19 on a more expedited basis while still securing rights for inventors.” I. Fundamentals of the Pilot Program Participation is limited to … Continue Reading

USPTO Grants Additional COVID-19-Related Relief to Patent Applicants

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
On June 29, 2020, the United States Patent and Trademark Office (USPTO) issued another notice under the authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act to grant COVID-19-related relief to patent applicants. In issuing the notice, the USPTO recognized that some stakeholders, in particular small businesses and individuals, will require additional … Continue Reading

USPTO Grants Relief for Patent Applicants Who Failed to Timely File Patent Applications Due to the COVID-19 Outbreak

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) has again exercised its authority under the Coronavirus Aid, Relief, and Economic Security Act to grant patent applicants additional COVID-19 outbreak-related relief. In addition to the prior actions taken to help patent applicants, the USPTO has issued a notice granting relief also to applicants seeking to restore … Continue Reading

Key UPSTO Initiatives to Ease Burden On Patent Owners and Patent Applicants During the COVID-19 Outbreak

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has tried to ease the burden on patent owners and applicants. The key USPTO initiatives are summarized below. I. Waiver of paper filing requirements for plant patent applications and related correspondence Normally, the USPTO does not allow the electronic filing of plant patent … Continue Reading

A Brief Summary of the Key USPTO Initiatives to Speed Up Development of Treatments for COVID-19

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has implemented initiatives designed to expedite the grant of patents directed to COVID-19 treatment or to expedite the licensing/commercializing of patents/published patent applications directed to COVID-19 treatments. The key USPTO initiatives are summarized below. I. COVID-19 Prioritized Examination Pilot Program for small and … Continue Reading

US Patent and Trademark Office Issues FAQ on Temporary Extension of Due Date in Patent and Trademark Matters Authorized by CARES Act

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
As previously noted, on March 31, the US Patent and Trademark Office (USPTO) used its authority granted under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend by 30 days due dates for certain patent and trademark matters having an original due date between March 27 and April 30. The USPTO now has … Continue Reading

US Patent and Trademark Office Uses Authority Granted Under CARES Act to Temporarily Extend Due Date for Certain Patent and Trademark Matters

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The Coronavirus Aid, Relief, and Economic Security (CARES) Act gives the director of the U.S. Patent and Trademark Office (USPTO) the ability to manage due dates in patent and trademark matters if certain criteria are met. On March 31, the director of the USPTO issued a notice of waiver of patent-related timing deadlines (patent notice) … Continue Reading

The Coronavirus Aid, Relief, and Economic Security Act Grants the US Patent and Trademark Office the Authority to Manage Statutory Due Dates

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
As described in our previous alert, earlier this week the U.S. Patent and Trademark Office (USPTO) issued a notice waiving certain petition fees. In the notice, the USPTO cautioned that “[t]his notice does not grant waivers or extensions of dates or requirements set by statute.” The Coronavirus Aid, Relief, and Economic Security (CARES) Act, H.R. … Continue Reading

USPTO Waives Petition to Revive Fees for Patents, Patent Applications, Trademarks and Trademark Applications Abandoned Because of an Inability to Respond Due to COVID-19

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in Patents, Trademark, USPTO
To give patent and trademark applicants as well as patent and trademark owners relief from the implications of the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) determined that the COVID-19 outbreak qualifies as an “extraordinary situation” and exercised its authority to waive certain petition fees. For patent owners and applicants unable to … Continue Reading

USPTO Tightens Unintentional Delay Standards for Certain Petitions to Revive, Acceptances of Delayed Maintenance Fee Payments, and Delayed Priority or Benefit Claims

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) allows for the revival of abandoned applications, acceptance of delayed maintenance fee payments, and acceptance of delayed priority or benefit claims by the filing of a petition.[1] Abandoned applications can be revived only if the abandonment was “unintentional.”[2] Delayed maintenance fee payments and priority or benefit claims … Continue Reading

PTAB by the numbers: A closer look at the most recent PTAB AIA trial statistics

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) recently posted the Patent Trial and Appeal Board (PTAB) statistics for December 2019 (first quarter of FY2020).[1]  Despite some inconsistences in the data, the statistics reveal some trends: Inter partes reviews (IPRs) remain the most common type of America Invents Act (AIA) trial. Life science/chemical patents and … Continue Reading
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