On April 18, 2023, the U.S. Patent and Trademark Office (PTO) will begin moving away from issuing paper patents and will begin issuing patents electronically as electronic patent grants (eGrants). In addition to reducing paper waste, the PTO states that eGrants will “benefit[] stakeholders by reducing pendency and streamlining the process.”[1] According to the PTO, … Continue Reading
As part of the Trademark Modernization Act of 2020 (reported in the IP Intelligence Blog on Dec. 23, 2021), beginning on Dec. 3, trademark applicants will have three months (with a possible three-month extension) to respond to office actions issued during the examination of trademark applications at the United States Patent and Trademark Office (USPTO). … Continue Reading
Effective March 29, 2022, the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will accept a new combined petition option to participate in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is currently active through Oct. 31, 2022, with each intellectual … Continue Reading
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
Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks – from the Registry and are now available for use. A summary of the changes follows:… Continue Reading
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
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
I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult to decide whether or not to move forward with their invention ideas. As my friend … Continue Reading
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
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
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
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
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
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
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
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
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
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
Under the authority granted by the Coronavirus Aid, Relief, and Economic Security (CARES) Act, on March 31, 2020, the United States Patent and Trademark Office (USPTO) originally extended certain patent due dates falling between March 27, 2020, and April 30, 2020, by 30 days as long as a statement indicating that the delay was due … Continue Reading
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
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
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
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
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