Tag Archives: USPTO

USPTO Report on Patent Eligible Subject Matter

By Michael Stein on Posted in Patent
  On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of patent eligible subject matter. The report includes a section reviewing the historical development of patent subject matter eligibility in the … Continue Reading

“All Expenses Paid” Is No Trip to the E.D. Va. for Patent and Trademark Applicants

BakerHostetlerBy BakerHostetler on Posted in Patent, USPTO Litigation
Authored by: Kristie Butler, Summer Associate On June 23, 2017, the Federal Circuit confirmed in Nantkwest, Inc. v. Matal (No. 2016-1794) that patent applicants facing rejection from the Patent Trial and Appeal Board (PTAB) may seek relief in the Eastern District of Virginia under 35 U.S.C. §145, but ruled that these litigants must pay the … Continue Reading

Living it up at the HOTEL CALIFORNIA

By Thomas Hartin on Posted in Trademark
Legendary rock band Eagles, Ltd. (The Eagles), filed suit on May 1 against the owners of the Hotel California Baja LLC in the U.S. District Court for the Central District of California. The suit alleges trademark infringement and common law unfair competition by the owners, Debbie and John Stewart (owners). The hotel originally opened in … Continue Reading

Proof of Life: USPTO Ushers in New Audit Power for Proof-of-Use

By Margaret Abernathy on Posted in Trademark
Effective earlier this year, recently amended 37 C.F.R. §§ 2.161(h) and 7.37(h) empower the USPTO to require a registrant to submit additional documentation as “reasonably necessary” to prove use of the mark in connection with each and every good or service identified in the registration.  This is to ensure that the register “accurately reflects marks … Continue Reading

New TTAB Rules of Practice

By Jessica Watkins on Posted in Trademark
On Jan. 14, 2017, the Trademark Trial and Appeal Board (TTAB) Rules of Practice were amended in what the United States Patent and Trademark Office described as an effort “to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings.” The first such amendment in roughly nine years, … Continue Reading

USPTO Releases Next Iteration of Examiner Guidance on Patent Subject Matter Eligibility

By Michael Stein on Posted in Patent, USPTO Litigation
On May 5, 2016, the USPTO released an update to its examiner guidance on patent subject matter eligibility. The update includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicants’ replies, an index of eligibility examples, and an … Continue Reading

Patent Office Updates Rules for Post-Grant Proceeding Duty of Candor

By Joshua Branson on Posted in Patent
The United States Patent and Trademark Office recently amended 37 C.F.R. § 42.11 to include a certification requirement similar to that of Rule 11. Section 42.11 prescribes the duty of candor owed to the Patent Office. As noted in the Federal Register, the Office sees the new rule as preventative in nature. Despite comments expressing … Continue Reading

The USPTO Global Dossier Service Is Scheduled to Go Live in Mid-November

Laura GordonBy Laura Gordon on Posted in Uncategorized
The Global Dossier is a project stemming from a collaboration between the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the United States Patent and Trademark Office (USPTO) (collectively, the IP5 Offices). As envisioned by … Continue Reading

USPTO Pilot Program: Trademark Registrations May Now Be Broadened To Account For Evolving Technology

Kevin BovardBy Kevin Bovard on Posted in Uncategorized
Trademark Office rules generally prohibit the broadening of goods and services identified in existing trademark registrations. But on September 1, the USPTO announced a new pilot program that will create a limited exception to this rule. Beginning September 1, trademark owners may now petition to broaden their registrations’ identified goods and services where such changes … Continue Reading

Attorney Fees for Post-Grant Patent Challenge Proceedings Before the USPTO May Be Recoverable in Exceptional Cases Under 35 U.S.C. § 285

By Hans Smith on Posted in Uncategorized
Parties accused of patent infringement are turning more and more to post-grant challenge proceedings at the United States Patent and Trademark Office (“USPTO”) as a faster and cheaper means for invalidating the asserted claims. A recent federal district court order indicates that the fees and costs associated with such proceedings may be recoverable if the … Continue Reading

USPTO Updates Guidance on Subject Matter Eligibility

By Michael Stein on Posted in Uncategorized
[For background, see our prior posts on July 2, 2014, August 5, 2014, December 18, 2014, and March 23, 2015.] On July 30, 2015, the United States Patent & Trademark Office (USPTO) published an update to its 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG) published on December 16, 2014.[1] Comments to the 2014 … Continue Reading

USPTO Urged to Revise Interim §101 Guidance to Require Examiners to Present a Proper Prima Facie Case Supported by Factual Evidence

By Michael Stein on Posted in Uncategorized
As previously reported, on December 15, 2014, the U.S. Patent and Trademark Office (USPTO) published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). This Interim Guidance was published as a notice for comments with the possibility of being revised, depending on public feedback. On March 16, 2015, two of the … Continue Reading

Use of Service Marks in Commerce: Making Good on Your Promises

By Kimberly M. Maynard on Posted in Uncategorized
In order to register a service mark—a trademark used to promote and sell services, as opposed to goods—with the United States Patent and Trademark Office (USPTO), the owner of the service mark must be using the mark in interstate commerce. A service mark is “used in commerce” when “it is used or displayed in the … Continue Reading

USPTO Announces New Lower Fee Schedule for Trademark Applications

By Farah Bhatti on Posted in Uncategorized
On January 17, 2015, the United States Trademark Office implemented a reduced fee schedule for newly filed applications. The Trademark Office has introduced an additional category of applications called the TEAS Reduced Fee, or TEAS RF, application. Previously, the Trademark Office allowed applicants to file only two types of applications: TEAS PLUS or a regular TEAS application. … Continue Reading

USPTO Issues “2014 Interim Guidance on Patent Subject Matter Eligibility”

By Michael Stein on Posted in Uncategorized
On December 15, 2014, the USPTO published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). The new Interim Guidance follows the previous preliminary examination instructions issued on June 25, 2014, in view of CLS v. Alice (2014), and was published as a notice for comments and may therefore be updated … Continue Reading

Don’t Miss the Window for Post-Grant Review: Monitor Your Competitors by Creating Alert Systems

By Harold Fullmer, Han Gim and Alaina Renz on Posted in Uncategorized
The U.S. Patent and Trademark Office has new and popular procedures for challenging the validity of (in other words, killing) a competitor’s patent. The most powerful procedure, a Post-Grant Review (PGR), must be filed within nine months of the grant or “issue date” of any patent with a priority date of March 16, 2013, or … Continue Reading

Public Comments to USPTO’s Preliminary Examination Instructions in View of Supreme Court Decision in Alice Case

By Michael Stein on Posted in Uncategorized
As reported here last month, the USPTO recently issued a memorandum to the Examination Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” The memorandum provides preliminary instructions to the Patent Examining Corps relating to subject matter eligibility of claims involving … Continue Reading

USPTO Issues “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.”

By Michael Stein on Posted in Uncategorized
On June 25, 2014, the USPTO issued a memorandum to the Examination Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” This memorandum provides preliminary instructions, effective June 25, 2014, to the Patent Examining Corps relating to subject matter eligibility of … Continue Reading
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