rethink(ip)

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.