Anticipate This!™ | Patent and Trademark Law Blog

USPTO Seeks Practitioners to Test Online Continuing Education System.

Posted in General Commentary by Jake Ward on August 25, 2008

Per this recent USPTO press release:

The USPTO is developing a Continuing Education for Practitioners (“CEP”) system for on-line delivery of educational materials to patent practitioners, and is seeking help in piloting the on-line system. The CEP system is built on the recognition that a smoothly operating patent system requires well-qualified USPTO personnel working hand-in-hand with up-to-date patent practitioners. The goal is to increase efficiency, reduce pendency, and improve quality in the patent process. Additional information concerning the CEP system and the pilot test is provided below.

The CEP System
The CEP program would present brief educational materials concerning recent USPTO rule changes, revised patent examination guidelines, or the like. The practitioner would respond to one or more verification questions or prompts after reviewing the educational materials. The verification questions will be drawn directly from the training material and the practitioner will have ready access to the educational material while responding to the verification questions. In other words, the verification questions are designed to verify the practitioner has reviewed the materials; they are not a test of knowledge or skills.

The total time spent reviewing the educational materials and responding to verification questions should be approximately one hour. Practitioners would be required to complete one CEP program per year. As envisioned, the system would automatically notify practitioners of the training requirements, send appropriate reminder notices, and track completion. No fee will be charged to access the training materials; a fee would accrue only for failing to timely complete the training.

Pilot Testing of the CEP System
The USPTO is set to begin a pilot test of an on-line learning management system (“LMS”) designed to deliver educational materials to CEP participants. Up to 1000 registered practitioners are sought to help evaluate the LMS and provide feedback concerning the system’s ease of use and the usefulness of the educational materials. All pilot participants will be volunteers. The pilot test will not affect the registration status of any practitioner on the official roster of patent attorneys and agents.

Each pilot participant will receive a notice informing him/her of a CEP course requirement and identifying a CEP information website. The initial notice will specify the pilot CEP course deadline. Separate notices will provide a username and password. Pilot participants can then sign on using the assigned username and password. A link to the educational materials is provided once the registered practitioner is signed on. As noted previously, a practitioner should be able to complete the pilot CEP course in approximately one hour. In addition to completing the pilot CEP course, pilot volunteers would be asked to provide feedback as to the CEP system’s ease-of-use and the substantive value of the educational materials. Pilot participants will be required to complete only one course; however additional courses will be available for review. Participants in the pilot program will be deemed to have satisfied the first year’s requirement for CEP at such time as the USPTO makes CEP a requirement.

What is the Expected Timing of the Pilot CEP Course?
The pilot CEP course is expected to launch in late August 2008. The initial pilot CEP course deadline should be approximately three weeks after the initial launch, and the extended training deadline will be one week after the initial CEP course deadline. Due to the shortened time frame, pilot volunteers will receive all notices and reminders by e-mail.

Practitioners may volunteer for the program by sending an e-mail to OEDonline@uspto.gov.

They Invented What? (No. 110)

Posted in They Invented What? by Jake Ward on August 20, 2008

U.S. Pat. No. 4,411,156:  Odor testing apparatus.

 

What is claimed is:

1. A structure for testing small animal litter, comprising a plurality of animal confinement compartments in which the animals live and consummate their daily functions and in which litter for animal waste is placed for use by the animals, a compartment for enclosing a person testing the odors of the litter in particular animal compartments, port means near the bottom of each animal compartment, separate air flow conduits connecting said port means with the odor tester compartment for drawing air from the lower portion of the animal compartment into the tester compartment, a valve means for controlling each of said conduits, a fan for creating a flow of air from said animal compartments through selected port means and conduits and into said tester compartment, and an access door through which a tester can enter the tester compartment without passing through an animal compartment.

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Final Rules Limiting Scope of Patent Agent Representation.

Posted in Practice Commentary by Jake Ward on August 15, 2008

Per this Federal Register notice promulgated on August 14th, Rule § 11.5 detailing what constitutes acceptable practice before the USPTO has been revised to read as follows:

§ 11.5 Register of attorneys and agents in patent matters; practice before the Office.
          (a)  A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants having prospective or immediate business before the Office in the preparation and prosecution of patent applications. Registration in the Office under the provisions of this part shall entitle the individuals so registered to practice before the Office only in patent matters.
          (b)  Practice before the Office. Practice before the Office includes, but is not limited to, law-related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees relating to a client’s rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent or registration of a trademark, or for enrollment or disciplinary matters. Such presentations include preparing necessary documents in contemplation of filing the documents with the Office, corresponding and communicating with the Office, and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the Office. Nothing in this section proscribes a practitioner from employing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitioner in matters pending or contemplated to be presented before the Office.
                   (1)  Practice before the Office in patent matters. Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Board of Patent Appeals and Interferences, or other proceeding. Registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate. The services include:
                   (i)  Considering the advisability of relying upon alternative forms of protection which may be available under state law, and
                  (ii)  Drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, where the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and when drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.
                   (2)  Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an application for trademark registration; preparing an amendment which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.

As originally stated in the U.S. Supreme Court opinion of Sperry v. Florida (1963), patent agents and out-of-state patent attorneys may perform tasks which are “incident to the preparation and prosecution of patent applications before the Patent Office.”  § 11.5(b)(1) at first reiterates this standard by providing that “registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent in which the practitioner is authorized to participate.”

Under the revised Rule § 11.5, the preparation of a patent assignment has been clarified as acceptable, under the following (and typical) circumstances:

The services are identified as including considering the advisability of relying upon alternative forms of protection which may be available under statute law, and drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, or the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and in drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.

However, the new Rule § 11.5 cuts much deeper, providing that validity opinions are only authorized under very limited circumstances, and that infringement opinions are under no circumstances included within the scope of an agent’s practice before the USPTO.

The suggestion to define practice before the Office as rendering opinions on validity and infringement for clients has not been adopted. Whether a validity opinion involves practice before the Office depends on the circumstances in which the opinion is sought and furnished. For example, an opinion of the validity of another party’s patent when the client is contemplating litigation and not seeking reexamination of the other party’s patent could not be reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent. In such situations, the opinion may constitute unauthorized practice of law.

In no circumstance would practice before the Office include the rendering of opinions on infringement. Under the law, the Office has no authority to resolve infringement cases. Thus, registration to practice before the Office in patent cases does not include authority to render infringement opinions.

They Invented What? (No. 109)

Posted in They Invented What? by Jake Ward on August 14, 2008

U.S. Pat. No. 4,346,899:  Board game featuring olympic sports.

 

What is claimed is:

1. An olympic sports game apparatus with elements of chance and tests of individual skill, for competitive play by a plurality of individuals, said game apparatus having
         a playing board,
         a closed primary playing course, for use by all players, at the periphery of said playing board, said primary course divided into a succession of contigious playing spaces that are inscribed with randomly unique information granting awards, imposing penalties, providing sanctuaries, and instructing game play,
         a plurality of distinctively marked secondary playing courses for individual and challenged play thereon, said secondary courses arranged upon a central area of said playing board, each said secondary playing course featuring a major classification of related olympic sports, each said secondary playing course being divided into a randomly oriented succession of numbered contigious playing spaces wherein said numbered playing spaces are inscribed with randomly varying informations granting awards, imposing penalties, and instructing secondary course game play,
         a combination of means for regulating movements of said players upon said primary and said secondary courses for play, and
         means for displaying, upon said primary and said secondary courses, the positions of each said player during all turns at play,
         wherein the improvement comprises:  (a). a first combination of chance and skill apparatus for regulating play upon said primary course, said first combination further comprising printed instructions for game play randomly distributed among said playing spaces of said primary course, a die for providing a further element of chance, and a spinner for providing a test of said players’ individual skills; (b). a second combination of chance and skill apparatus for regulating play upon said plurality of secondary course, said second combination further comprising at least one of said numbered spaces of said secondary courses having instructions for play thereon, a deck of special cards for assigning points and for specifying player movements, a plurality of decks of event cards, a deck thereof distinctively marked to correspond to each secondary course, said event cards for identifying specific olympic games to be played and for setting winning point values, and a spinner for a test of said players’ individual skills; and (c). a plurality of two-part playing pieces for displaying player’ positions upon said primary and said secondary courses, during turns at play, each said two-part playing piece uniquely colored so as to idenfify its assigned player, said two-part playing piece for use as a combined entity to mark player position, during play, on said primary course, said two-part playing piece for use, during intervals of game play on said secondary courses, as separated entities, firstly, to mark said player’s last position on said primary course, and secondly, to mark said player’s then current progress on said secondary course, a first part of said two-part playing piece being a pedestal, and a second part of said two-part piece being an artistic sports figurine, said pedestal and said figurine having bonding means for temporary assembly by said player of said combined entity.

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They Invented What? (No. 108)

Posted in They Invented What? by Jake Ward on August 7, 2008

U.S. Pat. No. 6,101,747: Athletic shoe having basketball hoop.

What is claimed is:

1. An athletic shoe assembly comprising
          an athletic shoe having a heel forming a back exterior surface,
          a miniature basketball backboard, means for affixing said backboard to said back exterior surface,
          a circular rim being affixed to the miniature basketball backboard, and
          a net hanging from said rim for allowing thrown objects to pass through.

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