Anticipate This!™ | Patent and Trademark Law Blog

Per this USPTO press release yesterday:

The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is initiating a six-month pilot program that will allow an applicant to have an interview with the patent examiner prior to the first Office action on the merits in a new utility application. The First Action Interview Pilot program will expedite prosecution of the patent application by enhancing the interaction between the applicant and the examiner, providing the applicant an opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the review process. The program will begin on April 28.

“As we have learned from our Accelerated Examination program, an interview between the applicant and examiner early in the review process can help resolve issues more quickly and expedite a final decision,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “We believe the enhanced information exchange in the First Action Interview Pilot program will offer dual benefits of reduced pendency and improved patent quality.”

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment and/or remarks.

Should the applicant choose not to have a first action interview, a First Action Interview Office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance will be issued. If agreement is not reached on all claims in regards to patentability, the applicant will be given a courtesy copy of a First Action Interview Office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, from the issue date of the First Action Interview Office action to reply, with limited extensions of time. It is this First Action Interview Office action that is considered the first action on the merits in the application.

This pilot is currently limited to two technology areas to facilitate the USPTO’s ability to gauge the success of the pilot: applications classified in Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and applications in Class 707 (data processing: database and file management or data structures).

For details regarding eligibility and criteria for participation in the pilot, see the USPTO Web site, at www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.

Defendants Jon W. Dudas and the United States Patent and Trademark Office are permanently enjoined from implementing the Final Claims and Continuations Rules.

The opinion of Judge James C. Cacheris in the Eastern District of Virginia may be found here.  The order permanently enjoining the USPTO may be found here. 

GSK and Tafas brought suit against the USPTO to permanently enjoin the USPTO from enacting the USPTO’s final claims and continuations rules.  GSK and Tafas claimed that the rules were unlawful agency action under Section 706(2) of the APA and should be declared null and void.  The USPTO argued that the Final Rules were entirely lawful and that it should be permitted to go forward and implement the rules. More details on the background and specific rules changes may be found at our previous posts here, here, here, and here.  The Patent Docs have some exceptional background on the litigation, including copies of briefs filed, here.

In a well-written opinion, Judge James C. Cacheris rested his determination on the single dispositive issue of whether the USPTO is empowered to  establish the final claims and continuations rules under 35 U.S.C. § 2(b)(2), which allows the USPTO to “establish regulations, not inconsistent with law,” to “govern the conduct of proceedings in the Office.”

Judge Cacheris first noted that, even though the APA does not define a “substantive rule,” any rule that “affect[s] individual rights and obligations” has been deemed substantive by the courts.  With this understanding, Judge Cacheris found:

Though [the new contination rule) does not completely prohibit applicants from filing more than two continuation or continuation-in-part applications, because the USPTO intends to deny additional applications in almost all circumstances, . . . the “could not have been submitted” standard of the petition and showing requirement effectively imposes a hard limit on additional applications.  (Emphasis ours).

and 

[T]he ESD requirement changes existing law and alters the rights of applicants under the current statutory scheme by shifting the examination burden away from the USPTO and onto applicants. . . .  [T]he Federal Circuit has stated that applicants have “no duty to conduct a prior art search” and “no duty to disclose art of which an applicant could have been aware. . .” .  In addition, Sections 102 and 103 provide that “[a] person shall be entitled to a patent unless” the claimed invention lacks novelty or is obvious in view of the prior art, 35 U.S.C. §§ 102 and 103, and Section 131 states that the USPTO “shall cause an examination to be made of the application”. . . . The Federal Circuit has read these provisions as placing the burden of examination and the burden of proof to make a prima facie case of unpatentability on the USPTO.

thus 

The 2+1 Rule and the 5/25 Rule, which limit continuing applications, RCEs, and claims, and the ESD requirement, which shifts the examination burden onto applicants, constitute a drastic departure from the terms of the Patent Act as they are presently understood. By so departing, the Final Rules effect changes in GSK’s and Tafas’s existing rights and obligations.

Accordingly, the Judge Cacheris held: 

Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).

Hat tip to the Patent Prospector.

The USPTO and the Australian Patent Office (IP Australia) have agreed to a trial program allowing applicants to fast-track patent applications.  Under the Patent Prosecution Highway (PPH) programs, an applicant receiving a ruling from either Patent Office that at least one claim in an application is patentable may request that the other Patent Office fast track the examination of corresponding claims in corresponding applications.  

Similar PPH programs are presently in place with the Japananese Patent Office (JPO), UK Intellectual Property Office (UKIPO), Canadian Patent Office (CIPO), and Korean Intellectual Property Office (KIPO). 

Per the press release from the Australian Patent Office:

IP Australia and the US Patent and Trademark Office (USPTO) today announced that they will launch a new trial cooperation initiative called the Patent Prosecution Highway (PPH) in April. For patent applicants with interests and applications in the US and Australia this program will result in faster patent examination times.

Under the PPH, an applicant receiving a report from either the USPTO or IP Australia with at least one patentable claim in an application may request that the other office accelerate the examination of the corresponding application. The applicant benefits from the patent offices using the work previously conducted by the other office, by obtaining corresponding patents faster and more efficiently.

“IP Australia is pleased to be taking part in the pilot program of the Patent Prosecution Highway with the USPTO,” said IP Australia’s Director General Philip Noonan. “We strongly support the aim of this initiative with its benefits of increasing quality and efficiency of examination while reducing pendency time. This service is a valuable addition to the patent examination services offered by IP Australia and provides Australian applicants with a process for fast-tracking the examination of their applications in a key market.”

“We welcome this opportunity to work cooperatively with IP Australia. This pilot represents a significant step in reaching worksharing on a global scale and extends the growing Patent Prosecution Highway network which will streamline the global patent system,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas, “By leveraging each other office’s work , this pilot allows each patent office to attain efficiency gains and higher patent quality.”

Full requirements for participation in the trial program can be found at www.uspto.gov/web/patents/pph/pph_ipau.html and www.ipaustralia.gov.au/patents/international/pph_uspto.shtml

The trial program will allow the USPTO and IP Australia to determine the interest of patent applicants in such  program. It will also provide feedback on whether the aims of the program for an increase in quality and efficiency are met. The trial period is set for one year, but may be extended for up to one year.

The USPTO is revising its procedures for handling requests to withdraw from representation by a practitioner of record in a patent application.  See the official notice here.

Under the revised procedure, the Office will no longer require that there be at least 30 days between a) approval of the request to withdraw as a practitioner of record in a patent application, and b) the later of the expiration date of a time period for reply or the expiration date of the period which can be obtained by a petition and fee for extension of time.  Instead, the Patent Office will require the practitioner to certify that he/she/they have:

(1) given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner(s) intends to withdraw from employment;

(2) delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and

(3) notified the client of any replies that may be due, and the time frame within which the client must respond.

The failure to do so may subject the practitioner to discipline. See, for example, In re Hierl where a practitioner was suspended from the practice before the USPTO for three months for performing work without approval of the client, not handing over files to a new firm as requested, and improperly continuing to represent the client following termination thereby.

The Patent Office will also no longer accept address changes to a new practitioner filed with a Request, absent the filing of a power of attorney to the new representative.  Form PTO/SB/83 will be modified to indicate that only changes to the address information provided for the assignee of the entire interest, or the address information provided for the first named inventor, will be accepted. The Patent Office hopes that this will avoid subsequent correspondence being directed to an incorrect address ,or to a practitioner who has not been appointed as practitioner of record by the applicant.

The change in practice becomes effective May 12, 2008.  Appropriate sections of the Manual of Patent Examining Procedure (MPEP) will be revised in due course.

Per the Miller Small Business IP blog: 

Is “March Madness” considered a trademark?  The short answer is yes, as decided by the United States District Court for the Northern District of Texas, Dallas Division in 2003.  There is actually a class of registered trademarks owned by the March Madness Athletic Association.  Who is that you ask?  The MMAA is actually a holding company formed by the NCAA and the Illinois High School Association.  Sound like an odd combination?  Apparently, the IHSA has used the term “March Madness” since 1939 for a state high school basketball tournamnent.  For a full history of the term as used by the IHSA, visit the History of March Madness page of the IHSA web site.  The NCAA has been using the mark for nearly 25 years.

Also see Wikipedia.

See also the Trademark Blog for further details.

The Patent Prospector has a well written post today that creatively ties the USPTO’s recent comments concerning the plummeting allowance rate to the advantages of performing a good prior art search prior to preparation of a patent application.  A highly suggested read if you have a few minutes to spare. 

Many months ago, we had posted on WikiPatents, an online community designed to review U.S. patents and published applications. WikiPatents has the largest database of patents on the Internet that are open for public comment.  The site allows PDF downloading of patents and free patent translation into multiple languages.  The public can also add prior art references for a given patent, vote on the relevancy of references, and comment on how the prior art is related.  Users may further vote on various market and technical merits of patents and patent applications.

According to sources at WikiPatents, they now have over 30,000 registered users.  One of the most successful aspects of the site has also been the community participation in patent valuation.  Also, unlike the Peer-to-Patent resource that allows review of prior art for only a few hundred patent applications, WikiPatents offers prior art, market, and technical review for tens of millions of patents and patent applications in the U.S., as well as in Germany, U.K., Japan, and Canada. 

We have had little personal experience with the WikiPatents site beyond using their search capability.  Nor have we heard whether USPTO Examiners are employing the WikiPatent site as a resource on a regular basis.  Do any of our readers have experience with the WikiPatents and/or Peer-to-Patent websites that they are willing to share?  Yours comments and thoughts are welcomed. 

Section 45 of the Lanham Act defines a trademark as: “any word, name, symbol, or device, or any combination thereof - (1) used by a person or (2) which a person has a bona fide intention to use in commerce . . . to identify and distinguish his or her goods . . . .  In essence, a trademark is a source identifier.  Any number of things may be considered a trademark, for example:

•  Smells:  Trademark Reg. No. 1,639,128 (cancelled) for “Sewing thread and embriodery yarn” having a description of “a high impact, fresh, floral fragrance reminiscent of plumeria blossoms”.
•  Colors:  Trademark Reg. No. 1,439,132 (live) for “fibrous glass residential insulation” having a description of insulation that is entirely “pink”.
•  Building designs:  Trademark Reg. No. 2,237,987 (live) for “restraurant services” having a description of “a design  for store fronts as shown” in the drawing accompanying the trademark application.
•  Sounds:  Trademark Reg. No. 916,522 (live) for “broadcasting of television programs” having a description of “a sequence of chime-like musical notes which are in the key of C and sound the notes G, E, C, the “G” being the one just below middle C, the “E” the one just above middle C, and the “C” being middle C, thereby to identify applicant’s broadcasting service”.

Given that a sound can be a trademark, why not a voice?  Think of the number of voices that most would recognize by sound alone without an accompanying face to view . . . James Earl Jones, Jerry Seinfeld, Yeardley Smith.  So why not Will Arnett?

“Will Arnett?” you ask.  Yep.  Will Arnett.  According to a recent story on Comingsoon.net, Mr. Arnett has done voice-over work for General Motors as the voice of GMC Trucks.  Mr. Arnett was also recently cast as the voice of KITT on the Knight Rider revival on NBC.  In the current incarnation of the show, originally made famous during the 1980s by David Hasselhoff, KITT is a Ford Mustang.  Ford Motor Company, as we all know, is a direct competitor of General Motors.

As the voice of GMC Trucks for the better part of a decade, consumers may associate the voice of Mr. Arnett with General Motors.  Mr. Arnett’s voice may well serve as a source identifier when heard in association with automobiles.  Therefore, it makes sense that General Motors would not want its “voice” associated with a product of its rival.  So keep your eyes (and your ears) peeled.  You never know where a trademark might pipe up.