Anticipate This!™ | Patent and Trademark Law Blog

Testimony at “USPTO Oversight Hearing” on February 27, 2008.

Posted in General Commentary by Jake Ward on February 28, 2008

On February 27, 2008, USPTO Director Jon Dudas spoke before the U.S. House of Representatives Committee on the Judiciary in a “USPTO Oversight Hearing”.  His prepared testimony may be found here.  Others who also gave testimony include Robin Nazzaro from the U.S. General Accounting Office (GAO), Robert Budens, the President of the Patent Office Professional Association (POPA), and Alan Kasper, the First Vice President of the American Intellectual Property Law Association (AIPLA).

A USPTO press release relating to the hearing may also be found  here.

A notable quote from the testimony of Mr. Dudas follows:

Mr. Chairman, as we look to the future, we will make every effort to improve on our successful record in fiscal year 2007. Our patent examiners completed over 362,000 patent applications in 2007, the largest number over, while maintaining for the second year in a row an examination compliance rate of 96.5 percent, the highest in a quarter of a century. The allowance rate for patents is currently 44%. This is in contrast to allowance rates in excess of 70% just eight years ago.

Also, over the past few years, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.

Allowance rate of 44%?  BPAI affirming rejections 69% of the time?  A seemingly difficult time to be a patent applicant.

One has to wonder whether a dropping allowance rate is reason to celebrate.  We are admittedly biased, but does a dropping allowance rate really mean the patent system is improving?  Or does this just mean that more inventors are being denied their right to patents for their inventions?   

35 U.S.C Section 102:  A person shall be entitled to a patent unless–


They Invented What? (No. 88)

Posted in They Invented What? by Jake Ward on February 27, 2008

U.S. Pat. No. 3,398,406:  Buoyant bulletproof combat uniform.

JW Note:  I need to have a talk with my draftsperson about the quality of his drawings!  :-)




What is claimed is:

1.  An antiballistic garment comprising a body covering portion, said body covering portion having inner and outer layers, said outer layers comprising a plurality of horizontal, parallel rib members bonded along their longitudinal edges by integral flexible hinge portions of less thickness than said rib members, said rib members being of light weight semi rigid plastic material or the like, and having submicron metallic particles sintered therewith in desired proportions to make said ribs as strong and dense as solid metal, said ribs each being arcuate-shaped along its length and convex-shaped throughout its width thereby providing an undulating convexly curved outer surface and a concavely body conforming inner surface on said outer layer; said inner layer being adhered to said inner surface of said outer layer and comprising a highly flexible closed cellular plastic having pellicular walls whereby a bullet-proof, buoyant, weather proof, waterproof, corrosion-proof, shock resistant garment is provided that is also highly flexible and light in weight.

Wiki Community Patent Review Update.

Posted in Practice Commentary by Jake Ward on February 26, 2008


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. 

The Invention of the Peacemaker.

Posted in Science and Technology by Jake Ward on February 25, 2008


On this day in history in 1836, the American inventor and industrialist Samuel Colt received a patent for a “revolving gun”, of which a popular later version was nicknamed the “Peacemaker.” 

Mr. Colt had exhibited an early aptitude for mechanical innovation, and first applied for a patent on his revolver at the age of 18.  He obtained his first patent in England, and his first U.S. patent issued in 1836 as patent number 6909 (later renumbered as X9430; one of the so-called X-patents).  The X9430 patent and U.S. Pat. No. 1304 protected the basic principles of Colt’s revolving-breech loading, folding trigger firearm design.

Interestingly, Colt had once sought private legislative relief in requesting an extension on his patent because he had not profited sufficiently during the period provided by the original patent.  Colt successfully obtained a seven-year “extension” on his 1836 patent by receiving a reissue in 1848, but was unsuccessful in his legislative attempt in 1854 to further extend the life of the reissue.  Colt successfully enforced his patents in litigation, notably causing certain competitors to discontinue production. 

His revolving-breech pistol at one time became so popular that the word “Colt” was sometimes used as a generic term for the revolver.   When Samuel Colt died in 1862, his estate was estimated to be valued at around $15,000,000. 

Patent Troll Tracker Identity Revealed.

Posted in General Commentary by Jake Ward on February 24, 2008


Per this post, a fellow patent law blogger known as the “Troll Tracker” has revealed himself to be Rick Frenkel, an in-house patent attorney for Cisco Systems, Inc. in San Jose, California.  A sad day indeed, following the apparent discovery of the Troll Tracker’s identity by someone out to collect the bounty of $15,000 being offered by the Chicago firm of Niro, Scavone, Haller & Niro.

The Troll Tracker has indicated some reluctance to continue blogging.  Although we do not always agree with the Troll Tracker’s viewpoints, we are reminded of the following quotes that seems appropriate for times such as these:

The people who oppose your ideas are inevitably those who represent the established order that your ideas will upset.  

-Anthony D’Angelo.

A man may die, nations may rise and fall, but an idea lives on.  Ideas have endurance without death.

-John Fitzgerald Kennedy.

The Evolution of MPEP 2143 – Prima Facie Case of Obviousness.

Posted in General Commentary by Jake Ward on February 23, 2008


The USPTO has recently provided an online Manual of Patent Examination and Procedure (MPEP) archive containing copies of the MPEP revisions and editions from 1948 to 2006.

The most recent evolution of the obviousness standard in light of KSR Int’l Co. v. Teleflex Inc. should be of particular interest to practitioners.  The teach-suggestion-motivation (TSM) test, previously described in the MPEP as the primary criteria for establishing a prima facie case of obviousness, has been demoted to the last of at least seven (7) acceptable rationales.  Notably, the TSM criteria have even been listed underneath the previously unacceptable “obvious to try” standard.  Ouch.

Excerpts from the present MPEP (E8R6 – Sept 2007) and previous MPEP (E8R5 – Aug 2006) revisions are reproduced below.


19 and Oh, This Warms The Heart.

Posted in General Commentary by Mike Dockins on February 22, 2008

Admittedly, the tenor of this post will be somewhat jaded. After all, this author is a native Hoosier and diehard Indianapolis Colts fan. To those that follow the NFL, you already understand why the Superbowl loss of the New England Patriots warms my heart during these frigid winter months. Enough revelry and pouring of salt in wounds.

Have we mentioned before that a trademark is a source identifier?  Yes.  Here.  And here.  And here.

It is worth repeating.  A trademark is: “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.

Needless to say, we were confused and somewhat perplexed when we read this story from CNN about an attempt by the New England Patriots, through the Kraft Group, LLC, to obtain a trademark registration on the “trademarks” 19-0 PERFECT SEASON and 19-0.  If a trademark is a source identifier, and it is, what would these trademarks identify?Football entertainment services?  And how much use in commerce would the Patriots have?  After the next season or so, we would guess little to none.  We especially question whether these “marks” would be used in a trademark sense.  That is, as an adjective rather than in an ornamental fashion (see our previous post with a similar ornamentality discussion).

We were even FURTHER intrigued that Pat Riley was able to obtain trademark registrations for THREE-PEAT (and variations thereof).  At least Mr. Riley obtained the registrations in the name of his company, Riles and Company, and not in the name of the L.A. Lakers (The Lakers failed at their three-peat bid, by the way.).  If the applications had been filed in the name of the Lakers, it would have been peculiar to think the trademarks would be licensed to and used by the Chicago Bulls when the Bulls pulled of their three-peat (twice).  Can you imagine?  Chicago Bulls t-shirts, DVDs, and services associated with and identifying the L.A. Lakers as the source thereof. Chicago Bulls t-shirts, DVDs, and services associated with and identifying Riles and Company as the source thereof sounds a lot better.

We think the fans would agree.

Don’t Hassle With Our Trademarks, Hoff!

Posted in General Commentary, Practice Commentary by Mike Dockins on February 19, 2008


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, 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.