USPTO News

March 30, 2015

U.S. Commerce Secretary Penny Pritzker Announces Russell Slifer as Deputy Director of the U.S. Patent and Trademark Office

On Wednesday, U.S. Secretary of Commerce Penny Pritzker announced the appointment of Russell Slifer as the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (“USPTO”). Slifer left his role as the Director of the USPTO’s Rocky Mountain Regional Office in Denver. He began his new duties at USPTO headquarters in Alexandria, VA, on the day of the announcement.

While Director of the USPTO’s Denver office, which opened on June 30, 2014, Slifer served as the agency’s primary liaison with the innovation community in the Rocky Mountain Region. He was actively engaged in education and outreach initiatives, empowering the USPTO to develop programs, policies, and procedures to meet the needs of the Rocky Mountain West innovation community.

“Russell has an impressive track record of success across several disciplines and will be a tremendous asset to the USPTO,” said Secretary Pritzker. “His leadership will be instrumental in the USPTO’s efforts to foster economic growth and promote American innovation by reducing the patent application backlog and enhancing patent and trademark quality. I look forward to working with Russell in his new role, along with Director Lee and the rest of the USPTO team.”

February 20, 2015

United States Deposits Instrument of Ratification to Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) recently announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) with the World Intellectual Property Organization (“WIPO”) in Geneva, Switzerland. This marks the last step in the membership process for the United States to become a Member of the Hague Union. The treaty will go into effect for the United States on May 13, 2015.

Currently, U.S. applicants wishing to pursue protection for industrial designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions where industrial design rights are desired. When the Hague Agreement enters into force for the United States, it will be possible for U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies. The Hague system for the protection of industrial designs provides a practical solution for registering up to 100 designs in over 62 territories with the filing of one single international application.

“U.S. accession to the Geneva Act of the Hague Agreement will provide applicants with the opportunity for improved efficiencies and cost savings in protecting their innovative designs in the global economy,” said Deputy Under Secretary for Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “We are extremely excited about joining the Hague Union and contributing to the continued expansion and development of the Hague system which facilitates protection of industrial designs in design registration and examination systems alike.”

February 12, 2015

USPTO to Host First-Ever Summit on Patent Quality

By Overhauser Law Offices, LLC

Alexandria, Virginia – A two-day event to be held by the U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) will include patent-quality discussions among USPTO leadership as well as experts from industry, academia, and the public.

The USPTO will host this public meeting on Wednesday, March 25 and Thursday, March 26, 2015 at the USPTO headquarters in Alexandria, Virginia. The Quality Summit will encourage robust discussions among USPTO leadership; patent prosecutors, litigators, applicants and licensees; and other members of the public interested in USPTO’s efforts to further improve patent quality through its Enhanced Patent Quality Initiative.

The USPTO is seeking public input and guidance to direct its continued efforts towards enhancing patent quality. These efforts focus on improving patent operations and procedures to provide the best possible work products, to enhance the customer experience, and to improve existing quality metrics. USPTO has already set in motion several quality initiatives, including robust technical and legal training for patent examiners, as well as a Glossary Pilot, Quick Patent IDS Program, First Action Interview Pilot, and After Final Consideration Pilot. The two-day Quality Summit is one of many ways the USPTO is engaging with the public on this important effort.

January 22, 2015

Trademark Law: Update of Trademark Manual of Examining Procedure

By Overhauser Law Offices, LLC

On January 17, 2015, the United States Patent and Trademark Office issued the January 2015 Trademark Manual of Examining Procedure (“TMEP”), which incorporates changes made in accordance with the following rules:

• Renaming of Express Mail® to Priority Mail Express®, published October 22, 2014 at 79 FR 63036;

• Reduction of Fees for Trademark Applications and Renewals, published December 16, 2014 at 79 FR 74633; and

January 14, 2015

Trademark Law: TTAB to Hold External Stakeholder Forum

By Overhauser Law Offices, LLC

Alexandria, Virgina – The Trademark Trial and Appeal Board (“TTAB”) will host an external stakeholder forum (please see below) on January 29, 2015, from 1 to 3 pm, to discuss issues related to its e-filing system or ESTTA (Electronic System for Trademark Trials and Appeals).

The United States Patent and Trademark Office (“USPTO”) is in the process of redesigning its IT systems to take advantage of new technology that will allow end-to-end electronic processing of trademark matters. The new system, known as Trademark Next Generation (“TMNG”), will significantly increase the functionality and flexibility of the USPTO’s systems, including those used by TTAB, but the TTAB-related aspects of TMNG, particularly for trial cases, will deploy later than those related to examination and appeals. In the interim, TTAB is considering potential updates to ESTTA that it considers crucial to its stakeholders. The goal of the forum is to gain stakeholder input as to capabilities considered to be critical, both for the purpose of enhancing ESTTA functionality in the near term and to assist TTAB in planning for the aspects of TMNG that will impact TTAB.

Some areas that TTAB has identified for discussion are:Difficulties encountered with attachments to filings, both in terms of pre-filing review and resolution of images in the Trademark Trial and Appeal Board Inquiry System (“TTABVUE”) following submission.

• Expansion of list of grounds on the ESTTA cover page for purposes of initiating opposition and cancellation proceedings.

• Modification of the consent motion form to allow filers to control resetting of dates that have not yet lapsed.

• Implementation of a “saved” feature (similar to the one available in the Trademark Electronic Application System) that will allow more than one author to contribute to the filing before submission.

This is only a preliminary list of topics for discussion and the TTAB welcomes any additional suggestions or issues that its stakeholders wish to explore.

The forum will be open to anyone who wishes to attend in person and also will be available in webinar format. The TTAB asks that you register your intent to attend by sending an e-mail with your contact information to TTABRSVP@uspto.gov. Please indicate whether you intend to attend in person or via the web.

Webinar instructions are available here. Additional information is available on the TTAB’s webpage.

December 4, 2014

USPTO Roundtable: Ensuring the Accuracy and Integrity of the Trademark Register

By Overhauser Law Offices, LLC

Alexandria, Virginia – As part of the Trademark Operation’s continuing series of roundtable discussions to gather stakeholder views on important issues, the United States Patent and Trademark Office (“USPTO”) will be holding a roundtable discussion of suggestions for ensuring the accuracy and integrity of the trademark register on Friday, December 12, 2014 from 2 – 3 p.m. in the Paris Room of the Global Intellectual Property Academy at the USPTO main campus, located at 600 Dulany Street, Alexandria, Virginia 22314.

Part of the discussion will focus on data compiled through October 15, 2014 from the USPTO’s pilot program to assess the accuracy and integrity of the trademark register as to the actual use of marks with the goods and/or services identified in the registrations. The session will be open to the public for attendance in person or by webcast.

The full announcement is available here.

November 13, 2014

USPTO to Offer Webcast of First Cybersecurity Partnership Meeting

By Overhauser Law Offices, LLC

WASHINGTON, D.C. – The USPTO will offer a forum, presented both on-site and webcast, for stakeholders seeking patent protection in the cybersecurity and network-security sectors.

The U.S. Department of Commerce‘s United States Patent and Trademark Office (“USPTO”) will host its first Cybersecurity Partnership Meeting tomorrow, Friday, November 14, 2014, in Menlo Park, California. The meeting will serve as a collaborative forum for stakeholders seeking patent protection in the cybersecurity and network security sectors to share ideas, experiences, and insights with USPTO staff.

For this inaugural event, the USPTO has partnered with the National Institute of Standards and Technology (“NIST”), whose experts will present information on their voluntary Framework for Improving Critical Infrastructure Cybersecurity. The Framework, created through collaboration between industry and government, consists of standards, guidelines, and practices to promote the protection of critical infrastructure. USPTO staff will also discuss cybersecurity patent initiatives, key computer security patent application statistics, and examination guidelines for patent eligible subject matter following the Alice Corp. v. CLS Bank Supreme Court decision. In addition to the presentations from NIST and the USPTO, several key stakeholders will present their views on topics focusing on the intersection of intellectual property and cybersecurity.

October 24, 2014

USPTO and the State Intellectual Property Office of China Launch Direct Electronic Priority Document Exchange

By Overhauser Law Offices, LLC

Washington, D.C. – New free, secure service simplifies patent application procedures.

The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) and the State Intellectual Property Office of China (“SIPO”) recently launched a new free service that will allow the two offices to electronically exchange patent application priority documents directly. This new service will help streamline the patent application process and reduce costs for businesses, which are increasingly pursuing patent rights globally.

The new service will allow the USPTO and the SIPO, 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. With this new service, applicants will no longer need to obtain and file paper copies of the priority documents; however, they are still responsible for ensuring that priority documents are provided in a timely manner.

October 10, 2014

Trademark Update: eTAS Enhancements

By Overhauser Law Offices, LLC

The following improvements were made by the United States Patent and Trademark Office to the Electronic Trademark Assignment System (“eTAS”) during fiscal year 2014. These enhancements are designed to facilitate filing and recording assignments with the Assignment Recordation Branch.

NEW CONVEYANCE TYPES: Added three new Conveyance Types to improve database specificity and reduce the need to file two documents in the case of a merger involving a name change:

Merger and Change of Name” allows customers to select both conveyance types in a single submission
Entity Conversion
Court Order

ORDER OF RECORDATION: Added a method for customers to designate the order of recordation for multiple, related assignment submissions.

PHONE COMMUNICATION: Introduced new service in which the USPTO will contact customers by phone: (1) to resolve recordation issues rather than issuing a Non-Recordation Notice, and (2) to help identify potential typographical errors that might result in the filer having to file a subsequent corrective assignment.

ELECTRONIC RESUBMISSION: Added electronic resubmission capability allowing customers who receive a Non-Recordation Notice to resubmit the corrected paperwork electronically.

COUNTRY CODES: Updated and reordered country codes in the eTAS (1) to be consistent with other USPTO systems such as the Trademark Electronic Application System and (2) to enable the USPTO to add and delete countries from the list.

SPECIAL CHARACTERS: Added the ability for customers to enter special characters in the name fields in eTAS. For example, customers may now enter a corporation called XYZ*, Inc. as a name.

NOTICE DELIVERY: Instituted delivery of recordation notices via three methods in succession: (1) first attempt is via email, (2) if email is unsuccessful, then send via fax and, (3) if fax is unsuccessful, then send via postal mail.

VERIFICATION: Added a statement to the validation page requiring a filer to verify that he/she is aware that the unauthorized use of eTAS is a misrepresentation to the federal government, is prohibited and is subject to criminal and civil penalties. This change was made in an attempt to prevent the filing of false transfers against another’s property.

October 9, 2014

USPTO Seeks Public Input Regarding Cybersecurity

By Overhauser Law Offices, LLC

The facts are alarming: the cybersecurity threat to the U.S. – and the world – is real and growing. The Economist Magazine reported early this year that one security firm estimated that cybercrime costs the world $113 billion per year and affects 378 million people, while a research institute estimated that malicious cyber-attacks in 2012 cost U.S. companies $277 for each customer’s or user’s account put at risk.

To combat the threat, the United States Patent and Trademark Office (“USPTO”) and National Institute of Standards and Technology (“NIST”) have teamed up to explore viable cybersecurity solutions and are asking for help from the public.

NIST’s Request for Information is accessible at: https://federalregister.gov/a/2014-20315. The 45-day comment period ends October 10, 2014. All RFI responses should be submitted to cyberframework@nist.gov and will be posted on NIST’s website.