USPTO News

March 28, 2014

USPTO to Host Roundtables on AIA Trial Proceedings in Eight Cities Nationwide

Alexandria, Virginia – Administrative Patent Judges will share information and collect public input about inter partes review and covered business method review proceedings.

usmap picture.jpg Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) announced this week that it will host a series of roundtables across the country to educate the public and collect feedback about the America Invents Act (“AIA”) trial proceedings. The series will begin on April 15 and run until May 8, 2014, with roundtables in Alexandria, VA; New York City; Chicago; Detroit; Silicon Valley; Seattle; Dallas; and Denver. The roundtables provide an opportunity to bring stakeholders together with USPTO administrative patent judges to discuss the inter partes review and covered business method review proceedings.

“These roundtables are a part of USPTO’s ongoing efforts to provide more opportunities for the public and other key stakeholders to share ideas, feedback, experiences and insights on additional ways we can improve our processes,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee.

March 21, 2014

USPTO to Host Additive Manufacturing Partnership Meeting

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) will host a meeting to serve as a forum for sharing ideas and insights between stakeholders and the USPTO.

The Additive Manufacturing Partnership Meeting will take place on Wednesday, April 9, 2014 at the USPTO headquarters in Alexandria, Virginia. Additive manufacturing, also known as 3D printing, is a process of making three-dimensional solid objects from a digital model. The technology is growing in use, including in such fields as jewelry, footwear, architecture, engineering and construction, automotive, aerospace, dental and medical industries.

The meeting will serve as a forum for sharing ideas, experiences, and insights between stakeholders and the USPTO. Industry representatives will also provide an overview of the application of additive manufacturing in different technologies. Individual opinions are sought from varying participants, and the meeting is intended to be informal in nature. These 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.

March 14, 2014

Meeting on Notice and Takedown System to be Held

By Overhauser Law Offices, LLC

Washington, D.C. – A public meeting to focus on improving the operation of the notice and takedown system under the DMCA will be held on March 20, 2014.

DOC Picture.jpg The U.S. Department of Commerce’s Internet Policy Task Force (“IPTF”) will hold the first meeting of the public multistakeholder forum on improving the operation of the notice and takedown system for removing infringing content from the Internet under the Digital Millennium Copyright Act (“DMCA”) at the United States Patent and Trademark Office (“USPTO”) headquarters in Alexandria, Virginia. The meeting was called for in the Commerce Department’s Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy released last year. The IPTF is a joint effort between the USPTO and the National Telecommunications and Information Administration (“NTIA”).

The goal of the multistakeholder forum is to identify best practices and/or produce voluntary agreements for improving the operation of the DMCA notice and takedown system. The IPTF plans to hold several additional meetings throughout the year. The initial meeting will focus on identifying concrete topics to be addressed by participants, and to discuss and make decisions about the process for the forum’s ongoing work. The IPTF aims to have participation from a wide variety of the notice and takedown system’s current users, including right holders and individual creators, service providers, and any other stakeholders that are directly affected – such as consumer and public interest representatives, technical and engineering experts, and companies in the business of identifying infringing content.

January 24, 2014

USPTO Ranks #1 in Best Places to Work in the Federal Government

By Overhauser Law Offices, LLC

WASHINGTON, D.C. – The federal government’s annual employee survey finds that the USPTO tops the list of 371 federal agency subcomponents.

The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) was named number one out of 300 agency subcomponents in the 2013 Best Places to Work in the Federal Government rankings released recently by the non-profit Partnership for Public Service (“PPS”). The annual report is based on a survey of more than 700,000 civil servants from 371 federal agencies and subcomponents conducted in 2013 by the Office of Personnel Management (“OPM”). The USPTO has consistently risen in the Best Places to Work rankings since 2009, ranking fifth in its category last year.

“This is a tremendous tribute to the tireless dedication of our hardworking employees, unions, and agency leaders,” said Commissioner for Patents Margaret A. (Peggy) Focarino (pictured below). “Our employees have faced significant challenges, including the impact of budget sequestration despite being a fully fee-funded agency, and the completion of our implementation of the Leahy-Smith America Invents Act, the most sweeping overhaul of our nation’s patent system in generations. Yet despite those challenges we maintained our upward momentum in being recognized by our employees as a Best Place to Work in the federal government.”

January 22, 2014

Virginia District Court Awards Attorneys’ Fees to USPTO

By Overhauser Law Offices, LLC

Alexandria, Virginia – The District Court for the Eastern District of Virginia held in Shammas v. Focarino that the United States Patent and Trademark Office (“USPTO”) was entitled to recover attorneys’ fees when brought to court for a review of Trademark Trial and Appeal Board (“TTAB”) rulings.

An examiner for the USPTO had refused to register a trademark for the term PROBIOTIC for a fertilizer on the grounds that it was a generic term for fertilizers and, in the alternative, was descriptive with no secondary meaning. Plaintiff Milo Shammas brought the matter to the TTAB, which affirmed. Shammas then asked for a review of the TTAB decision under 15 U.S.C. 1071(b)(1) in the District Court for the Eastern District of Virginia.

Summary judgment was granted in favor of the USPTO, which then moved for fees and expenses under Section 21(b)(3) of the Lanham Act. Section 21(b)(3) provides that, in cases such as these, “all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not.”

Shammus argued that it would be improper to award attorneys’ fees, as they were not included in the statutory term “expenses.” The court was not convinced, however, and held that the plain meaning of “expenses” included both attorneys’ fees and other costs. This interpretation, the court explained, was further bolstered by Congress’s inclusion of the word “all” before “expenses.”

In determining the correct measure of fees due, the court noted that, while using market rates for legal services is appropriate when calculating “reasonable attorneys’ fees,” an award of “expenses” must be based on the actual salaries (when calculated on a per-hour basis) of the government trademark lawyers who defended the action. Thus, in this case, where the statute provided for “expenses,” attorneys’ fees were properly based on the actual hourly rate paid to the attorneys.

Practice Tip #1: The American legal system typically requires each party to bear its own litigation expenses, including attorneys’ fees, regardless of the outcome of the case.

Practice Tip #2: This fee-shifting decision was a matter of first impression regarding Section 21(b)(3) of the Lanham Act. It held that “expenses” as contemplated therein included attorneys’ fees. Moreover, ex parte plaintiffs must pay those expenses whether or not they prevail on the merits.

Practice Tip #3: Section 1071 was characterized as “arguably an odd statute” by the court. The court remarked that the statute “provides unsuccessful trademark applicants with a choice between an appeal to the Court of Appeals for the Federal Circuit on the administrative record, or alternatively, an action in federal district court where the administrative record may be supplemented with new evidence. Congress’s decision to allow this choice is odd for several reasons. First, it serves to lessen the trademark applicant’s incentive to put her best evidentiary foot forward before the PTO given that if she fails before the PTO, she can supplement the record in the district court. Moreover, Congress no sooner provides this choice than it takes an energetic step to discourage its use by requiring the unsuccessful applicant who files the district court suit under § 1071(b) to pay all expenses of the district court proceeding, win, lose or draw. This could lead to an anomalous result where the applicant must pay the PTO’s expenses of the district court proceeding even where the PTO loses in the district court on the administrative record alone and no new evidence is admitted or considered. In this circumstance, there is little reason to saddle the unsuccessful applicant with the PTO’s expenses. A second anomalous result is that the statute invites forum shopping. By allowing an action to be filed in a district court in lieu of an appeal to the Court of Appeals for the Federal Circuit, the statute invites an unsuccessful applicant to pick a district court in a favorable circuit because the appeal will be to the circuit in which the district court sits, not to the Court of Appeals to the Federal Circuit.”

Practice Tip #4: When determining whether to use market rates or actual attorney-fee expenses in fee-shifting cases, the Seventh Circuit has reached a conclusion similar to the decision in this case. The Seventh Circuit has determined, for example, that it is incorrect to use the prevailing market rate to determine an award of attorneys’ fees under 28 U.S.C. § 1447(c) because the statute limited fee awards to “actual expenses, including attorney’s fees, incurred.” See Wisconsin v. Hotline Indus., Inc., 236 F.3d 363, 367 (7th Cir. 2000).

January 10, 2014

USPTO to Host Forum to Discuss Proposed Changes to Implement Patent Law Treaties Implementation Act of 2012 – Title I The Hague Agreement

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Department of Commerce’s United States Patent and 140px-US-PatentTrademarkOffice-Seal.svg.png Trademark Office (“USPTO”) recently announced that it will hold a public forum to discuss implementation of Title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”). The law, which serves as the implementing legislation for the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”), allows applicants to file a single international design application to acquire global protection. The forum will be held on Tuesday, January 14, 2014, at the USPTO campus in Alexandria, Virginia.

On November 29, 2013, the USPTO published a notice in the Federal Register seeking written comments on proposed changes to the rules of practice to implement Title I of the PLTIA.

The PLTIA and the proposed rules call for the following: standardizing formal requirements for international design applications; establishing the USPTO as an office through which international design applications may be filed; providing for substantive examination by the Office of international design applications that designate the United States; providing provisional rights for published international design applications that designate the United States; and setting the patent term for design patents at 15 years from the date of patent grant.

December 19, 2013

Former Google Executive Michelle K. Lee Named as Next Deputy Director of the U.S. Patent and Trademark Office

By Overhauser Law Offices, LLC

WASHINGTON, D.C. – U.S. Secretary of Commerce Penny Pritzker recently announced the appointment of Michelle K. Lee as the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (“USPTO”). Lee currently serves as the Director of the USPTO’s Silicon Valley satellite office and will begin her new role at USPTO headquarters in Alexandria, Virginia on January 13, 2014.

While Director of the USPTO’s Silicon Valley satellite office, Lee has served as the agency’s primary liaison with the innovation community in the Silicon Valley and West Coast, leading the establishment of a temporary office in Menlo Park and working creatively with California’s Congressional, state, and local leadership to successfully secure a permanent office location in San Jose. In that role, she has also been actively engaged in education and outreach initiatives, empowering the USPTO to more effectively develop programs, policies, and procedures to meet the needs of the West Coast innovation community. Beyond the Silicon Valley office, Lee has also played a broader role in helping shape key policy matters impacting the nation’s intellectual property (IP) system, focusing closely on efforts to continually strengthen patent quality, as well as curbing abusive patent litigation. Prior to becoming Director of the Silicon Valley USPTO, Lee served two terms on the USPTO’s Patent Public Advisory Committee, whose members are appointed by the U.S. Commerce Secretary and serve to advise the USPTO on its policies, goals, performance, budget and user fees.

“Michelle Lee has proven herself to be a tremendous asset to the USPTO and the Department of Commerce,” said Secretary Penny Pritzker. “She has a great mix of skills and experiences to assume this leadership position during a time when the administration is deeply focused on strengthening the nation’s intellectual property system. And her years of working in the IP community, both in the private and public sectors, will support the key focus on innovation and the digital economy in the Commerce Department’s new ‘Open for Business’ policy agenda. I look forward to working with her in her new capacity.”

December 13, 2013

USPTO Seeking Comments on Proposed Rules to Implement Title I of the Patent Law Treaties Implementation Act of 2012

By Overhauser Law Offices, LLC

Washington, D.C. – A new law allows applicants to file a single international design application to acquire global protection.

The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) recently announced a proposal to amend the rules of practice in patent cases to implement the provisions of Title I of the Patent Law Treaties Implementation Act of 2012 (also known as “PLTIA”). The law, which serves as the implementing legislation for both the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”) and the Patent Law Treaty, will allow applicants to file a single international design application to acquire global protection.

When the Hague Agreement comes into effect in the United States, U.S. applicants will be able to file a single application for protection of an industrial design which will have effect in more than 40 territories.

November 29, 2013

U.S. Patent and Trademark Office Selects San Jose City Hall as Permanent Space for Silicon Valley Satellite Office

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 San Jose City Hall building, located at 200 East Santa Clara Street, has been selected as the permanent location for the USPTO’s Silicon Valley satellite office. The search for permanent office space was put on hold in July due to sequestration. Generous support and assistance from the City of San Jose, the California State Assembly’s Speaker’s Office, along with the collective support for the satellite office championed by members of the California congressional delegation, will enable the USPTO to move forward with occupying permanent space in Silicon Valley by the end of 2014.

Days before the selection, U.S. Secretary of Commerce Penny Pritzker outlined her “Open for Business Agenda.” Promoting American innovation is a core priority of the Agenda, as technology and innovation are key drivers of U.S. competitiveness, wage and job growth, and long term economic growth. The selection of a permanent USPTO office in the Silicon Valley is a key part of the Commerce Department’s efforts to boost America’s innovation economy.

“A permanent USPTO office in Silicon Valley will help grow the regional innovation ecosystem by empowering entrepreneurs to more readily navigate the nation’s intellectual property system,” said U.S. Secretary of Commerce Penny Pritzker. “The USPTO plays a crucial role in helping protect the cutting-edge ideas that drive our economy and keep the U.S. globally competitive. The permanent satellite offices help advance the Commerce Department’s innovation agenda by helping entrepreneurs get their products to market more quickly, provide resources tailored to the needs of local start-ups, and create good paying, high-skilled jobs.”

November 14, 2013

USPTO to Host Next Software Partnership Meeting in Alexandria, Virginia

By Overhauser Law Offices, LLC

Washington, D.C. – As part of an ongoing dialogue with the high-tech innovation community, the U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) will host its next public Software Partnership Meeting on Thursday, December 5, 2013, at the USPTO campus in Alexandria, Virginia. Partnership Meetings are an opportunity to bring stakeholders together to share ideas, experiences, and insights and to provide a forum for informal discussion of many topics specific to the software community.

The USPTO received ideas from the public regarding future topics of discussion for enhancing the quality of software-related patents at the February Software Partnership Roundtables in Silicon Valley and New York, and from responses to a January 2013 Federal Register Notice. The public expressed an interest in exploring ways to improve the USPTO’s prior art searching techniques and tools. In response to this input, the USPTO is holding the December 5 meeting, which will be webcast, to educate the public on the prior art resources utilized by its examiners. In addition, there will be presentations from selected external speakers on additional prior art resources and search techniques, which will be followed by a question and comments session. This meeting will be of particular interest to search professionals, practitioners interested in search resources, and software industry experts.

What: Software Partnership Meeting