USPTO News

January 23, 2013

U.S. Patent Office Updates Patent Application Fees Based on America Invents Act

Washington, DC

On January 18, 2013, the U.S. Patent and Trademark Office on issued final rules setting revised patent fees under Section 10 of the America Invents Act. (78 Fed. Reg. 4211). Section 10 of the AIA permits the USPTO to set or adjust by rule any fee under Title 35 or Title 15 for any services performed by or materials furnished by the Office. According to the statute, the fees may only recover the aggregate estimated costs for patent and trademark processing, activities, services, and materials. In its final rule notice, the Office said the fee-setting authority would permit sustainable funding and reduce the patent application backlog. According to the Federal Register notice:
The fee schedule in this final rule will recover the aggregate estimated costs of the Office while achieving strategic and operational goals, such as implementing a sustainable funding model, reducing the current patent application backlog, decreasing patent application pendency, improving patent quality, and upgrading the patent IT business capability and infrastructure.
For the most part, the fees in the final rules are the same as those in the proposal published last September (77 Fed. Reg. 55028, 9/6/2012). Many of the new front-end fees are reduced, such as the basic filing fee for an original patent application (reduced from $380 to $280), and the new fees include the 50% discount for small entities and 75% discount for micro entities. Among the differences between the proposed and final fees, the following are examples for non-small entity applicants:
• Correction of inventorship after first Office action (§1.17(d))
Proposed: $1,000; Final: $600
• Issue fee paid before January 1, 2014 (§1.18(a)(2))
Proposed: $960; Final: $1,780
• Ex parte reexamination fee (§1.20(c)(1)):
Proposed: $15,000; Final: $12,000
• Ex parte reexamination fee after supplemental examination (§1.20(k)(2))
Proposed: $13,600; Final: $12,000
• Notice of appeal to PTAB (§41.20(b)(1))
Proposed: $1,000; Final: $800
The Patent Public Advisory Council reviewed the September 2012 proposed rules and noted the many of the fees were tied to reducing pendency, using a goal of 10 months to the first Office action by 2015, and a goal of 20 months total pendency by 2016. Under the final rules, achievement of those two goals is pushed back to 2016 and 2017 respectively. In addition, the Office anticipates a reduced backlog and inventory of approximately 335,000 patent applications by 2016. For most of the fees, the effective date is March 19. 2013.

November 13, 2012

Copyright Office Allows Electronic Registration of Groups of Related Serial Issues

By Overhauser Law Offices, LLC

Washington DC – The Copyright Office is adopting interim regulations that allow groups of related serial issues to be filed through the Office’s electronic registration system. This interim rule will also allow applicants for groups of related serials to mail physical deposit copies of the serial issues upon submitting an electronic application and payment, when electronic deposit copies do not exist. Regardless of the registration option chosen, applicants, whether located in Indiana or elsewhere, must still send two complimentary subscription copies of the serial promptly to the Library of Congress as a condition of eligibility unless directed otherwise by the Office. While filing electronically is not mandatory, the Copyright Office strongly urges applicants to use the electronic filing option since it is more efficient for both the user and the agency.

Practice Tip: When Congress enacted its major revision to the copyright law in 1976, the Register of Copyrights was granted discretion to provide for a single registration for a group of related works. 17 U.S.C. 408(c)(1). In 1991, final regulations became effective permitting group registration of certain serial publications. 55 FR 50556 (December 7,

1990). Under these regulations, issues of serials published at intervals of a week or longer within a three-month period during the same calendar year can be grouped and registered on a single application and for a single fee. The group registration privilege is contingent upon the prompt submission of two complimentary subscription copies of each issue to the Library of Congress. Additionally, several other conditions apply, e.g., the registered serials must be collective works by the same author and claimant and must be works made for hire. See 37 CFR202.3(b)(6). The option for group registration of related serials does not allow the applicant to claim contributions of component works that were not made for hire.

November 6, 2012

USPTO News – Trademark Manual of Examining Procedure (October 2012)

By Overhauser Law Offices, LLC

The USPTO has issued the Trademark Manual of Examining Procedure (October 2012), with an effective date of October 31, 2012. Please note that the current version of the TMEP is now identified by the month and year in which it is issued. This is a change from prior versions, which were identified using edition and revision numbers. Note also that the new online interface, which was made available for preview in September, is now the exclusive interface and search tool for the TMEP. A Highlights document that includes some of the changes set forth in the October 2012 TMEP is also available on the USPTO website.

The revised Trademark Manual of Examining Procedure can be found here.

October 19, 2012

Patent Office Proposes New Rules for Patent Attorneys

By Overhauser Law Offices, LLC

Washington, DC. The US Patent Office has released a proposed new set of rules of professional responsibility, completely redrafted from the present professional responsibility rules. The proposed rules would cover patent lawyers in Indiana and elsewhere, and are based on the American Bar Association’s 1983 Model Rules. The Office also proposes to revise the existing procedural rules governing disciplinary investigations.

The current Rules have not been revised since 1985 and is also based on the previous ABA Model Rules. Since that time, the vast majority of State bars in the United States have adopted substantive disciplinary rules based on the newer ABA Model Rules of Professional Conduct.

According to the notice from the Office, the extensive changes are meant to bring standards of ethical practice before the Office into closer conformity with the Rules of Professional Conduct adopted by nearly all States and the District of Columbia, while addressing circumstances particular to practice before the Office.

August 25, 2012

USPTO Requests Comments Regarding Trademark Application Fees

By Overhauser Law Offices, LLC

The USPTO seeks public comment on the possibility of adjusting trademark application fees so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO . The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection of trademark application fees, and the Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO. Comments are also being sought on the possibility of increasing fees on applications based on paper, currently only 1% of trademark applications, given that these applications are more costly and burdensome for the USPTO to process. A Notice of Inquiry has been published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20127.pdf. Responses are due b y October 15, 2012.

August 17, 2012

USPTO Requests Comments Regarding Trademark Filing Deadlines

By Overhauser Law Offices, LLC

The USPTO seeks public comment on the possibility of amending federal law to shorten by two years the first filing deadline to demonstrate either use or excusable nonuse of a registered trademark. Although any such change would require a legislative amendment of the Trademark Act, and thus is beyond the authority of the agency, the USPTO wishes to collect public comment that might assist in the consideration of such an amendment, or another alternative. The goal would be to remove marks no longer in use, known as “deadwood,” from the register sooner.” Under this proposal, Sections 8 and 71 of the Trademark Act would be amended, requiring a trademark owner to file the first Affidavit of Declarations of Use or Excusable Nonuse within three to four years after the registration date, or the six-month grace period that follows. Under current law, owners must file their first Affidavit between five and six years after the registration date, or the six-month grace period that follows. A request for comments has published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20130.pdf, and responses are due by October 15, 2012.

July 27, 2012

U.S. Patent Office Publishes Rules Implementing the America Invents Act

By Overhauser Law Offices, LLC

Washington, DC. On Thursday, July 26, 2012, the United States Patent Office published in the Federal Register proposed rules and proposed examination guidelines for the first-inventor-to-file provision of the America Invents Act. The first-inventor-to-file provision converts the United States from a “first-to-invent” to a “first-inventor-to-file” system. The proposed rules and proposed examination guidelines amend the rules of patent practice to implement the conversion and show the Office’s interpretation of how the conversion impacts sections of the Manual of Patent Examining Procedure related to novelty and obviousness. The proposed rules and proposed examination guidelines are accessible here:

First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012)

First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 27, 2012)

May 17, 2012

Southern District Lifts Stay on Patent Infringement Suit Against Google and Grants One Number Corporation’s Motion To Amend Complaint

By Overhauser Law Offices, LLC

Indianapolis, IN – The Southern District of Indiana has lifted a stay on a patent infringement case against Google and allowed the plaintiff, One Number Corp. Motion to amend its complaint. Patent attorneys for One Number Corp. of Anderson, Indiana had filed a patent infringement lawsuit in the Southern District of Indiana alleging that Google of Mountain View, California infringed patent no. 7,680,256 and 8,107,603, CONTACT NUMBER ENCAPSULATION SYSTEM, which has been issued by the US Patent Office.

The litigation was stayed while the US Patent Office re-examined the patents at issue. One Number had motioned the court to remove the stay because a substantial portion of the re-examination process has concluded. Google opposed lifting the stay because there was chance that the Federal Circuit Court would reverse the Board of Patent Appeals and Interferences’ conclusions. The court concluded that the stay should be lifted and granted One Number’s motion to amend their compliant. The parties were ordered to submit a case management plan within 14 days.

Practice Tip: It is common for patent infringement litigation to be stayed when the US Patent Office is re-examining the patent, although the district court is not required to stay the litigation. Each claim of a patent is presumed to be valid and enforceable, even if the patent is being re-examined. The US Patent Office offers this FAQ sheet that explains the re-examination process.

January 30, 2012

Trademark Trial and Appeal Board Issues Opinion for Rolex in Trademark Dispute Suit Over Dilution

By Overhauser Law Offices, LLC

Alexandria, VA – The Trademark Trial and Appeal Board of the US Trademark Office has reached a decision regarding the opposition of trademark registration filed by Rolex Watch U.S.A., Inc. of New York, New York against AFP Imaging Corporation of Elmsford, New York on trademark serial no. 77/492,131 for the mark ROLL-X registered with the US Trademark Office.

In 2008, AFP filed a trademark application with the US Trademark Office for the mark ROLL-X, with the product category of “x-ray tables for medical and dental use.” Rolex Watch filed an opposition to that registration, arguing that there was a likelihood of confusion between AFP’s products and the Rolex trademark that Rolex has used for many years and that the Rolex marks would likely be diluted by tarnishing or blurring of the marks. The opinion notes that Rolex’s trademarks state that their products are “watches, clocks, parts of watches and clocks, and their cases.” After considering all the statutory factors, the Board determined that Rolex had not demonstrated that AFP’s proposed trademark registration would result in dilution of Rolex’s trademarks.

Practice Tip: In considering whether a trademark application dilutes a prior mark by blurring, there are six factors to consider pursuant 15 U.S.C. § 1125(c)(2)(B)(i-vi). These are: the degree of similarity between the two marks, the degree of distinctness, the extent to which the owner of the famous mark is engaging in exclusive use, the degree of recognition of the famous mark, intent to create association with the famous mark, and finally, actual association with the famous mark.
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September 15, 2011

Obama Poised to Sign America Invents Act, Patent Reform Bill Now Passed Both House and Senate

By Overhauser Law Offices, LLC

Washington, D.C. – The America Invents Act, also called the Leahy-Smith Patent Reform Act, was passed by the U.S. Senate last week. The bill was sent to President Obama’s desk, ready for his signature before it can become law. The President is expected to sign the bill.

President Obama repeatedly has mentioned the patent reform legislation in recent speeches on the economy. The America Invents Act has been touted as a job creating bill and as an economic stimulus. Proponents argue that the reforms will streamline the patent process and allow companies to more quickly realize profits from technology and thereby employ more workers. Senator Leahy, one of the bill’s sponsors, also commented that the reform will improve the quality of patents. He told the New York Times, “For years, low-quality patents have been a drain on our patent system, and in turn our economy, by undermining the value of what it means to hold a patent. Higher-quality patents will infuse greater certainty into the patent system, which will better incentivize investment in American businesses, create jobs and grow our economy.” These claims, however, are complicated and controversial among intellectual property attorney experts on patent policy.

The biggest change brought on by the reform will give patent protection to the “first to file” for the patent, rather than the “first to invent” under the current system. Indiana Intellectual Property Law News blogged on the specifics of the legislation last month.