One of the things that a trademark owner has no choice but to be vigilant about is the risk that a bad person will try to steal the Amazon Brand Registry (“ABR”) rights connected with the trademark (blog article). The usual way that a bad person will try to do this is by changing the email address that is on file at the USPTO for the trademark registration, then carrying out the ABR validation procedure (which involves Amazon sending an email message with a Secret Code Number to the email address on file) and then using the Secret Code Number to appropriate the ABR rights. Recently one of my clients found itself the target of such an attempt. The Trademark Office’s protective measure did not work, but fortunately IP Badger’s protective mechanism detected that the Trademark Office’s protective measure had failed. Continue reading
(The webinar was recorded and has now been posted. Read about it here.)
Those who file PCT (Patent Cooperation Treaty) applications will be interested in an upcoming webinar on docketing of PCT applications. This particular webinar is prepared specifically for US filers, with focus not only on general PCT docketing but also on aspects of PCT that relate to US practice. (Later I will offer another corresponding webinar for filers outside the US for docketing of PCT generally.) Continue reading
In seven years writing this blog, I have not spoken about social or political issues. Now I speak. President Biden is right. “We cannot be complicit. We have to speak out.”
There is no place for hate against Asian-Americans. There is no place for hate against people because of the color of their skin. There is no place for hate against people because of their religion, or because of their non-belief. There is no place for hate against people because of the country they came from or the country their ancestors came from.
My daily world is the world of intellectual property. One of the oldest international agreements relating to intellectual property is the Paris Convention for the Protection of Industrial Property, a treaty that was adopted exactly 138 years ago on March 20, 1883. One of the purposes of the Paris Convention was to bring an end to laws and policies by which some nations had treated people from other nations poorly in the particular areas of obtaining patent protection, trademark protection, and design protection.
The treaty is composed of thirty numbered Articles, the first of which names and defines the treaty. Most of the numbered articles are rather dry legal language spelling out procedures for (for example) filing a first patent application in a first country, and a second patent application in a second country, and linking the two patent applications together in a particular way. The dry Articles start at Article 3 and continue to Article 30.
Which brings us to Article 2 of this treaty that was adopted exactly 138 years ago. The drafters of this treaty, after doing the throat-clearing of Article 1, and before proceeding with the dry legalize of Articles 3 through 30, wrote Article 2:
Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
Translated into plain language, this says:
[So far as applying for patents and registering trademarks and protecting designs is concerned,] we promise to treat people from other countries as well as we would treat people from our own country.
Among the first countries to join this treaty were Belgium, Brazil, Denmark, the Dominican Republic, France, Guatemala, Italy, Japan, the Netherlands, Norway, Portugal, Spain, Sweden, Switzerland, Tunisia, the United Kingdom, and the United States of America. Each of these countries promised to treat nationals of other countries as well as they would treat their own nationals (in the specific area of patents, trademarks, and design protection). In the years that have passed since then, 160 more countries have joined this treaty and have made this promise to treat nationals of other countries as well as they would treat their own nationals, in this area.
I was not there to see it in 1883 but I’d guess the roomful of people who negotiated the language of that treaty included few if any women and few if any people of color. Having said this, you can see that on this narrow question of of treating people from other countries the way you would want people from your own country to be treated, they got the right answer.
Now it is 2021 and we see things that happen in the world around us. Hate against Asian-American people. Hate against people because of the color of their skin. Hate against people because of their religion, or because of their non-belief. Hate against people because of the country they came from, or because of the country their ancestors came from.
Every one of us must speak out.
If you have a platform that permits you to speak, please use your platform to speak.
If a march or gathering happens near you to support Asian-Americans, or other groups that are targets of hate these days, please join the march or the gathering.
There are many ways that each of us can communicate our support to those around us. We must communicate our support.
The results are posted. See the tote board results.
I am grateful to the many loyal readers who have gently reminded me that I need to organize the 2020 Tote Boards. You can see the past Tote Boards here. These Tote Boards are part of a tradition that extends back to 2012 when I published the first Design Patent Tote Board. Please send in your numbers now. We will close the entries in two weeks, that is, on Friday, April 2, 2021. Here are the four Tote Boards for which your numbers are needed.
2020 US Plant Patent Tote Board. This will be the second annual plant patent toteboard. This is for granted US plant patents with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 1398 US plant patents issued in 2020. How many of them have your firm name on the front page? A typical search string in the USPTO patents full-text database for plant patents might be:
APT/6 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)
To send in your numbers for US plant patents, click here. We will close the entries in two weeks, that is, on April 2, 2021.
2020 US Design Patent Tote Board. This will be the ninth annual design patent toteboard. This is for granted US design patents with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 34876 US design patents issued in 2020. How many of them have your firm name on the front page? A typical search string in the USPTO patents full-text database for design patents might be:
APT/4 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)
To send in your numbers for US design patents, click here. We will close the entries in two weeks, that is, on April 2, 2021.
2020 US Utility Patent Tote Board. This will be the sixth annual utility patent toteboard. This is for granted US utility patents with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 352000 US utility patents issued in 2020. How many of them have your firm name on the front page? Yes you may include granted reissues in this total if you wish. A typical search string in the USPTO patents full-text database for utility patents might be:
APT/1 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)
To send in your numbers for US utility patents, click here. We will close the entries in two weeks, that is, on April 2, 2021.
2020 US Trademark Registration Tote Board. This will be the sixth annual trademark toteboard. This is for granted US trademark registrations with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 283386 US trademark registrations issued in 2020. How many of them did your firm prosecute to registration? (It is not necessary that your firm filed the application, merely that your firm prosecuted the case to registration.)
To send in your numbers for US trademark registration certificates, click here. We will close the entries in two weeks, that is, on April 2, 2021.
There will be a significant change in International Search fees at the Korean Intellectual Property Office effective May 16, 2021. If you are an English-language filer and if you sometimes make use of ISA/KR in your PCT filings, this change might make a really big difference for you. Continue reading
Series codes are very important. Anybody who regularly practices before the USPTO has more or less memorized the most commonly encountered series codes in his or her own daily work. If you see series code 62, you know it is a provisional application. If you see series code 29, you know it is a design application. Series code 91 means oppositions before the TTAB. Series code 92 means cancellation proceedings before the TTAB. Every now and then, a series code gets “used up” meaning that serial number “999,999” is reached in the series code, and then things roll over into a new and different series code. Provisionals, for example, used to be in series code 61 and before that they were in series code 60.
For over fifty years, for as long as there have been series codes at all, the trademark folks and the patent folks have carefully avoided ever using the same series code for different things. Now it seems that this past practice has been ignored. As far as I can see, this is a big mistake at the USPTO. Continue reading
When an applicant in the EPO gets the good news that the applicant is going to receive an EP patent, one of the things that happens next is that the EP patent has to be “validated” in the one or more countries in the EPO area where protection is desired. This costs some money and takes some time.
In the EFS-Web listserv (a discussion group for US patent practitioners) the question came up why EPO validations cost as much money as they do, and why a rush fee might be imposed by an EPO validation service provider if instructions were given at the last minute. Indeed one might ask why there is an EP validation process at all? What is the problem for which an EP validation process is the solution? These questions prompted me to write this blog article. Continue reading
Here is why you suddenly cannot log in at the USPTO since Saturday.
Two people at the USPTO screwed up. One of the people who screwed up did it yesterday, Saturday, March 6, 2021. The other person who screwed up did it a couple of years ago, and that screwup only came into prominent view yesterday. The screwups relate to what USPTO calls “authenticator app” two-factor authentication. The screwups affect most trademark practitioners who practice before the USPTO, and they affect most patent practitioners who practice before the USPTO, and they affect most paralegals and administrative assistants who work with those patent practitioners. Briefly, you need to delete your old “authenticator app” setup and you need to create a new “authenticator app” setup. Here are the details. Continue reading