Author: Carl

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USPTO relaxes rules for CPAs in design patent applications

The AIA rules published August 14, 2012 gave a patent applicant a free pass on handing in the signed inventor declaration late, indeed extremely late.  The 2012 rules permitted the applicant to postpone handing in the declaration until as late as the time of allowance.

But not for CPAs (continued prosecution applications) from design patent applications.  Due to an oversight in the 2012 AIA rulemaking, this free pass was not extended to CPAs in that rulemaking.  On March 5, 2014 the USPTO published a rule change correcting the oversight and extending the free pass to CPAs.

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Best Practice: using USPTO’s Financial Profile system

USPTO has many e-commerce systems that are well known to practitioners and applicants — EFS-Web for e-filing patent documents, TEAS for e-filing trademark documents, ESTTA for e-filing TTAB documents to name three examples.  But I find it remarkable how few practitioners and applicants know anything about USPTO’s Financial Profile system.  The Financial Profile system is (or should be) a central part of the bookkeeping workflow for any patent firm or trademark firm and for any corporate patent department or corporate trademark department.

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File your comments by April 24 on proposed patent applicant filing burdens

The USPTO has published proposed rules which would impose upon all patent applicants and upon all patent owners a new burden — an obligation to carry out recurring investigations as to “attributable owners” of patent applications and patents, and to report the list of “attributable owners” to the USPTO.  The proposed rules would subject each patent owner to the grave risk, at litigation time, that a court might deem the underlying patent application to have gone abandoned during its pendency before the USPTO due to a real or imagined error in the reported list of “attributable owners”.  The investigation and reporting burden would, for many corporations, add thousands or tens of thousands of dollars to the cost of prosecuting a US patent application.

Comments are due by April 24.  Any corporation that owns US patents should read the proposed rules and, I suggest, should file comments by the due date.  Likewise any patent practitioner that represents corporations before the USPTO should read the proposed rules and, I suggest, should file comments by the due date.  I have filed comments with the USPTO. Continue reading “File your comments by April 24 on proposed patent applicant filing burdens”

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Monitoring the international trademark filings of your competitors

Many companies, and many trademark practitioners, are unaware of an extremely helpful service which the World Intellectual Property Organization makes available free of charge.  The Madrid Electronic Alert (“MEA”) system is a free-of-charge “watch service” designed to inform anyone interested in monitoring the status of particular Madrid Protocol (international) trademark applications. This is particularly helpful for monitoring Madrid Protocol trademark filings of competitors and adversaries.

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Important upcoming industrial design events

A number of recent developments have forced practitioners, even those who never thought that design patents were important, to pay attention to design patents.  The Apple v. Samsung litigation, in which a jury verdict of nearly a billion dollars was awarded to Apple, largely on its design patents.  The imminent accession of the US to the Hague Agreement, which will permit US filers to use the Hague process as a one-stop-shopping way to file for design protection in many countries at once.

Here are some important upcoming events in this area:

Those practitioners who wish to join in discussions with other practitioners about developments in industrial design protection may wish to subscribe to the Industrial Designs listserv.

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Does the USPTO give you the same examiner as in the PCT?

(Updated to reflect that Forty-two patent practitioners have asked Director Vidal to make it so.  See blog post and update below.)

A member of the PCT Listserv asks “does USPTO give you the same Examiner in a US national application and in the corresponding PCT application?”  This is a very interesting question and has several sub-questions to it. Continue reading “Does the USPTO give you the same examiner as in the PCT?”

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PTAB speaks on 35 USC § 101 — or is it § 103? CRS v Frontline

Well, we are starting to see the work product of the Patent Trial and Appeal Board, whose goal for many of the new AIA proceedings is to dispose of them within a year.  Here’s the decision in CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc. (Case CBM2012-00005), instituted January 23, 2013 and decided just under a year later on January 21, 2014.

CRS wanted to invalidate some of the claims of US Patent 6,675,151.  Doing so in court would likely have cost half a million dollars or more.  CRS picked the Covered Business Method approach and (I’d guess) probably spent well under a quarter million dollars.  And prevailed.

What I would have hoped is that the decision might help to clarify what practitioners need to do to draft patent applications that will survive post-grant review (whether before the PTAB or before the courts).  I don’t think I got my wish.  Here’s why I feel this way.  Continue reading “PTAB speaks on 35 USC § 101 — or is it § 103? CRS v Frontline”