No, folks, October 7 is not the day. Sorry about that. The posting on October 7 about a new shortened response period for post-reg trademark Office Actions was an automatic, scheduled posting that I had scheduled many months ago. But see this Federal Register notice dated September 12, 2023 in which the USPTO says that October 7, 2023 is not the day. Instead, this change will happen at some unspecified time in “the spring or early summer of 2024”.
Today is not the day — not only 3 months to respond to a post-reg trademark Office Action
(Update: No, folks, today is not the day. Sorry about that. The posting quoted below was an automatic, scheduled posting that I had scheduled many months ago. But see this Federal Register notice dated September 12, 2023 in which the USPTO says that October 7, 2023 is not the day. Instead, this change will happen at some unspecified time in “the spring or early summer of 2024”.)
Yes, folks, today is the day. Starting today, you only get three months to respond to a USPTO post-reg trademark Office Action instead of the usual six months. I told you all about this back on October 12, 2022 (blog article) and on December 3, 2022 (blog article). This article hopefully answers some of your questions about this change.
Does this affect the response period for post-reg Office Actions mailed yesterday or before? No. This affects only the response period for post-reg Office Actions mailed today (Saturday, October 7, 2023) or after today.
What if I need more than three months? If you need more than three months, you can purchase the remaining three months (restoring the response period to the statutory six months) by paying $125.
So this works just like extensions of time in USPTO patent cases? No! It is quite different, in many ways, as this table details.
| Patent | Trademark | |
| small entity or micro costs less? | yes | no |
| you can get one, two, or three months of extension? (or four or five months for certain steps) | yes you get to pick | no, you can only get three months of extension, no more and no less |
| when you must pay? | you may pay in arrears | You must pay before the three months has run out |
| how much money? | $55 to $3160 depending on entity size and number of months of extension | $125 |
Madrid cases? No, this does not apply to cases with a 66a filing basis (US designations from international trademark registrations). Those cases will continue to get the full statutory six-month response period.
Gotchas? Yes, there will be gotchas. If you respond within the three-month period, but if the post-reg person says you have failed to “respond to all issues”, whatever that means, then your case will have gone abandoned and you will have to petition to revive.
Suppose you respond within the three-month period, and you supposedly fail to “respond to all issues”, and there is still some time left before the end of the three-month period, and the post-reg person delivers this bad news to you before the end of the three-month period. In such a case, the post-reg person will let you know that to avoid abandonment, you can pay the $125 fee to purchase the remaining three months of response time.
As alert reader Michael Brown points out, the EA might choose to give you a 30-day “mulligan” if the EA decides that your response that failed to be “complete” was nonetheless “substantially complete”. See blog article.
Argentina intellectual property office becomes more trendy, modern and up-to-date
The National Institute of Industrial Property of Argentina (INPI) had already been trendy, modern, and up-to-date, having joined the DAS system on October 1, 2019 (blog article). Today’s news is that INPI has become even more trendy, modern and up-to-date. It now participates in DAS in more ways. Continue reading “Argentina intellectual property office becomes more trendy, modern and up-to-date”
Today is the day — Italy becomes an Accessing Office in DAS
You heard it here first (blog article, July 13, 2023)! Today is the day that the Italian Patent and Trademark Office becomes an Accessing Office in the DAS system for the following kinds of applications:
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- national industrial design applications
- national patent applications
- national trademark applications
- national utility model applications
- PCT international applications
Continue reading “Today is the day — Italy becomes an Accessing Office in DAS”
USPTO’s new “welcome letters”
The USPTO has announced that it plans to send a “welcome letter” to each applicant that files a new trademark application or patent application at the USPTO. You can see the actual wecome letters archived here (trademarks) and here (patents).
What reel and frame numbers have to do with bitcoin and blockchain and shared ledgers
For their entire careers, US patent and trademark practitioners have lived and breathed a world of “reel and frame numbers” that are somehow intimately connected with the recordation of patent and trademark assignments. What exactly are reel and frame numbers, and how is it that reel and frame numbers relate closely with bitcoin and blockchain and shared ledgers? Continue reading “What reel and frame numbers have to do with bitcoin and blockchain and shared ledgers”
Italian patent and trademark office — soon to be more trendy, modern and up-to-date
On October 1, 2020 (blog article) the Italian patent and trademark office joined the DAS system. It became a Depositing Office in the DAS system for the following kinds of applications:
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- national industrial design applications
- national patent applications
- national trademark applications
- national utility model applications
- PCT international applications
On September 1, 2023, the Italian patent and trademark office will become an Accessing Office in the DAS system for these same kinds of applications. This is, of course, a very exciting development for the Italian patent and trademark office and for the DAS system.
Will the attached assignment be acceptable to the USPTO?
About once a month we at OPLF get an inquiry from an intellectual property firm located outside of the US regarding a client’s name change or assignment. The inquiry is along the lines of:
Here is a draft Assignment from Company A to Company B. Kindly advise whether this Assignment will be acceptable to the USPTO to transfer patent C from Company A to Company B. Kindly advise what other documents if any will be needed and what this will cost.
Or the inquiry is along the lines of:
Here is an excerpt from the official corporate register of country A evidencing that the Company has officially changed its name from A to B. Kindly advise whether this document will be acceptable to the USPTO to change the applicant name from A to B. Kindly advise what other documents if any will be needed and what this will cost.
We find ourselves having to explain the same things, over and over again, to non-US counsel. We hope that with this blog article we can save some time for everybody involved and answer some of the questions. Continue reading “Will the attached assignment be acceptable to the USPTO?”
Today is the day — Lithuanian patent office and the DAS system
Today is the day that the State Patent Bureau of the Republic of Lithuania becomes even more trendy, modern and up-to-date. Today is the date that the Lithuanian patent office commences participation in the DAS system in four ways:
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- as a Depositing Office for purposes of national industrial design applications,
- as a Depositing Office for purposes of national trademark applications,
- as an Accessing Office for purposes of national industrial design applications, and
- as an Accessing Office for purposes of national trademark applications.
You heard this exciting news from me first, in my blog posting of May 4, 2023.
The Lithuanian patent office has already been a participant in the DAS system since January 1, 2023 in these ways:
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- as a Depositing Office for purposes of national patent applications;
- as an Accessing Office for purposes of national patent applications; and
- as an Accessing Office for purposes of PCT patent applications.
The two-letter code (ISO-3166 code) for this Office is “LT”. The web site of the Lithuanian patent office may be seen here.
July 4 a holiday at the USPTO
Tuesday, July 4, 2023 will be a federal holiday in the District of Columbia. This means that the USPTO will be closed that day.
This means that any response that would normally be due on Tuesday, July 4 will be timely if made by Wednesday, July 5.
Note the important comment below from alert reader Dan Ferris:
It’s important to note that the “next business day” rule does not apply to the copendency requirement for filing divisional/continuation applications. Any such applications with parent applications issuing on July 4, 2023 should be filed no later than July 4, 2023.