Category: Trademarks

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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?”

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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:

    • 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:

    • 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.

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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.

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Another submission to the CAFC on “where you sleep at night”

It will be recalled that there is an appeal pending before the Court of Appeals for the Federal Circuit on “where you sleep at night”.  Many months ago, the USPTO had filed a brief in that appeal, representing to the Court that it was protecting the “where you sleep at night” domicile addresses of trademark applicants from exposure to the public.  And it will be recalled that recently the USPTO revealed that for more than three years, it had failed to protect the “where you sleep at night” domicile addresses of applicants from exposure to the public, despite having promised to do so.  In other words, the representation in that brief was untrue.  The Associate Solicitor of the USPTO wrote a letter to the CAFC that sort of admitted this (blog article).

Now the appellant has filed a letter response.  You can see it here.  It is interesting reading.

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USPTO breaks its promise about protecting “where you sleep at night” domicile addresses

The USPTO sent out email messages today reporting what it calls a “Data Security Incident”.  It turns out that the USPTO, which promised it would keep the “where you sleep at night” domicile addresses of trademark applicants safe and secure, instead revealed all of the “where you sleep at night” addresses in all of the USPTO’s APIs and bulk data products by which data miners collect data from the USPTO, over a period stretching from February of 2020 to March of 2023.

Astonishingly, CIO Jamie Holcombe tells us that he “fixed” the problem.  Continue reading “USPTO breaks its promise about protecting “where you sleep at night” domicile addresses”

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USPTO breaks its promise about protecting trademark applicant email addresses

The USPTO requires each trademark applicant to reveal its own email address when filing a US trademark application.  The USPTO promises that if the applicant is represented by an attorney, then only the attorney’s email address will be revealed to the public, and:

Tthe email address listed in the owner field for trademark applicants who are represented by a qualified U.S. attorney will not be publicly viewable.

(TMEP § 803.05(b)).  But, rather predictably, the USPTO has broken this promise.  It turns out that the USPTO reveals the applicant email address to the public.  Continue reading “USPTO breaks its promise about protecting trademark applicant email addresses”

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The State Patent Bureau of the Republic of Lithuania becomes even more trendy, modern and up-to-date

On July 1, 2023, the State Patent Bureau of the Republic of Lithuania will become even more trendy, modern and up-to-date.  That is the date that the Lithuanian patent office will commence participation in the DAS system in four new ways:

    • 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.

The Lithuanian patent office has already been a participant in the DAS system since January 1, 2023 in these ways:

    • 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.

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Backlog in the Post-Reg Branch at the USPTO

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To avoid cancellation, a US trademark registration needs to be renewed every ten years.  Within the USPTO it is the Post-Registration Branch that has responsibility for reviewing and accepting renewals.  The backlog at the Post-Reg Branch is worse than ever, and the USPTO’s dashboard does not accurately report the magnitude of the backlog.  Continue reading “Backlog in the Post-Reg Branch at the USPTO”

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Time of day at the IB returns to normal for US filers

Two weeks ago I blogged (see blog posting) that US filers filing PCT applications in RO/IB needed to pay extra close attention to what time it is in Switzerland.  (And it was the same for e-filers in the Madrid Protocol system.)  The reason is that in the US, Daylight Saving Time happened on March 12.  But did not happen on that day in Switzerland.  This meant that for the past two weeks, a US-based filer in (for example) the Mountain Time zone would be able to e-file in RO/IB as late as 5PM and still get a same-day filing date.  This differed from the usual drop-dead time of 4PM.

Today (March 26, 2023) is the day that Daylight Saving Time happens in Switzerland.  The consequence of this is that the time difference between the US filer’s time zone and the time in RO/IB is back to normal.  So for a US-based filer in the Mountain Time zone, the drop-dead time returns today to the usual 4PM.