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How to correct a check-the-box mistake?

We are familiar with the “check-the-box” problem.  The AIA provides that for a “transition” application, the law to be applied to determine what is patentable and what is not patentable is based on whether the application contains, or ever contained, at least one claim the effective filing date of which is on or after March 16, 2013.  (A “transition” application is an application filed on or after March 16, 2013 that claims domestic benefit or foreign priority from an application filed prior to March 16, 2013.)  The AIA did not say who exactly is supposed to figure out whether such a claim exists or existed.  Unfortunately for applicants, in the February 14, 2013 Final Rules the USPTO successfully shifted this claim analysis burden to the applicant (more accurately, to the patent practitioner).  check It falls to the practitioner to work out whether or not this box should be checked.  And years later in litigation of such a transition application, it will often happen that an accused infringer will devote enormous amounts of time and energy exploring whether a case can be made the the practitioner made a check-the-box mistake — checking the box when it should not have been checked, or failing to check the box when it should have been checked.

Which gets us to the topic of this blog posting.  What if, during the pendency of a transition application, the practitioner discovers to his or her horror that a check-the-box mistake was made?  Can the mistake be corrected?  If so, how? Continue reading “How to correct a check-the-box mistake?”

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Fixed-price provider of trademark clearance services?

A member of the E-trademarks listserv asked:

Can anyone recommend a fixed-price provider of trademark clearance services?

Here’s what I think about that.

For mark clearances there’s at least a first part, a second part, and a third part.

The first part is finding out the business needs of the client with respect to the proposed mark or marks.  One metric for the business need is the number of dollars that would be down the drain if it were to turn out later that the mark turns out not to be available.  One extreme is the case where the consequences of failure are little more than the cost of reprinting business cards and letterhead.  The other extreme is the case where the choice of a new name is a “bet the company” kind of decision, and if it were to turn out the mark is unavailable the client loses every penny and every hour of time that has been invested in the company.

An example of a middle ground is the company that routinely rolls out ten new brands of prepaid long-distance calling cards per month, and very openly expects that one or cards will turn out to have names that cannot be used, and those two names are just quietly discontinued at minimal cost to the company.

Part of this counseling task is working out the geographic reach of the decision.  Is the client able to say that the to-be-adopted new trademark will never be used anywhere except in the US?  Or does the mark need to be available for other geographic areas?  Will the mark be used on services provided on a web site?  Will the web site be visible everywhere in the world?  Does the client need clearance everywhere in the world?

Part of this counseling task is learning whether there are particular candidate sources of trouble.  For example is the client’s business in an industry with clear boundaries and only a known and small number of competitors?  On the other hand is the client’s activity likely to attract attention of companies in a wide range of lines of business?  Is the client marketing to businesses, or to consumers?

Having worked out the first part, we then move on to the second part, which is the search.  This might be little more than a quick search in TESS for identical marks and a quick surf through Google.  Or might be a $600 search from Thomson & Thomson.  Do we care about phonetic equivalents?  What about a transliteration of the mark into Greek letters or Cyrillic?  Eventually the search is done and we have the search report in hand.  At a search firm the work might be done by attorneys but I’d guess most of the work is done by very experienced people who are not necessarily attorneys.

Now the third part, rendering an opinion.  Someone, presumably an attorney admitted to practice, studies the search report and draws upon the background accumulated in the first part.  And renders an opinion.

I’d guess it would be very difficult for any service provider to commit to doing parts one, two, and three in a general way for a fixed price.

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Patent Trial and Appeal Board announces two-for-one sale

How did this two-for-one sale actually work out?  See my follow-on posting about this program.

US patent practitioners will recall a two-for-one sale offered by the USPTO’s Examining Corps back in 2011.  At that time the backlog of unexamined applications was so embarrassing that the USPTO came up with “Project Exchange”, aka the two-for-one sale.  That program offered an opportunity to get fast examination of a first case that was pending as of October of 2009, so long as the applicant expressly abandoned a second case that was likewise pending as of October of 2009.

Taking a page from that play book, the Patent Trial and Appeal Board has announced its own two-for-one sale, called the “Expedited Patent Appeal Pilot”.  If you have two ex parte appeals pending before the PTAB, you can abandon one of them and the PTAB will decide the other appeal fast.

Continue reading “Patent Trial and Appeal Board announces two-for-one sale”

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USPTO’s new Patent Application Alert Service

USPTO and Reed Tech have announced an interesting alert service.  You go to this web page and create a user ID.  And you set up one or more search terms of interest.  Every Thursday, when USPTO releases another set of published patent applications, the system will use your search terms and will let you know if there is some matching published patent application.

 

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Amending a US application that Is the basis of an IR?

A member of the E-Trademarks listserv asked this:

I have never filed via the Madrid Protocol, but I am considering filing one based on a recently filed US application. If the listing of goods in the US application are amended, are the IR and the subsequent designations automatically amended so that the goods are always the same? It would seem weird to have an IR and national designations with a different listing of goods.

Continue reading “Amending a US application that Is the basis of an IR?”