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Helping the Commissioner for Trademarks to smoke out non-domicile mailing addresses

In her new rules that went into effect on July 2, 2019, the Commissioner for Trademarks made clear that she wants to smoke out any foreign trademark applicant that is using a mailing address that is not the applicant’s foreign domicile address, so as to avoid having to hire US counsel. The Commissioner for Trademarks was quoted as saying  “… in most cases, a post office box address is not a domicile because you can’t live in a PO box.”  Until now, the Commissioner’s way of smoking out such non-domicile mailing addresses has been extremely unsophisticated — two tests are applied:

  • does the address listed in the trademark application explicitly say “box” as in “post office box”?  or
  • does the address say “in care of”?

When either of these two telltales is seen, the Examiner’s training since July 2, 2019 has been to require the applicant to reveal the applicant’s “domicile” address.  One form paragraph gets used if the address contains the forbidden characters “P O Box” and another form paragraph gets used if the address contains the forbidden words “in care of”.

Surely every reader of this blog, when learning of the Commissioner’s new Rules, realized that there are two ridiculously easy ways to circumvent this smoking-out process. Continue reading “Helping the Commissioner for Trademarks to smoke out non-domicile mailing addresses”

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The Patent Office absolutely trying to Do the Right Thing – IDSs in child cases

If you are a US patent practitioner, of course you should be subscribed to the EFS-Web listserv.  Here is a recent post to that listserv that prompted today’s blog article:

I swear I read something about a new PTO program for automatically listing all submitted and cited prior art on continuations and divisionals–to stop people from re-filing everything again. But, I cannot find anything today.

Was I dreaming? If not, is this working?

And yes there is a new PTO program for this, as I will explain. Continue reading “The Patent Office absolutely trying to Do the Right Thing – IDSs in child cases”

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Commissioner for Trademarks doubles down on “no post office boxes”

I have a client whose office is in a place that lacks reliable USPS postal delivery.  Because of the unreliability of the USPS postal delivery to the client’s office, the client uses a post office box to receive its mail.  For decades this client has been able to use its post office box in its relationship with the Commissioner for Trademarks.  Many of the trademark registration certificates from the USPTO that sit in my client’s safe-deposit box, bearing a gold seal and the signature of the Director of the USPTO, list my client’s post office box as the registrant’s address.  Each six-year and decade renewal that this client has filed in recent years years has repeated my client’s post office box as its address.

But not any longer.  On July 2, 2019, the USPTO published its Federal Register Notice Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants.  This notice promulgated et alia new Rules which the Commissioner construes as making it impossible for a trademark applicant or registrant to receive correspondence at a post office box.  And despite having been given multiple opportunities in recent months to soften its position on this, the Commissioner now has doubled down on its refusal to permit the use of a post office box to receive correspondence. Continue reading “Commissioner for Trademarks doubles down on “no post office boxes””

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Today is the last day to get your numbers in for the Tote Boards

On January 1, 2020 I invited everyone (blog post) to get your numbers in for the 2019 Tote Boards.  This includes:

  • the Eighth Annual US Design Patent Top Filers Tote Board
  • the Fifth Annual US Trademark Registration Top Filers Tote Board
  • the Fifth Annual US Utility Patent Top Filers Tote Board
  • the Third Annual US Plant Patent Top Filers Tote Board

These Tote Boards will rank the top patent and trademark firms for carrying out filings in 2019 in these categories.  The 2019 Tote Boards will join the previous fifteen Tote Boards which go back as far as 2012.

Today, January 31, is the last day to get your numbers in.

How many responses do we have so far?

  • As for the 2019 Trademark Tote Board, we have more than seventy firms responding, that have between them obtained more than eight thousand trademark registrations in 2019
  • As for the 2019 Utility Patent Tote Board, we have more than sixty firms responding, that have between them obtained more than forty thousand utility patents in 2019
  • As for the 2019 Design Patent Tote Board, we have more than sixty firms responding, that have between them obtained more than seven thousand design patents in 2019

Every year, some firm misses out by failing to get its numbers in by the closing date.  Don’t be that firm!  Get your numbers in before closing day which is today, January 31.  Click here for the:

  • response form for the 2019 (eighth annual) US design patent top filers tote board
  • response form for the 2019 (fifth annual) US trademark registration top filers tote board
  • response form for the 2019 (fifth annual) US utility patent top filers tote board
  • response form for the 2019 (third annual) US plant patent top filers tote board

 

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USPTO hosts PAIR forum, doesn’t invite PAIR users

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(Update on March 1, 2020:  A month has passed and I have still heard nothing back from Mr. Holcombe’s office in response to my telephone and email inquiries.)

Today I learned that yesterday the USPTO’s Chief Information Office, Mr. Henry Holcombe, hosted a forum on the topic of Private PAIR.  I don’t know how Mr. Holcombe chose his guest list.  But what astonishes me is that no invitation was extended to the PAIR listserv.

The PAIR listserv is a community of over four hundred patent practitioners who make daily use of the PAIR system. My guess is that many or most of the “coalition members” who got invited to this forum are companies that make money by scraping data from USPTO systems, not by paying money to the USPTO.  In contrast, the members of the PAIR listserv are paying customers of the USPTO, who collectively pay tens of millions of dollars to the USPTO annually.

Mr. Holcombe’s stated goal of addressing recent concerns, gathering input, and sharing some details about his path forward would have been well served by reaching out to the PAIR listserv.

I contacted Mr. Holcombe’s office about this but have not gotten any response.

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USPTO proposes to fix its Foreign Filing License rules

For more than three years now, there has been an urgent need for USPTO to fix a problem with its FFL rules, 37 CFR § 5.11 et seq.  See my blog article USPTO needs to update its Foreign Filing License rule (October 29, 2016).  After three years of being repeatedly reminded of this, USPTO has done the right thing and has published a proposed revision to its FFL rules.  You can read about it here:

Facilitating the Use of WIPO’s ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 5362, January 30, 2020.

Comments are due by March 30.  Twenty-one patent practitioners filed this comment. 

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Our speed test improved still more

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A week ago I blogged that we migrated our OPLF speed test from our office in Colorado to a server farm in Arizona.  At that moment our speed test was on a box that was connected to the rest of the world through 100base-T ethernet.  That meant that the fastest speed you would ever see in the speed test is 100 Mbps.  If your own Internet connection happened to be faster than 100 Mbps, then our speedtest would give you an unnecessarily pessimistic sense of the speed of your Internet connection.  Just now we took a step that removes this unnecessary pessimism.  Continue reading “Our speed test improved still more”

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USPTO dragging its feet on unplugging PDX

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(Update:  A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the USPTO to pull the plug on DAS.  See blog post.)

Yesterday in one of our cases, the USPTO retrieved an electronic certified copy of an EP priority application.  In and of itself, this was routine news, except that we had to learn about this happy event by accident.  Just accidentally I had this case open in Private PAIR and happened to click in IFW to see that the electronic certified copy had arrived. 

The key thing here is that if our US case had claimed priority from almost any other Office than EPO, we would have been told in an automatic way, by email, that the successful retrieval had taken place.  But no such automatic email arrived for this EP priority application.   Why is this bad situation the way it is?  Continue reading “USPTO dragging its feet on unplugging PDX”

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Getting your numbers in for the Tote Boards

On January 1, 2020 I invited everyone (blog post) to get your numbers in for the 2019 Tote Boards.  This includes:

  • the Eighth Annual US Design Patent Top Filers Tote Board
  • the Fifth Annual US Trademark Registration Top Filers Tote Board
  • the Fifth Annual US Utility Patent Top Filers Tote Board
  • the Third Annual US Plant Patent Top Filers Tote Board

These Tote Boards will rank the top patent and trademark firms for carrying out filings in 2019 in these categories.  The 2019 Tote Boards will join the previous fifteen Tote Boards which go back as far as 2012.

The closing date for getting in your numbers will be Friday, January 31, 2020.

How many responses do we have so far?

  • As for the 2019 Trademark Tote Board, we have more than forty-six firms responding, that have between them obtained more than eight thousand trademark registrations in 2019
  • As for the 2019 Utility Patent Tote Board, we have more than forty firms responding, that have between them obtained more than eleven thousand utility patents in 2019
  • As for the 2019 Design Patent Tote Board, we have more than forty-three firms responding, that have between them obtained more than three thousand design patents in 2019

Every year, some firm misses out by failing to get its numbers in by the closing date.  Don’t be that firm!  Get your numbers in before closing day which is January 31.  Click here for the:

  • response form for the 2019 (eighth annual) US design patent top filers tote board
  • response form for the 2019 (fifth annual) US trademark registration top filers tote board
  • response form for the 2019 (fifth annual) US utility patent top filers tote board
  • response form for the 2019 (third annual) US plant patent top filers tote board