Patents: What You Need to Know

By Karsyn Koon

What is a patent? What are the benefits to filing?

A U.S. patent gives an inventor the right to “exclude others from making, using, offering for sale, or selling” an invention or “importing” the invention into the U.S. A plant patent provides additional rights on the “parts” of plants (e.g., a plant patent on an apple variety would include rights on the apples from the plant variety). What is granted is not the right to make, use, offer for sale, sell or import the invention, but the right to stop others from doing so. If someone infringes on your patent, you may initiate legal action. U.S. patents are effective only within the U.S. and its territories and possessions.

• Validation: Utility and plant patents are valid for up to 20 years from the date of the first non-provisional application for the patent was filed  
• What can be patented: 
  • Look at each type of patent definition  
  • All inventions must meet four conditions: 
    • Able to be used (the invention must work and cannot just be a theory)
    • A clear description of how to make and use the invention
    • New, or “novel” (something not done before)
    • “Not obvious,” as related to a change to something(s) already invented 
  • Patent law defines the limits of what can be patented:
    • For example, laws of nature, physical phenomena, and abstract ideas cannot be patented, nor can only an idea or suggestion
    • Other restrictions include the patenting of inventions exclusively related to nuclear material or atomic energy in an atomic weapon (see MPEP 2104.01)
    • However, the subject matter that can be protected by patents is vast and varied
    • For example, even some methods of doing business may be patented if there is a technological innovation involved 
  • What cannot be patented: what is not eligible for protection
    • Laws of nature, abstract ideas, naturally occurring phenomena, so-called naked business methods (i.e., not tethered to any kind of machine or apparatus), inventions only capable of an illegal purpose, atomic weapons, tax strategies, and human organisms (which the statute does not define but likely relates to embryos and fetuses)
    • Notwithstanding, for the most part, chances are that whatever you have invented can be characterized so that eligibility will not be a significant impediment to exclusive rights. 
• Who can apply: 
  • You (the inventor) or your legal representative may apply for a patent 
  • Exceptions to the strict USPTO rules: 
    • If the inventor has died, is legally incapacitated, refuses to apply, or cannot be found. The applicant must have a personal connection to the inventor, such as being listed in their estate
    • Two or more people inventing something together may apply for a patent as joint inventors; A person (e.g., a company) to whom an inventor has assigned an invention, or to whom the inventor is obligated (e.g., contractually required) to assign an invention 
  • Who cannot apply: 
    • If you only contribute money but are not the inventor or co-inventor, you cannot be named as an inventor or co-inventor in the patent application
    • If you are not the inventor, and the inventor(s) did not assign the invention to you or does not have an obligation to assign the invention to you, you may not apply for a patent
    • USPTO employees cannot apply for or own a patent unless they inherit it 
• Foreign applicants: 
  • You may apply for a U.S. patent whether you’re a U.S. citizen or not. No U.S. patent can be issued if, before you apply in the United States, the invention was patented abroad by you or your legal representative and if the foreign application was filed more than 12 months before the U.S. filing. Six months are allowed in the case of designs. Foreign inventors should pay attention to other special requirements
    • Only applies to the U.S. 
• Foreign patents and treaties: 
  • Applicants wishing patent protection in other countries must apply for a patent in each of the other countries or patent offices 
    • Most patent laws vary by country or territory, and it is up to the applicant to handle the differences  
  • Paris Convention for the Protection of Intellectual Property:
    • A treaty relating to patents (adhered to by 176 countries at last count, including the United States) that provides that each country guarantees to citizens of the other countries the same patent and trademark rights given to its own citizens 
    • Also provides for the right of priority with patents, trademarks, and industrial designs (design patents) 
      • This right means that based on a regular first application filed in one member country, you may (within a certain time period) apply for protection in all other member countries 
      • These later applications will then be regarded as if filed on the same day as the first application
      • Thus, these later applicants will have priority over applications for the same invention that may have been filed by others during the same time period
      • Lasts for 12 months  
  • Patent Cooperation Treaty
    • Presently adhered to by more than 150 countries, including the United States
    • It facilitates the filing of patent applications on the same invention in member countries by providing, among other things, centralized filing procedures and a standardized application format
    • Lasts 30 months from earliest claim for priority 
  • The Hague Agreement 
    • An international registration system offering the possibility of protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (called Contracting Parties)
    • It involves filing a single international application in a single language, either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of your Contracting Party 

Rights: 

• “It is important to note, however, that patents do not protect ideas, but rather protect inventions that exhibit subject matter deemed allowable. In other words, any exclusive rights you obtain can only protect something that is considered patent eligible 
  • Generally speaking, in the United States the view of what is eligible for protection has historically been quite broad. Machines, compounds and processes are all eligible, for example.” 
• The U.S. Constitution:
  • Patent rights were primarily advocated for by James Madison – argued that there would be issues or a lack of motivation for innovation without strong rights/legal protection 
  • Power of protection given to Congress by Article I, Section 8, Clause 8; “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;”
  • The Intellectual Property Clause is a qualified grant of power, which does limit Congressional discretion in at least some ways
    • For example, Congress may not simply create an exclusive right with a term of unlimited duration given that the express language of the Constitution says the rights may only be given for “limited times.”
  • “Exclusive rights are provided for a limited time as an incentive to inventors, entrepreneurs and corporations to engage in research and development, to spend the time, energy and capital resources necessary to create useful inventions; which will hopefully have a positive effect on society through the introduction of new products and processes of manufacture into the economy, including lifesaving treatments and cures.  See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974).” (Quinn, 2016). 
  • “The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.” (USPTO, n/a). 
    • “Gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same.”
    • Basically, gives ownership of the idea to the inventor for a limited time under a limited scope, as well as protection against certain definitions of infringement 

Types of Patents: 

• Utility patents
  • Also known as nonprovisional applications: 
    • This may be issued as a patent if all patentability requirements are met. A nonprovisional utility application includes: 
      • A specification (description and claims)
      • Drawings (when necessary)
      • An oath or declaration
      • Filing, search, and examination fees 
      • All application documents must be in English, or a translation into English will be required, along with a fee set in 37 CFR 1.17(i). 
  • Utility patents may be granted to anyone who invents or discovers a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvements of these.
  • The elements of a nonprovisional utility application: 
    • Application transmittal form 
    • Fee transmittal form 
    • Application data sheet
    • Specification
    • Drawings
    • Executed oath or declaration  
• Design patents  
  • Also known as provisional applications:
    • This quick, inexpensive way for you to establish a U.S. filing date for your invention can be claimed in a later-filed nonprovisional application. A provisional application is automatically abandoned 12 months after its filing date and is not examined.
    • If you decide to initially file a provisional application, you must file a corresponding nonprovisional application during the 12-month pendency period of the provisional in order to benefit from the earlier provisional filing. Provisionals have fewer requirements than non-provisionals — for example, claims and an oath/declaration are not required.
  • Patent laws provide for the granting of design patents to anyone who has invented a new, original ornamental design for an article of manufacture. The ornamental characteristics must be embodied in or applied to such an article. The subject matter may relate to the configuration or shape of an article, surface ornamentation applied to it, or the combination of both. A surface ornamentation design is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern applied to an article of manufacture. The design patent protects only the appearance of an article, not its functional features. The proceedings relating to the granting of design patents are similar to those for other patents, with a few differences.
  • The elements of the design application: 
    • Design application transmittal form 
    • Fee transmittal form 
    • Application data sheet (see § 1.76)
    • Specification 
    • Drawings or photographs 
    • The inventor’s oath or declaration 
• Plant patents
  • The law also provides for the granting of a patent to anyone inventing or discovering and asexually reproducing any distinct and new variety of plant. This includes cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
  • Also known as provisional applications.

Resources: 

https://www.uspto.gov/patents/basics/essentials

https://www.uspto.gov/patents/basics/apply

What is a patent and where do patent rights come from?

https://www.bitlaw.com/source/cases/patent/index.html

https://www.bitlaw.com/patent/rights.html

Bad Spaniels vs. Jack Daniel’s: Is It Parody?

By Karsyn Koon

Facts: 

• Jack Daniel’s is a popular alcohol brand that is primarily known for its unique whiskey. Jack Daniel’s Properties owns a number of trademarks in relation to this specific product, such as the shape of the bottle and the graphics on its front. The protection of these trademarks was brought into question when VIP Products created its own product called “Bad Spaniels,” a dog toy meant to mimic the whiskey merchandise. When the former company demanded that VIP Products stop selling the toy, VIP Products filed a suit “seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). VIP Products rejected any accusations of infringement and justified their actions using the Rogers Test laid out by case precedent. The Rogers Test was created from Rogers vs. Grimaldi (1989) and determines whether the use of a third-party mark in one’s own work violates the Lanham Act. VIP goes on to defend itself against claims of dilution by pointing out its product is a parody of Jack Daniel’s whiskey and therefore ought to be protected under statute 15 U.S.C. §1125(c)(3)(A)(ii). The case went before the U.S. Supreme Court solely in relation to the infringement aspect of the issue and whether or not the Rogers Test is appropriately applicable here.  

Procedural Posture: 

• District court: decided in favor of Jack Daniel’s 
• The Court of Appeals: reversed under the decision that the Rogers test does apply, remanded the case to the District Court  
• District Court: granted summary judgement to VIP on infringement only 
• The Court of Appeals: affirmed 

Issue: 

• Whether the Rogers test applies in this case of infringement, in which another entity’s trademarks are used as one’s own trademarks. 

Holding: 

• “When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.” (Jack Daniel’s Properties, Inc. v. VIP Products LLC, 2023) 

Rationale: 

• SCOTUS contends that the purpose of the Rogers test was “for titles of “artistic works” based on its view that such titles have an “expressive element” implicating “First Amendment values” and carry only a “slight risk” of confusing consumers about the “source or content” of the underlying work.” 875 F. 2d, at 998–1000. The test has been further defined by lower courts as a case “in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function” and used Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894, 901 as an example. In this case, the relevant court determined that the use of “Barbie Girl” in the song was “not [as] a source identifier.” Based on these lines of thought, the Supreme Court defines the Rogers test as “a cabined doctrine: It has not insulated from ordinary trademark scrutiny the use of trademarks as trademarks.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). SCOTUS then used that definition to determine that the test in question does not apply in cases in which one entity uses another’s trademark as their own due to the high likelihood of consumer confusion. The Supreme Court also rejected any arguments that the First Amendment required cases like these to be heard because marks cannot be used as source identifiers. The idea that parody is exempt from the requirements of the Rogers test is not the opinion of the superior court and goes against the express purpose of Congress’ limit on the “fair-use exclusion for parody.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). The court then remanded any decision on the issue of consumer confusion in relation to standard trademark analysis to the lower courts. 

Sources: https://www.supremecourt.gov/docket/docketfiles/html/public/22-148.html  

Golde, K. (2023, February 26). Jack Daniel’s Properties, Inc. v. VIP Products LLC. SCOTUSblog. https://www.scotusblog.com/case-files/cases/jack-daniels-properties-inc-v-vip-products-llc-2/  

Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U. S. ____ (2023). 

“Trump too Small” – New SCOTUS Trademark Case

By Karsyn Koon (June 12, 2023)

Facts: The United States Supreme Court has recently granted certiorari to hear a case regarding U.S. trademark law. The dispute is between individual Steve Elster (a California attorney) and the United States Patent and Trademark Office (USPTO). Elster wishes to trademark the phrase “Trump too small” to put the slogan on t-shirts and hats as a method of pushing his political commentary. He says the phrase comes from a presidential primary debate in late February of 2016 in which Florida GOP Senator Marco Rubio mocked then-presidential candidate Donald Trump for his “small hands.” Rubio’s comments quickly became one of the highlights of the event. Elster justifies his efforts, claiming his goal is to “convey that some features of President Trump and his policies are diminutive.” His application to the USPTO was initially denied due to the use of the word ‘Trump,’ namely because the public may construe it as a reference to former U.S. President Donald Trump. The organization cited “Section 2(c) of the Lanham Act, that prohibits the registration of a trademark that uses the name of another living person without that individual’s permission.” (Howe, 2023). Therefore, the slogan requires Trump’s permission to be used. Elster appealed to the USPTO’s Trademark Trial and Appeal Board (TTAB). His registration was denied once again.

Appellate Court Decision: In the case of in re Elster (26 F.4th 1328 (Fed. Cir. 2022)), the U.S. Court of Appeals for the Federal Circuit reversed the decision, citing a potential violation of Elster’s First Amendment rights from the trademark denial. As stated by the Federal Circuit in Mills v. Alabama and N.Y. Times Co. v. Sullivan, a major purpose of the First Amendment is to protect speech and discussion on government affairs and/or public questions. The Federal Circuit also derived their logic from “the right to criticize public men” is “[o]ne of the prerogatives of American citizenship,” as found in Baumgartner v. United States (322 U.S. 665, 673–74 (1944)). Additionally, the Federal Circuit rebuked the TTAB’s argument that the Lanham Act 60 Stat. 427 (codified at 15 U.S.C. § 1051) provisions are comparable to the restrictions placed on the First Amendment in a limited public forum, such as the inability to yell “fire” in a crowded theater. The opinion noted that there is no larger interest of public safety or government interest in this case, therefore the argument is null and void. In short, the specific right being challenged in this case is the freedom of speech concerning government topics and public affairs. The Federal Circuit claims that the central issue is “whether section 2(c) can legally disadvantage the speech at issue…” (In re Elster, 2022). They determined that yes, the section does lend a legal disadvantage to the speech at issue and therefore violates the Constitution.

Issues for the US Supreme Court: This will be an interesting case for SCOTUS, as the Court decides on the merits between the Lanham Act and other trademark legislation versus the rights outlined in the First Amendment. Will Elster be allowed to use Trump’s name in his trademark? US Supreme Court granted cert to the case after hearing the argument from the Federal Circuit that the USPTO decision to deny Elster trademark registration was based on unconstitutional legislation (Section 2(c) of the Lanham Act). Previous court cases on similar matters include Matal v. Tam and Iancu v. Brunetti, both of which ruled provisions of the Lanham Act unconstitutional. The court must ascertain as to whether or not the rule laid out by Section 2 (c) of the Lanham Act restricting the use of individual names in trademarks is an infringement upon the First Amendment. It is important to note that this case focuses on public figures, or rather individuals who are widely known and recognized by society. The USPTO argues that it is not a violation of the Constitution, but rather a protection in and of itself by “protecting the named individual’s rights of privacy and publicity and protecting consumers against source deception” (USPTO, 2022). Elster argues that strict scrutiny should apply to this case, and that the provisions highlighted in the Lanham Act do not express a government interest and therefore do not outweigh the First Amendment.

The Main Issue: “[t]he question here is whether the government has an interest in limiting speech on privacy or publicity grounds if that speech involves criticism of government officials— speech that is otherwise at the heart of the First Amendment,” (In re Elster, 2022).

This case may serve to limit legislation such as the Lanham Act as it applies to individual constitutional rights. The case will be heard by the Supreme Court next term.

Sources:

de Vogue, A. (2023, June 5). Supreme Court Agrees to Hear Trademark Dispute Over “Trump too Small” Slogan. WENY News. https://www.weny.com/story/49033489/supreme-court-agrees-to-hear-trademark-dispute-over-trump-too-small-slogan\

Howe, A. (2023, June 5). Justices Take Up “Trump Too Small” Trademark Case. SCOTUSblog. https://www.scotusblog.com/2023/06/justices-take-up-trump-too-small-trademark-case/

In re Elster (26 F.4th 1328 February 24, 2022).

NEW USPTO TRADEMARK PROCEDURES FOR RESPONDING TO OFFICE ACTIONS

By Enrique Tarazona

On November 17, 2021, the USPTO published in the Federal Register a final rule amending the Rules of Practice in Trademark Cases to implement the provisions of the TMA, this is 86 FR 64300. 

As part of that final rule, the USPTO amended 37 CFR 2.62 to:
        – establish a three-month period for responses to Office actions on applications under sections 1 and/or 44 of the Trademark Act (Act), 
        – and provide the option of requesting a single three-month extension of the time period, subject to the payment of a fee. 

            The new USPTO fee is $125, regardless of entity size. 

The three-month response period and extension provisions for Office actions issued in connection with applications became effective December 3, 2022. Thus, Office actions received on or after this date are subject to the new rules.

The three-month response period and extension also applied to Office actions issued in connection with post-registration maintenance and renewal filings. The deadline for responses to Office actions issued in connection with applications under section 66(a) of the Act was not changed in that final rule and remains six months.
            The three-month response period and extension provisions for Office actions issued with respect to post-registration maintenance filings will be effective October 7, 2023.

            Previously, applicants could wait the entirety of a six-month response period in which to decide whether to file and actually file a response.  Now, the applicant must at least make a decision as to whether to file a request for a three-month extension of time, resulting in additional USPTO fees.

            So if you are a trademark applicant, you should be more proactive in reviewing Office actions if you want to avoid additional fees.

New USPTO Trademark Guidelines: Three Things You Should Know

By Judy Lu

Photo designed on Canvas

New USPTO Trademark Guidelines became effective on February 15, 2020. The revised examination guidelines as the final rule supersedes all previous guidance, and there are three major changes you should know. 

Email address request

The requirement of email addresses is a big change in these new examination guidelines. The new rule requires new trademark applications filed on or after Feb. 15 to include an email address of the applicant for receiving a filing date. If an applicant or registrant is represented by an attorney, the attorney’s email must be included as well. The trademark owner’s email address “cannot be identical to the listed primary correspondence email address of their attorney.”

The USPTO suggests applicants or attorneys to create an email address exclusively for communication and correspondence between the USPTO, but personal email addresses and business email addresses are acceptable. 

The email address will not appear in the “Trademark Status and Document Retrieval (TSDR) status tab but in the filed document in the TSDR documents tab.

Photo by Stuart Miles from Stockvault

Specimen webpage URL requirement 

For specimen trademark applications filed on or after Feb. 15, the USPTO requires applicants to provide the URL of the specimen and the date the webpage was accessed or printed for verification. The reason for requesting the URL is because of the “transitory nature of Internet postings.” This requirement was also applied to further specify items that are not proper specimens. 

The required date can be the date presented anywhere on the specimen webpage. Applicants can include the URL in the TEAS (Trademark Electronic Application System) form, or add it in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.

Exceptions for paper submissions

The USPTO published a final rule on July 31, 2019, which requires all applicants to fill trademark submissions online by using TEAS. A few exceptions include “grandfathered” applications. However, if these “grandfathered” applications were filed by using TEAS, these applications are not exempted anymore. 

There are more exceptions from submitting electronically applied to applications filed on or after Feb. 15. First of all, if applicants, registrants or parties are from a country that “is a member of the Trademark Law Treaty” but “not the Singapore Treaty on the Law of Trademarks (STLT), they do not need to submit applications electronically. These countries only include Bahrain, Bosnia and Herzegovina, Chile, Colombia, Costa Rica, Cyprus, Czech Republic, Dominican Republic, Egypt, El Salvador, Guatemala, Honduras, Hungary, Indonesia, Monaco, Montenegro, Morocco, Nicaragua, Oman, Panama, Slovenia, Sri Lanka, Turkey, and Uzbekistan.

Secondly, if a specimen is for a non-traditional mark, such as a scent mark, applicants should submit the appropriate TEAS form and then mail the specimen, since examining attorneys need to smell it. 

Reference

Examination Guide 1-20 (Revised) https://www.uspto.gov/sites/default/files/documents/TM-ExamGuide-MEF-1-20.pdf

Patenting Cannabis in the United States

by Skyelar Reel

The expansion of the legal usage of cannabis in states throughout the US emphasizes the relevance of intellectual property protection as with any new and expanding industry. Thus, it is natural that the cannabis industry would seek to obtain protection for their inventions as soon as possible, just like anyone else.

However, since cannabis is still listed as a Schedule I drug under the Controlled Substances Act and illegal under federal law, obtaining a patent can pose some significant challenges (“Drug Scheduling”).

Fortunately, when applying for a patent, the inventor is not required to prove that the product is lawfully used in the US. (South).  The patent will simply enforce the right of the owner to exclude others from practicing the invention.

The previous Plant Patent Act of 1930 acknowledged the difficulties with patents and plants, such as “unpatentable products of nature” and inadequacy to describe plants with words (South). It also established that “asexually-reproduced plants” or plants reproduced could be patented. However, despite this, plants have very limited patent protection.

If infringement occurs, the patent holder must prove the alleged infringer used asexual-reproduction and the “reproduced plant is genetically identical to its parent;” thus, sexual reproduction provides infringers an easy way out (South). Furthermore, due to the difficulty in describing the usage of the product, applicants  may deposit biological material, such as a seed, to “satisfy the written description requirements” (Baldwin).

The USDA established the Plant Variety Protection Act of 1970 (“PVPA”) which “provides a breeder with protection for sexually-reproduced plants” (South). It does, however, require “applicants to submit at least 3,000 seeds to a depository at Fort Collins, Colorado” (South). From here, breeders encounter the dilemma of whether or not to hand over their product to a federal agency.

Another alternative is utility patents, which provide protection for sexually and asexually reproduced plants as well as formulations and other products from the plant in the cannabis industry. However, the broader range of protection under utility patents poses some challenges such as a “more rigorous written description requirement” as well as enable others “to make and use the invention,” also known as the enablement requirement (South).

The enablement requirement poses the largest challenge in that it can be difficult for an applicant to provide sufficient detail about their invention’s plant parts, tissues, cells, and more.

For example, when BioTech Institute LLC attempted to obtain a patent, the USPTO rejected its application on the grounds that it failed “to satisfy the enablement requirement” (South). The USPTO acknowledged that the company failed to provide information about how others may be able to grow the exact same plant; thus, it is not readily available to the public.

Furthermore, due to the difficulty of enabling others to make the plant, an inventor may provide biological material at a publicly-accessible location approved by the USPTO (Baldwin). This allows the public the ability to obtain a sample of the biological material and reproduce the plant once the patent expires.

While intellectual property protection in the cannabis industry is possible, there are many challenges an applicant may face when considering what type of protection they want. However, cannabis patent protection is possible and can be quite effective, especially as the cannabis industry continues to expand.

References:

South, Clinton, and Brian Shortell. “Patenting Cannabis: Possibilities and Pitfalls.” IPWatchdog.com | Patents & Patent Law, 11 Feb. 2020, www.ipwatchdog.com/2020/02/07/patenting-cannabis-possibilities-pitfalls/id=118615/.

“Drug Scheduling.” DEA, www.dea.gov/drug-scheduling.

Baldwin, Alison, et al. “Protecting Cannabis – Are Plant Patents Cool Now?” JD Supra, 6 Dec. 2017, www.jdsupra.com/legalnews/protecting-cannabis-are-plant-patents-34919/.

Landau, Nicholas J., and James W. Wright. “Difficulties Face Cannabis Patents, Trademarks, and Other Forms of Intellectual Property.” Bradley, 30 Apr. 2019, www.bradley.com/insights/publications/2019/04/difficulties-face-cannabis-patents-trademarks-a nd-other-forms-of-intellectual-property.

Updates: USPTO’s Responses to COVID-19

Judy Lu

Photo by Macau Photo Agency on Unsplash

Due to the widespread of COVID-19, the USPTO is making accommodations to minimize the effects of coronavirus. 

37 CFR 1.183 “suspension of rules” and 37 CFR 2.146 (a) (5) state that “petition may be taken to the director in an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.” The USPTO views COVID-19 to be an “extraordinary situation.” 

On March 19, the USPTO made changes to its operation hours, the event schedule, petition fees, signature requirements, and potentially more changes will be in the future.

1. USPTO waived original handwritten signature requirement

Regarding the “extraordinary situation,” the USPTO is waiving the signature requirements of 37 CFR 1.4(e)(1) for certain correspondence of “patent cases, enrollment and disciplinary investigations, or disciplinary proceedings” and (2) “payments by credit cards where the payment is not being made via the Office’s electronic filing systems.” The Office noted that the requirements of 37 CFR 1.4(e)(1) and (2) are the only USPTO requirements for original handwritten, ink signatures, and the USPTO has no other requirements for original handwritten, ink signatures.

2. USPTO waived the petition fee to revive an abandoned application or reinstate a canceled/expired registration. 

On March 16, the USPTO announced that “for patent applicants or patent owners who were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak,” the petition fees in 37 CFR l .17(m) “for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, or for the delayed response by the patent owner in any reexamination proceeding,” would be waived if the patent applicant or patent owner files the reply with a petition under 37 CPR 1.137(a), revival on the basis of unintentional delay. 

Applicants should include a statement that the delay in filing the required reply was due to the effect of coronavirus. In addition, the USPTO suggested applicants or patent owners to file the petition accompanied by the required reply and a copy of this notice. To be eligible for waiving the petition fee, the petition “must be filed not later than two months of the issue date of the notice of abandonment or the notification that reexamination prosecution.”

3. USPTO offices closed to the public

Beginning Monday, March 16, 2020 all USPTO offices closed to the public, but they would remain open for employees, contractors, and those with access badges. The closure of offices, however, would not interrupt the USPTO operations, and deadlines for patent and trademark applications would not be extended.

4. Interviews, oral hearings and in-person meetings are held virtually 

Interviews, oral hearings and other in-person meetings on or after Friday, March 13, 2020 would be conducted virtually by telephone or video. The USPTO would send further notice and instructions to relevant applicants, examiner and examining attorneys, and other involved parties. 

5. Up-to-date events schedule

Scheduled events, such as “2020 New Mexico Tech Inventors & Entrepreneurs Workshop” that was supposed to be held on March 27, were canceled. Other upcoming events, including “Learn about mechanical disciplines at the TC 3600 and TC 3700 Customer Partnership Meeting” and “Agents and attorneys: Learn to think like an examiner (STEPP) 3-day course” that would be held in April, were postponed. The USPTO changed some events to teleconference only and rescheduled events such as “Tour the Silicon Valley USPTO.”

References

USPTO notices regarding COVID-19 https://www.uspto.gov/coronavirus

1002 Petitions to the Director of the USPTO [R-07.2015] https://www.uspto.gov/web/offices/pac/mpep/s1002.html

TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1700d1e29.html

Waiver of Original Handwritten Signature Requirement Due to the COVID-19 outbreak https://www.uspto.gov/sites/default/files/documents/Waiver%20of%20Original%20Handwritten%20Signature%20Requirement%20Due%20to%20the%20COVID-19%20Outbreak%20–%20Signed%20and%20Dated%20–%203-19-2020.pdf

501 Filing Papers With the U.S. Patent and Trademark Office [R-07.2015] https://www.uspto.gov/web/offices/pac/mpep/s501.html

Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf

USPTO Fee Schedule https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

2668 Petition for Entry of Late Papers for Revival of Reexamination Proceeding [R-07.2015] https://www.uspto.gov/web/offices/pac/mpep/s2668.html

USPTO offices closed to the public https://www.uspto.gov/about-us/news-updates/uspto-offices-closed-public

USPTO update on in-person meetings https://www.uspto.gov/about-us/news-updates/uspto-update-person-meetings

Events https://www.uspto.gov/about-us/events

How LOT Network Ameliorates PAE Issues

By Judy Lu

Photo by Bill Oxford from Unsplash

LOT Network (License on Transfer) is a nonprofit organization that protects companies’ patents against PAEs (Patent Assertion Entities). More than 620 companies have jointed the LOT community since 2014 when LOT was established.

What are PAEs?

PAEs are companies that acquire patents and gain revenues from licensing royalties and filing lawsuits against accused infringers. PAEs often buy their patents from third parties instead of obtaining them directly from the USPTO through prosecution. While some PAEs do have their own research and further development, most of them usually do not produce, distribute or sell patented products.

The term PAE is used interchangeably with the term NPE (Non-Practicing Entity), which also represents an entity that owns patents but does not create or sell products.

Small and medium sized businesses (SMEs) are the most vulnerable targets. 80 percent of infringement cases filed by NPEs in 2018 were against SMEs.  

Companies in the LOT Network represent 35 countries and range from software, hardware and automotive to financial services entertainment and retail These companies are immune from litigation from more than 2.2 million patents worldwide the network. Around two-thirds of LOT members are startups, but big companies such as Google and Alibaba are LOT members as well. 

Photo by Stuart Miles from Stockvault

How can LOT Network members benefit?

If one LOT member sells or transfers its patent to a PAE, all LOT members are granted a lifetime license to that patent automatically. Therefore, when a PAE sues for infringing that patent, all LOT members are protected from it no matter who is the patent owner. 

On the one hand, both suppliers and customers can get protection from patents that come from outside of their ecosystem. The more companies that join the LOT Network, the safer members are since more patent licenses are covered. Suppliers will become more reliable because buyers do not need to worry about potential lawsuits to the patent in which they invested. On the other hand, joining the LOT will not affect how members use their patents traditionally, such as cross-licensing, asserting and selling. 

How does the LOT member system work?

Any institute or individual such as companies, universities or individual inventors can join the LOT community. Companies do not need to list owned patents and report revenue, and even do not need to own patents.

LOT members need to pay different annual fees depending on their annual revenue. As a nonprofit organization, LOT exempts any annual fee for companies that have less than 25 million annual revenue. 

If a company decides to withdraw from the LOT Network, the company keeps its licenses but leaves the LOT community licenses that were transferred or sold to a PAE when it was still a member. In addition, the withdrawn company is not protected from patents that have not been transferred or sold to a PAE.

References

LOT Network https://lotnet.com

Patent Assertion Entity Activity: an FTC study. (2016). https://www.ftc.gov/system/files/documents/reports/patent-assertion-entity-activity-ftc-study/p131203_patent_assertion_entity_activity_an_ftc_study_0.pdf 

Aravind, A. et al. INTRODUCTION TO THE STANFORD NPE LITIGATION DATASET. https://law.stanford.edu/wp-content/uploads/2017/10/Introduction-to-the-Stanford-NPE-Litigation-Dataset-10.23.2017.pdf

Q3 2018: Patent Dispute Report. https://www.unifiedpatents.com/insights/2018/9/28/q3-2018-patent-dispute-report?gclid=EAIaIQobChMInIr8yIPe5wIVA56fCh2nrgZREAAYASAAEgJL-vD_BwE 

The Patent Troll Problem. https://lotnet.com/wp-content/uploads/2016/02/Patent-trolls-infograph.pdf

Evolving Global IP System Drives Participation in LOT Network. https://markets.businessinsider.com/news/stocks/evolving-global-ip-system-drives-participation-in-lot-network-1028690732LOT AGREEMENT. http://lotnet.com/wp-content/uploads/2019/04/LOT-Agreement-v2.0-5-10-18-Execution-Version.pdf?eid=CEiG6rBp1RWGAb4lkU%2Bxgtf4tfBWGlCUmwgh6rQCoCHQYp5c9nwznqPQpketFKqosu6WjGMEkQqczqfcheQ%2Fr5wrjSQZ2ttVLZHPEOs8RAsSkPq6

EXTENDED AGAIN! The AFCP 2.0 Program

By Nicole Anne Hia

The After Final Consideration Pilot 2.0 (AFCP 2.0) has yet again been extended by the U.S. Patent and Trademark Office (USPTO) until September 30, 2020. The main objective of this program is to help promote compact prosecution and bolster collaboration between examiners and stakeholders. 

How did the AFCP 2.0 start? 

In 2012, the After Final Consideration Pilot (AFCP) was first introduced as an attempt to better facilitate the progression of cases nearing completion, without having to file for a Request for Continued Examination (RCE). This program allowed for the applicant to engage with the examiner beyond what would be allowed previously under the rules, should the examiner decide that the response could be fully considered within three hours for plant and utility applications, or within an hour for design patent applications. 

However, the first version did not garner much positive response and proved to be not as effective in achieving their goals as initially expected. As such, in May 2013, the AFCP 2.0 took over the original pilot as its successor with some new improvements, and was originally scheduled to run only through September 30, 2013. 

AFCP vs. AFCP 2.0: What’s the difference?

According to a notice published by the USPTO in the Volume 78, Issue 96 of the Federal Register (78 FR 29117), there are three main differences between the original AFCP and AFCP 2.0:

1. To participate in the latter, an applicant must submit a request to indicate so. 
   
2. A response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. 
   
3. If examiner’s review of the response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response and to provide them with feedback on their findings. This is indicated in request form for the AFCP 2.0 (PTO/SB/434), which includes a statement that the applicant will be willing to participate in an interview initiated by the examiner.

So, how does the AFCP 2.0 work? 

To be eligible, the application must be a utility, design, or plant non-provisional application, and must have received a final rejection. This includes national stage and continuing applications, but does not extend to reissue and reexamination ones.

Thereafter, an applicant must file a response under 37 CFR §1.116, comprising a request for consideration under the AFCP 2.0 and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. An applicant may only file one request for consideration under the program, per outstanding final rejection.

The applicant will then receive a specialized AFCP 2.0 form (PTO-2323) in response. This form will act as a customized communication channel, indicating the submission’s status and if applicable, may also come with a summary of the interview. It is designed to show more clearly the examiner’s treatment of the submission. 

Until when is the AFCP 2.0 available? 

As mentioned earlier, the AFCP 2.0 has been extended to run until September 30, 2020. This means that any request to consider a response after final rejection under the program must be filed on or before the specified date. 

Since its launch, the AFCP 2.0 has received generally positive feedback from applicants and patent practitioners. Even if unsuccessful, applicants can also take this opportunity to better understand how they can present stronger amendments in subsequent filings for RCE. 

That being said, as always, the option to request an interview with the examiner under MPEP 713, is still available to you irrespective of whether the submission was considered under AFCP 2.0. 

USPTO – TEAS NEW LOGIN REQUIREMENT

By Nathan Wahnon

Trademark Alert

Starting October 26, 2019, the USPTO will be changing how customers access the Trademark Electronic Application System (TEAS) and TEASi (international). As from the above mentioned date, you will be required to log in to a USPTO.gov account with two-step authentication in order to access and file forms.

Additionally, your TEAS and TEASi sessions will time out after 30 minutes of inactivity. The USPTO asserts that these imminent changes will allow them to better track filing activity and reduce misuse of their electronic forms.

Changes occurring on October 26

• Access to forms: When opening any TEAS or TEASi form, you will be prompted to log in to your USPTO.gov account with a two-step authentication. Upon initiating the login process, you will be sent an authentication code which you will then have to enter in order to access the form.

You will be able to choose your preferred method when it comes to receiving the code; be it: email, phone call or an authenticator application. Once you authenticate, you can log in and out of your account for up to 24 hours without having to enter a new authentication code.

• TEAS/TEASi time out: After 30 minutes of inactivity your TEAS or TEASi session will time out. You will receive a warning after 25 minutes of inactivity. When your session times out, information you have entered in the form will not be saved.

Your session can be renewed by choosing to continue when you receive the inactivity warning. Alternatively, you can keep your session active by clicking the TEAS navigation buttons at the bottom of the form (Go, Back, Continue, etc.). In order to complete a new application efficiently, it is advised to review the applicable filing requirements needed for your specific application.

How to prepare for the new TEAS login requirement

In preparation for the October 26 effective date, the USPTO will be hosting a free webinar on Tuesday 8, October 3-4p.m. ET, in order to elucidate the new mandatory login requirement for the Trademark Electronic Application System (TEAS) and TEASi (international).

During the webinar they will demonstrate how to set up your USPTO.gov account and log in with two-step authentication. Furthermore, it will provide the chance for you to submit your questions and comments using the webinar chat feature.

Exemption for electronic signatures

USPTO customers using e-signature to sign TEAS forms or using the TEASi “send for review” feature will not be required to log in. For example, if an attorney requests a client to sign a TEAS form electronically, the client will not need to log in to the system to sign the form.