USPTO issues new Cannabis Trademark Guidelines

The USPTO has issued new guidelines regarding cannabis-derived goods and services.  The guidelines were issued on May 2, 2019 and can be found here.  The new guidelines explain that the 2018 Farm Bill exempts hemp, which is defined as cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis.

Therefore, for trademark applications that identify goods and or services encompassing cannabis or CBD, the 2018 Farm Bill probably removes the CSA as a ground for refusal of the application so long as:  (1) the good and/or services are derived from help;  (2) The identification of goods and/or services specify that the hemp products contain less than 0.3% THC; and (3) the application was filed on or after Dec 20, 2018, except for prior filed application, the applicants have the option of amending the filing date and filing basis of the application to over the CSA as a ground of refusal.

However, be aware that hemp related goods and/or services may still raise legal issues under other laws include the Federal Food Drug and Cosmetic Act (FDCA).

USPTO hosting a Women’s Entrepreneurship Symposium

Join the USPTO for the Women’s Entrepreneurship Symposium on May 14 at the USPTO in Alexandria, Virginia.

This free half-day symposium will bring together leaders of industry, government, and education. Topics covered at the Symposium will be the under-representation of women in scientific research and patenting, the economic impact of women inventors and entrepreneurs, and how STEM education can impact change.

More information, including registration, is on the event page of the USPTO website.

USPTO PATENT ATTORNEY ROSTER

Many people are unaware of this fact but the United States Patent and Trademark Office (USPTO) has a roster of all US patent attorneys and agents. The searchable roster can be found here.  Since I am a patent attorney, my information is listed on the roster and can be found here.  Only people who have passed the patent bar and background check, and graduated from an accredited law school and passed a state bar exam can be listed as a patent attorney on the USPTO roster.  Patent agents need only to have passed the patent bar and background check–law school and state bar are not required for patent agents.

The USPTO roster of patent attorneys is a valuable tool for inventors to make sure the “patent attorney” or “patent agent” they are dealing with is a patent practitioner in good standing and who has achieved all the requirements necessary to be a patent practitioner.  You can search the roster, name, state, city, postal code, and business or firm name.

Unfortunately, the USPTO does not have a roster of all trademark attorneys.

USPTO Expedited Trademark Cancellation Pilot Program

The USPTO has recently implemented an Expedited Trademark Cancellation Pilot Program.  USPTO random audits suggested that over half of active registrations include some goods or services for which the registered mark is not actually being used. Registered trademarks that are not actually in use in commerce may block other trademark owners from registering their marks.

Under the Expedited Trademark Cancellation Pilot Program, the Trademark Trial and Appeal Board (TTAB) identifies newly-filed trademark cancellation proceedings limited to abandonment or nonuse claims that may benefit by some form of the Board’s existing Accelerated Case Resolution (ACR) procedures.

You may participate in the pilot even if your case was not initially identified by the TTAB, and even if you already conducted your discovery conference. You can coordinate with your opponent and call the Interlocutory Attorney assigned to schedule a conference.  More information about the pilot program can be found here.

The USPTO is presenting an Info Chat on Trademark filings!

Join the next USPTO Inventor Info Chat webinar, “Trademark: Live demonstration of how to file a trademark application,” on February 21, 2019 from 11 a.m. to noon ET. Through this live demonstration, you will learn how to effectively file your trademark application using the Trademark Electronic Application System (TEAS). You will also have an opportunity to ask questions by emailing inventorinfochat@uspto.gov.  To register, visit the Inventor Info webinar event page on the USPTO website, or click here.

USPTO ISSUES NEW SUBJECT MATTER ELIGIBILITY GUIDANCE

The USPTO has issued new subject matter eligibility guidelines, which can be found here.  I have reviewed the 27 page guidelines and have the following comments.

The USPTO now has expressly identified groups of abstract ideas to be used in the Alice/Mayo test.  The groups of abstract ideas are:

a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;

b) Certain methods of organizing human activity;

c) Mental processes.

In addition there is a “…rare circumstance in which a USPTO employee believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea”.

Further, the USPTO states that claim are NOT directed to a judicial exception  (abstract idea), “if the claim as a whole integrates the recited judicial exception into a practical application of that exception”.   The USPTO goes on to state:

“If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.

“If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B (where it may still be eligible if it amounts to an “inventive concept”).”

With respect to the “integrated into a practical application” determination, the USPTO states the following:

“Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit, for example those listed below.”

“Examiners should note, however, that revised Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity.”

“In the context of revised Step 2A, the following exemplary considerations are indicative that an additional element (or combination of elements)24 may have integrated the exception into a practical application:

“an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;

“an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;

“an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;

“an additional element effects a transformation or reduction of a particular article to a different state or thing; and

“an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.”

I believe the above guidance will help inventors and patent attorneys in protecting inventions in the business method and software arts.

USPTO remains open despite government shutdown

According to the USPTO: 

“Although parts of the federal government have experienced a lapse in appropriated funding, the USPTO remains open for business as normal. This is possible because the agency has access to prior-year fee collections, which enables the USPTO to continue normal operations for a few weeks. Should the USPTO exhaust these funds before a partial government shutdown comes to an end, the agency would have to shut down at that time, although a small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. Further information regarding any adjustments to the USPTO’s operating status will be posted on the USPTO website and delivered to the news media.”  The USPTO statement can be found here

USPTO offers free virtual instructor led training webinar on Legal Analysis Writing Workshop

The USPTO will offer training to members of the public as part of the Virtual Instructor Led Training (vILT) program. vILT is designed to allow stakeholders in the USPTO to be briefed on a variety of focused topics related to examination practice and procedure derived from recent training delivered to experienced USPTO examiners. The interactive online format of vILT allows participants to remotely attend the training without the need to travel to USPTO locations.     

Registration is opened from December 17, 2018 – January 27, 2019 for the next vILT webinar titled “Legal Analysis Writing Workshop” scheduled for February 12 and 13, 2019 at 1pm ET. This course if for patent attorneys and patent agents.  This course is first come first serve, has a limited capacity, and selection is required to attend. The USPTO is applying for CLE credit in Virginia for this course. All vILT events are free to attend.  The sign up form can be found here

Attorney/Agent course on examination practice and procedure at USPTO

Sign up to attend the March 5 – 7, 2019, Attorney/Agent 3-day course on examination practice and procedure at the USPTO Rocky Mountain Regional Office in Denver. CLE credit in Colorado is approved for this course. This training makes use of statutes, rules, and guidelines relevant to practicing before the USPTO. Attendance is limited those who have passed the patent bar, with priority given to those who passed recently. USPTO trainers will present the course based on material developed for training patent examiners and other employees. More information and a proposed upcoming course schedule is available on the Stakeholder Training on Examination Practice and Procedure (STEPP) page of the USPTO website, and can be seen here.