On April 28, 2020 the United States Patent and Trademark Office (USPTO) further extended the time to file certain patent and trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27 and May 31. The new deadline is June 1, 2020. This is in addition to the prior extension the USPTO had announced on March 31, 2020. Such an extension will be allowed if they are accompanied by a statement that the filing delay was due to the COVID-19 outbreak. More information can be found at the USPTO website here.
The United States Patent and Trademark Office (USPTO) is closed to the public until further notice. However, USPTO operations will continue without interruption. Also, patent and trademark deadlines are NOT extended. I am still doing work for my clients, and taking on new matters for new clients, and existing clients.
For more information about COVID 19 and the USPTO please go here.
Policymakers, practitioners, and business owners interested in learning about policies and strategies to more effectively combat counterfeit goods will want to attend this free, all-day program organized by the U.S. Patent and Trademark Office (USPTO) and the McCarthy Institute on June 6, 2019. It will bring together more than two dozen experts in the fields of brand protection and anti-counterfeiting, who will take an in-depth look at such topics as:
- Fighting counterfeits in a global market
- Utilizing new technologies to protect brands
- Enlisting allies in the fight against counterfeiting
- Consumer protection and counterfeits
- What government can do to help
Featured speakers will include Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu, and other USPTO executives.
Register here. There is no charge to attend the program, but registration is on a first-come basis. Please register in advance as space is limited, and there will be limited ability to accommodate walk-in registrations.
This program will be available for viewing remotely via LiveStream. No registration is required.
Full program agenda is available in .docx format.
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).
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.
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.
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.
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 firstname.lastname@example.org. To register, visit the Inventor Info webinar event page on the USPTO website, or click here.
On January 17, 2019, the USPTO is offering a new Inventor Info Chat webinar: “Learn to create and use your new uspto.gov account.” Learn how the USPTO is consolidating access to many systems with one secure, convenient sign-in: the new uspto.gov account. The account already combines credentials for several fee payment tools, and the USPTO is working on adding even more.
USPTO experts will show you how to create your uspto.gov account and start customizing your MyUSPTO page. You can send questions to email@example.com during the event.
Please visit their event page on the USPTO website for more information.
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.