Happy Thanksgiving!

The DDIP blog will resume after the Thanksgiving holiday on Monday, December 1, 2008. Have a Happy Thanksgiving!

USPTO Introduces Practitioner Maintenance Fee

The USPTO announced earlier this week that it will be implementing an annual $118 practitioner maintenance fee for active patent agents and attorneys starting in 2009 "[c]onsistent with its commitment to e-government initiatives and promoting high standards of practice" before the USPTO. Although specific details regarding the payment process have not been publicized, fees will be due starting next spring, and notices will be sent to practitioners of record in advance of the due date. According to the USPTO announcement (link below), "[w]ith an annual practitioner maintenance fee, the Office will fund the disciplinary system as state jurisdictions do, by fees from recognized members," and that "[t]he annual practitioner maintenance fee also will enable the USPTO to maintain and publish a roster of registered practitioners that is updated daily. As noted within the November 17, 2008 Federal Register excerpt (link below), and among a number of changes, 37 C.F.R. § 1.21 will be updated to add subsection (a)(7) to add the $118 annual fee for active practitioners and a $25.00 annual fee for practitioners on "voluntary inactive status." Additional details regarding the new fees, related restoration and delinquency fees, and the purposes for implementing such fees are provided within the two links below.

USPTO Announcement: LINK
Federal Register Excerpt: LINK

The Former Yugoslav Republic of Macedonia Accedes to the EPC

The European Patent Office (“EPO”) recently announced that on October 28, 2008, the Government of the former Yugoslav Republic of Macedonia has requested to become part of the European Patent Convention (“EPC”) by depositing its formal instrument of accession. Therefore, and as of January 1, 2009, the former Yugoslav Republic of Macedonia will become the 35th member state of the European Patent Organization. As referenced within the EPO announcement (link below), “European patent applications filed on or after 1 January 2009 will include the designation of the new contracting state,” and “[i]t will not be possible to designate the former Yugoslav Republic of Macedonia retroactively in applications filed before that date. To allow for the designation of the former Yugoslav Republic of Macedonia, “the EPO will accord European patent applications filed in December 2008 the filing date of 1 January 2009 if the applicant expressly requests that filing date when filing the application.” Additional information regarding this accession and European patents for the former Yugoslav Republic of Macedonia based on international applications is provided within the link below.

EPO Announcement: LINK

USPTO Announces PCT Fee Increase

Yesterday, the USPTO announced that it is revising its rules of practice to adjust Patent Cooperation Treaty (PCT) transmittal and search fees. As summarized in the USPTO announcement and provided in detail within the Federal Register (links below), the PCT transmittal fee (37 C.F.R. § 1.445(a)(1)) will be decreasing from $300.00 to $240.00, while the PCT search fee (37 C.F.R. § 1.445(a)(2)) where the USPTO acts as the International Searching Authority (ISA) on the application will increase from $1,800.00 to $2,080.00. The supplemental search fee with the U.S. as the ISA (37 C.F.R. § 1.445(a)(3)) will also increase from $1,800.00 to $2,080.00 per additional invention identified. These fee changes will apply to all PCT applications received on or after January 12, 2009, and for most PCT applications, an applicant will see an increase of $220.00 per application at the time of filing ($280.00 increase in search fee and $60.00 decrease in transmittal fee).

USPTO Announcement: LINK
Federal Register Excerpt (PDF): LINK

WIPO Member States Conclude Copyright Conference

On November 2-7, 2008, member states of the World Intellectual Property Organization (“WIPO”) met to discuss several copyright issues pertinent to its members. As referenced within the WIPO press release (link below), conference issues included “Limitations and Exceptions: Access for Visually Impaired People” (acknowledging “the special needs of disabled persons (including the blind, visually impaired and other reading-disabled persons) and stress[ing] the importance of addressing those needs”), “Audiovisual Performances” (where member states expressed “their commitment to develop the international protection of performers in their audiovisual performances”), and “Broadcasting Organizations” (including “discussions on the protection of broadcasting organizations with a view to concluding an international instrument”). This conference was preceded by a two day seminar including the following presentations (in PDF format):

“WIPO Study on Limitations and Exceptions of Copyright and Related Rights in the Digital Environment” (PDF LINK)

“WIPO Study on Automated Rights Management Systems and Copyright Limitations and Exceptions” (PDF LINK)

“WIPO Study on Copyright Limitations and Exceptions for the Visually Impaired” (PDF LINK)

“WIPO Study on Copyright Limitations and Exceptions for Libraries and Archives” (PDF LINK)

“Summary of the Outcome of Seminars and Stocktaking of Positions on the Protection of Audiovisual Performances” (PDF LINK)

Additional information regarding the topics discussed at this conference is provided within the WIPO press release link below.

WIPO Press Release: LINK

26th Trilateral Conference - Nov. 10-14, 2008

The 26th Trilateral Conference will take place in The Hague this week, where representatives of the U.S., European, and Japanese patent offices will meet to further formalize their efforts regarding patent prosecution cooperation. According to the European Patent Office ("EPO") press release (link below), "one of the main aims of the cooperation is to help inventors protect their inventions in several parts of the world, while reducing processing times through integrated patent infrastructure," with key meeting objectives including increased work sharing for PCT patent applications, the potential launch of a Patent Prosecution Highway between the EPO and the Japanese Patent Office, efforts to prioritize work on first filings, and the harmonization and sharing of "e-learning tools" among these three patent offices. Additional information on this conference, including details on the current IP5 initiative (involving the five largest national patent offices), patent quality improvements, several "Foundation Projects," and the involvement of industry, are provided in the link below.

EPO Press Release: LINK

“Barack,” “Obama,” and the USPTO

After such an exciting election, I thought I’d have some fun with a blog post and highlight a few attempts to register trademarks pertaining to our President-elect that, for reasons shown below, were unsuccessful:

“BARACK STAR” – U.S. Trademark Application Serial No. 78/471,745 in IC 016 and 025 – This application was abandoned after the USPTO refused registration for false association because “the proposed mark consists of or comprises matter which may falsely suggest a connection with U.S. Senator Barack Obama” and “[a]lthough not connected with the goods or services applicant provides under the proposed mark, the name BARACK is so famous that consumers would presume a connection with Senator Obama.”

“DO YOU SMELL WHAT BARACK IS COOKING” - U.S. Trademark Application Serial No. 77/406,936 in IC 025 – This application was abandoned after the USPTO refused registration “under Section 2(c) of the Trademark Act, for the record does not include the written consent of Barack Obama, the name of the living individual identified in the proposed mark.”

“PET BARACK” - U.S. Trademark Application Serial No. 77/408,020 in IC 020 – This application was abandoned after the USPTO refused registration using the same lack of consent argument as described above.

“OBAMA -- O BABY!” - U.S. Trademark Application Serial No. 78/745,546 in IC 026 – This application was abandoned after the USPTO refused registration using a false connection argument similar to the false association argument described above.

“OBAMA SO PHAT” - U.S. Trademark Application Serial No. 77/135,294 in IC 040 – This application was abandoned after the USPTO refused registration using the same lack of consent argument as described above.

“OBAMA NOT YOUR MAMA FOR PRESIDENT IN 2008” - U.S. Trademark Application Serial No. 77/037,088 in IC 040 – This application was abandoned after the USPTO refused registration for false association and lack of consent as described above.

In addition to the foregoing, I note one additional trademark application (77/086,418) that I will not describe here due to its sensitive and offensive nature, and of which I am personally pleased to see rejected for a multitude of reasons.

IP Australia added as USPTO ISA

On October 31st, Jon Dudas, the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO, announced that IP Australia, the Australian national patent office, will function as an International Searching Authority (ISA) under the Patent Cooperation Treaty (PCT) for certain types of international patent applications for the USPTO as of November 1st. As noted within the announcement, an applicant may utilize IP Australia for applications filed in English but that do not have claims relating to “mechanical engineering or analogous fields of technology as defined by certain International Patent Classification classes,” including those listed in Annex A to the USPTO-IP Australia Agreement included within the link below.

Here is a list of the current ISA’s for U.S.-filed PCT applications and their corresponding search fees (in U.S. dollars):

USPTO: $1,800
European Patent Office: $2,665
Korean Intellectual Property Office: $220
IP Australia: $1,514

USPTO Announcement: LINK