March 31, 2008

March 27, 2008

The USPTO announced that it has partnered with the George Washington University School of Business to sponsor the 2008 International Business Case Competition, with this year’s topic matching business school teams against one another to find a solution to the USPTO’s current patent pendency and backlog problems. According to the USPTO announcement (link below), eighteen MBA teams will present proposed solutions “to a panel of judges, including USPTO senior management executives and business leaders from an array of industries including finance, technology, hospitality, consulting and others,” whereby “the judges will see a presentation by each team, then ultimately choose first, second and third place winning teams,” providing the USPTO with “the option to develop and implement ideas presented by the teams in the competition.” The announcement notes that the current backlog, namely the number of patents in the queue at the USPTO awaiting examination, stands at over 760,000, and that the current pendency, namely the amount of time it takes from the date of filing the application to a final USPTO decision, stands at approximately 32 months. This is the 15th year of this particular international business competition.

USPTO Announcement: LINK
GWU School of Business Website: LINK

March 26, 2008

Last week, the World Intellectual Property Organization (WIPO) announced that it has teamed up with the Kellogg School of Management in Chicago, Illinois, to host an upcoming executive program on intellectual property management. This program, entitled “Strategies for Management of Intellectual Property,” will be held from June 9-12, 2008, and according to the WIPO press release (link below), the program “will offer an opportunity to gain a practical understanding of the various strategies and approaches to enable effective development and optimization of a company’s intellectual property assets, to formulate effective IP-focused business strategies and to successfully negotiate IP licensing agreements with business partners.” According to the WIPO announcement, eight speakers from the Kellogg School of Management and the WIPO Worldwide Academy, and the WHU-Otto Beisheim Graduate School of Management are preliminarily scheduled to speak on a broad range of topics, including licensing and license agreements, acquisitions, effective negotiation, international IP trends, and others. Full course details and registration links are provided below.

WIPO Announcement: LINK
Program Details: LINK
Program Registration Webpage: LINK

March 24, 2008

The USPTO recently announced that it will host a seminar next month regarding the protection of IP in China. The seminar, entitled “USPTO China Road Show,” will be held from April 2-3, 2008, at the Houston Hobby Airport Marriott Hotel in Houston, Texas, and will focus on teaching businesses how to protect against intellectual property theft from China. According to the USPTO announcement (link below), “China was the number one source of counterfeit products seized by U.S. Customs and Border Protection (CBP) in 2007, accounting for 80 percent of all seizures,” noting further that the “realities of piracy and counterfeiting … cost the American economy approximately $250 billion annually.” According to the seminar webpage (link below), topics include “China’s laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China.” This USPTO program is held free of charge, but attendees are required to register via the link available at the seminar webpage link below.

USPTO Announcement: LINK
Seminar Webpage: LINK

March 19, 2008

Last Friday, the USPTO announced via the Federal Register (excerpt link below) that it will be instituting new trademark rules of practice to require written descriptions of non-standard character trademarks. In October, 2007, the USPTO proposed the new rules and solicited comments from the public, and in response, the USPTO finalized the rule changes (as noted within the Federal Register) to require “a description of the mark in all applications to register a mark not in standard characters” with the goal that “[t]his requirement will facilitate more accurate and comprehensive design coding and pseudo-mark data determinations, and therefore will promote better searchability of marks within the USPTO database.” Currently, 37 C.F.R. § 2.37 states that a description “may be included in the application and must be included if required by the trademark examining attorney.” Here is a list of the specific rule changes:

Addition of new paragraph (a)(8) to 37 C.F.R. § 2.32 (“Requirements for a complete application”): “If the mark is not in standard characters, a description of the mark.”

Revision of 37 C.F.R. § 2.37 to read as follows: “A description of the mark must be included if the mark is not in standard characters. In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.”

Revision of paragraph (b)(5) of 37 C.F.R. § 2.35 (“Types of drawings and format for drawings”) to read as follows: “Description of mark. A description of the mark must be included.”

As noted within the title above, these new changes shall take effect on May 13, 2008.

Federal Register Excerpt: LINK

March 18, 2008

The USPTO recently posted a transcript of its February 28, 2008, independent inventor online chat. Although many questions were repeated from prior online chats (like the differences between trademarks and copyrights, inquiries about locating patent attorneys, etc.), a number of questions were relatively more sophisticated than those appearing in prior chat transcripts. Some questions that were answered may be helpful to many independent inventors, including the following:
“My question would be regarding the amount of time an examiner has to respond to an office action wherein a select species was presented by the examiner and an answer to a selection of the species was filed before the 30 day period.”

“Is there a federal program to assist inventors with start up costs?”

“I was also wondering if I should I submit a research proposal, that reveals some details of a non-patented invention, to a Fellowship program? How can I disclose some details of such an invention, but still have it "protected", before I file for a patent. Long story short, proposal is due Saturday, but I plan to go forth with the patent filing process immediately afterwards.”

“Hi there....I'm wondering if you can you get a design patent for something that works based on a utility patented invention?”

“If a trademark that I am interested was applied for by someone else but they abandoned their application and it is now dead can I apply for the same trademark?”
The full transcript is provided in the first link below, while the second link provides additional links to the twelve (12) earlier transcripts dating back to 2004.

February 28, 2008, Online Chat Transcript: LINK
USPTO Online Transcript Webpage: LINK
USPTO Online Transcript FAQ Webpage: LINK

March 13, 2008

On Wednesday, the USPTO announced its upcoming Nanotechnology Customer Partnership meeting to be held on April 22, 2008, at the South Auditorium of the Madison Building at the USPTO. According to the USPTO announcement (link below), "[t]his Nanotechnology Customer Partnership initiative is designed and developed to be a forum to share ideas, experiences, and insights between individual users and the USPTO." The announcement further notes that "[t]he USPTO does not intend to use these customer partnership groups to arrive at a group consensus," and that "[i[ndividual opinions are sought from varying participants, and the meetings are intended to be informal in nature." These groups are intended not to be Federal Advisory Committee Act (FACA) compliant committees. Based upon information available at the USPTO, this series of meetings appear to have occurred on an annual basis from at least as early as 2003. Additional details regarding the meeting, as well as RSVP information, can be found at the link below.

USPTO Announcement: LINK

March 12, 2008

The European Patent Office (EPO) announced yesterday that it has updated its online training schedule for the month of April. As noted in the EPO news release (link below), the EPO will be resuming its “virtual classrooms” training events next month, the first event to be held of April 1st.

As the individual virtual classroom description webpages do not have unique web links (they are all located through the “Patent event search” webpage provided below), I will reference each of the three planned events for April. To see the individual webpages yourself, please go to the Patent Event Search link below, and in the “Medium” drop-down menu (bottom-right corner of the search page), select “Online training” and click “search.” The three events below will appear in the “Search results” section below the search drop-down menus.

(Please note that the schedule below may have changed - click the link for a current schedule - MR)

April 1, 2008: “esp@cenet 1 - In the beginning” – this session will teach the basics of esp@cenet, which is described as “a free to use internet service providing access to nearly 60 million patent documents from around the world stretching back in some cases to the 19th century”

April 4, 2008: “esp@cenet 2 - So you think you know all esp@cenet?” – this session will teach provide additional details regarding the new features and functions available in esp@cenet

April 29, 2008: “Register Plus & WebRegMT” – this session will provide information regarding Register Plus (“the place where the EPO stores all the publicly available information it has on European patent applications as they pass through the grant procedure”) and WebRegMT, the EPO Register alert service useful to “automatically monitor changes to files in the European Patent Register as they occur”

Each session listed above will run from 10:00AM to 11:30 Vienna, Austria local time.

EPO News Release: LINK
EPO Patent Event Search: LINK

March 11, 2008

It was recently announced that Utah has amended its state law that limited the ability for internet search engines from using trademarked items as the basis for triggering online advertisements. As summarized by the Google Public Policy Blog article (link below), last year the Utah State legislature passed a law “that essentially prohibited search engines like Google from allowing trademarks from being used as keywords to trigger ads,” noting that, “at the time, this law ran counter to the precedent of federal trademark law, which has consistently upheld comparative advertising as being good for consumers, competition and free speech.” According to the ClickZ article (link below), Utah’s revised Trademark Protection Act was passed late last Wednesday night, in part because as noted by Utah State Senator Dan Eastman, “[t]he state didn’t want to get into a lawsuit” against a number of large search engine companies. As noted by ClickZ, “[t]he law adopted last year bans advertisers from using the trademarked terms of their competitors to target ads to Utah users, and particularly affects search marketers,” and “[t]he search firms and many search industry execs have argued the law as originally written was unconstitutional and established an unprecedented set of rights for Utah trademark owners inconsistent with traditional trademark law recognized throughout the U.S.” Amendments to the law removed the punitive damages provisions and provisions regarding enforcing the law against companies using their competitor’s trademarks in their advertisements, but retain provisions allowing for civil actions to proceed. As summarized by the recent Search Engine Land article (link below), “[t]his reversal now puts Utah in sync with the precedent set forth by the federal trademark law,” and “[i]n short, you can now legally bid on trademarked terms in Utah, assuming you comply with the search engine's trademark policy in your country.”

Google Public Policy Blog Article: LINK
Search Engine Land Brief Article: LINK
ClickZ Article: LINK

March 10, 2008

Last week the European Patent Office (EPO) announced that it has launched a new website to assist small and medium-sized enterprises (SMEs) and intellectual property trainers with IP training information. The website, called INNO ACTIONS (, is the result of the cooperation of the EPO and 18 specific partners and is managed by the ip4inno project team. According to the EPO article (link below), the ip4inno website was developed to “provide[ ] information about the economic environment in selected European countries, [and] a searchable database of trainers and information about innovation support structures in various countries.” In addition, and according to coordinator Pascal Phlix, "[t]he implementation of the ip4inno project by the EPO is complementing the role that the EPO already plays in the support to innovation in Europe," and “[t]hrough projects that are implemented in co-operation with the national offices of the 34 Member States of the EPO, initiatives have been started to develop innovation in the regions, for example, by fostering technology transfer between public research centers and industry.” Additional information regarding this initiative, and a link to the website, are provided via the links below.

EPO Article: LINK Website: LINK

March 06, 2008

I came across this interesting resource and thought it would be worthy of sharing. Since 1998, the World Intellectual Property Organization (“WIPO”) has published an online and print version of WIPO Magazine, covering various intellectual-property related issues. Although the March-April 2008 issue should be out at any time, the current issue on the WIPO website (January-February 2008) contains a number of interesting articles, including the following:

Climate Change –The Technology Challenge – the first article of a new series regarding “the challenge to find technological solutions to climate change”

Towards a Green Stone Age? - an article describing a new composite material created my TechnoCarbon Technologies (Germany) “that its inventors hope may contribute to cutting greenhouse gas emissions in the construction and manufacturing sectors”

Patenting and Access to Clean Energy Technologies in Developing Countries – a discussion of a research paper from John Barton of Stanford University exploring whether intellectual property may actually be a “bottleneck in the solar, biofuels and wind energy sectors”

In the Courts: Bridging Moral Rights and Public Utility – a discussion regarding the moral rights of an architect in his work under Spanish copyright law

The European Community Joins the Hague System – an article discussing the accession of the European Community (EC) to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs

Design law in the European fashion sector – an article discussing “the relevance of design law in the fashion sector” following the accession of the EC to the Geneva Act of the Hague Agreement

Sixty Years of Wham-O – an article discussing the company behind a number of well-known toys, including The Hula Hoop and the Frisbee

IP and Business: Managing IP as a Set of Business Assets – a discussion of ICM Gathering, which is “a group of knowledge-based international corporations in the U.S., which meet regularly to share insights and develop best practices on how to obtain value from managing intellectual property”

IP Intrigue: From Patent Battle to Bestseller – an article discussing two works inspired by patent litigation which have recently been receiving media coverage

Welcome to the Public Domain – an article listing a number of authors, artists, and musicians whose work will enter the public domain in jurisdictions with a seventy (70) year period of post-mortem copyright protection

WIPO High Level Forum for Least Developed Countries – a discussion of a December, 2007 WIPO seminar highlighting “the importance of intellectual property (IP) as a strategic tool for alleviating poverty and promoting wealth creation”

New Parties to WIPO Administered Treaties in 2007 – a discussion of thirty-four (34) “instruments of accession or ratification of treaties” administered by WIPO in 2007

In the News – a compilation of several brief articles (appearing every issue)

Links to each article are available above, and links to the current issue and the PDF archive of past issues are provided below.

Current Issue of WIPO Magazine: LINK
Archive of Prior Issues (PDFs): LINK

March 04, 2008

On Friday, the USPTO announced via the Federal Register (link below) that it plans on amending its rules of practice regarding obtaining a filing date as of the date that trademark correspondence is deposited as Express Mail with the U.S. Postal Service. Currently, Section 2.198(a)(1) of the Trademark Rules of Practice state that the following types of correspondence do not obtain a filing date of the date of deposit because the forms are available via its Trademark Electronic Application System (“TEAS”):

- applications for the registration of trademarks
- amendments to allege use under section 1(c) of the Trademark Act
- statements of use under section 1(d)
- requests for extensions of time to file a statement of use under section 1(d)
- affidavits or declarations of use under section 8
- renewal applications under section 9
- requests to change or correct addresses

The proposed amendments to the trademark rules are to include the following types of trademark correspondence within Section 2.198(a)(1) of the Trademark Rules of Practice as exclusions because TEAS forms are now available:

- preliminary amendments
- responses to examining attorneys’ Office actions
- requests for reconsideration after final action
- responses to suspension inquiries or letters of suspension
- petitions to revive abandoned applications under 37 C.F.R. § 2.66
- requests for express abandonment of applications
- affidavits or declarations of incontestability under section 15
- requests for amendment of registrations under section 7(e)
- requests for correction of applicants’ mistakes under section 7(h)
- Madrid-related correspondence filed under §§ 7.11, 7.14, 7.21, 7.28, or 7.31
- appointments or revocations of attorney or domestic representatives
- notices of withdrawal of attorney

Similar changes are proposed to Section 2.197(a)(2) to provide that the certificate of mailing and certificate of transmission procedures do not apply to several types of documents. According to the USPTO, “because electronic filing eliminates delays caused by mailing, manual data capture and paper processing, TEAS documents are processed more quickly and entered into the automated systems (and therefore made available to Office employers and members of the public who search Office records for conflicting marks) sooner than their paper counterparts." The USPTO is accepting comments through April 29, 2008.

Federal Register Excerpt: LINK

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees


Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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Click HERE to search issued and pending U.S. Trademarks

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Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


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