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Trademarks in Patent Claims

Can I use a trademark in a patent claim?

The quick answer is yes, but the follow-up question is why? Is there a specific reason that a particular type of product needs to be named – can the generic name for the product itself not be identified? Patent examination rules do permit the use a trade name or a registered trademark in the claim of a patent, however, it will likely spark a rejection.

First, it is important that, if a trademark is used in a claim, it must be used correctly. As is well-established under trademark law, a trademark should be used as an adjective, not a noun; it describes and identifies the source of a product, it does not describe and identify the product itself. Therefore, using a trademark in isolation will almost certainly solicit a rejection for failing to particularly point out and distinctly claim the inventive subject matter.

So, if a trademark has to be used, it should be used properly. Nonetheless, if a trademark does appear in a claim, the Examiner will probably still question why it is necessary, and may issue a rejection to raise that question. If you don’t address that question successfully, the application will never grant as a patent.

Patent Office Power Outage Shutdown

The Patent Office went down hard on December 22, 2015. A subdued Facebook post initially said: “We are currently experiencing some technical difficulties with some of our online systems, but we are hard at work and intent on having services back on line as soon as possible. Thank you for your patience, and stay tuned for details.” However, very quickly it became clear that the incident was major – catastrophic really. For some time, most (if not all) of the pages at upsto.gov were displaying 404 messages, including even the blog directed toward posting updates about the status of the electronic filing systems.

Apparently, the power supply lines at the USPTO incurred a “malfunction,” causing significant damage to two power filtration systems which otherwise provide power in a regulated form to the USPTO. These filtration systems are huge and could not be replaced quickly or easily.

The outage took out all of trademark and patent filing, searching, payment, and examination capabilities, effectively shutting down nearly everything the Patent and Trademark Office, and patent and trademark lawyers, do. For some of us, it was a nice week-long break when many of are taking holiday. For others, however, it was a stressful nightmare of re-learning Priority Mail Express (formerly Express Mail) rules and trying to get the Post Office – sometimes through horrible weather – to make filing deadlines. Filing by mail was still an option – but very few, if any, practitioners file by paper anymore, and I would guess that most who don’t file by paper have no clue how to file by mail. Another good reason to file early! The Office eventually did declare a few of the down days as federal holidays, purportedly giving applicants until the next (operational) business day to file. However, I cautioned colleagues not observe this PTO-granted grace period, as it was not clear that the PTO had the statutory authority to declare a holiday in this manner to toll both domestic and foreign deadlines. Better to mail it in that to find out years from now in litigation that the PTO “holiday” counted for nothing.

The systems are now up, but I have been warning clients this week to get me everything early because I believe the filing system is extremely fragile right now, given that it will probably be more heavily loaded by backed-up filings from the past week.

While the explanation that the Patent Office providfed is not entirely clear – and few details beyond this have been revealed – I am sure the Office did work tirelessly to get the systems back up. And now they are. What we can learn from this how fragile the filing system is. Yes, it apparently took a major power surge to destroy the electronic systems, but when it did, there was no backup. Or, there was a backup, but the backup was tied to a backbone common to the main system – which really isn’t a backup at all.

Practitioners have complained for years that the electronic filing system is antiquated, but the Office has failed to update it. Perhaps this will instigate a technology change at the office that represents innovation leadership in the world.

Trademark Law Ruled Unconstitutional

The Trademark Office’s prohibition phoenix trademark applicationsagainst the registration of disparaging trademarks was struck down as unconstitutional yesterday. Many have questioned for a long time how a statute could legitimately refuse to register some marks because of their moral quality. Nevertheless, for decades, federal statute has stated that a trademark will be refused registration if it “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The US Court of Appeals for the Federal Circuit has declared that Section 2(a) of the Lanham Act unconstitutional as violating the First Amendment. The majority stated that “”The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional.”

The case arose when a band applied to register the mark THE SLANTS in connection with live music entertainment services. The Trademark Office, however, refused protection of the mark as derogatory of people of Asian descent. The band appealed the case through several layers of administrative and judicial courts. At the Federal Circuit Court of Appeals, the government advanced an academically interesting argument: that the Lanham Act does not actually prohibit speech at all, but rather only prohibits the registration of some types of speech. It reasoned that because the government acts as the gatekeeper for trademark registrations, registered trademarks become government speech and can thus be regulated without implicating the First Amendment at all. The trademark owner remains free to practice the speech, whether registered or not. The Federal Circuit disagreed, finding that the law was impermissibly “created and applied in order to stifle the use of certain disfavored messages.”

A similar question arose most recently in the public eye when the Washington Redskins lost their 60-some year-old trademark registration because it was deemed disparaging of Native Americans. The team has appealed the decision, and it is expected that this newest case will give them some heavy ammunition. However, the REDSKINS case is now in front of the Fourth Circuit Court of Appeals, which is neither above nor below the Federal Circuit. That means that THE SLANTS decision is non-binding on the Fourth Circuit Court, but can still be persuasive. If the Fourth Circuit finds that Section 2(a) of the Lanham Act is not unconstitutional – which it may or may not do depending on the questions presented to the court and the sua sponte aggressiveness of the judges – the question will be ripe for the Supreme Court to settle.

Continuing Patent Applications in light of Allowed and Rejected Claims

I’ve written about continuing applications before. I have seen lately in a few cases an unfortunate situation that the Patent Office places applicants. It fulfills the “bird in hand is worth two in the bush” line, and I have begun to advise clients slightly differently because of it.

The situation arises when a case has received an indication that some of the claims are allowable while others are rejected. It can be either in a first office action or a second, typically final office action. It is always great to see allowed claims, but clients typically also want to fight for the rejected claims, too. This is, of course, natural and rational; money was spent on the application, we try to get the broadest claims possible, and fighting for rejected claims gives you a chance at those broader claims.

However, responding to an office action rejection when some of the claims are allowed can jeopardize those allowed claims. When I first began working, I felt fairly comfortable that an indication of allowability meant the allowed claims were fairly safe. Now, though, presenting a response – especially when the response is in the form of an amendment – can cause the Examiner to withdraw the allowance of those claims.

This unfortunate consequence unfolds when the Examiner conducts a new search. If you have present amendments to the rejected claims, the Examiner will (almost) always conduct a new search to see if the newly-introduced elements are present in other prior art. If the Examiner does find other prior art, and thinks that the prior art is relevant to, and destroys the patentability of, the allowed claims, the allowance on those claims will be withdrawn.

You really cannot blame Examiners for doing this. If they find art that is relevant to any of the claims, they are obliged to enter it into the record. For whatever reason however – perhaps there has been new training on it at the Patent Office – I am seeing it more frequently than I used to. That is not to say that I’ve been inundated with such situations, but I have had enough within the last year or year-and-a-half that I have noticed and made a practice change because of it.

Now, I advise clients of this risk, and let them know that it may be “safer” to proceed with cancelling the rejected claims, issuing the allowed claims, and pursuing the rejected claims with a continuing application. I do not always advise this, however; whether I do or do not depends on a wide variety of factors including the client, the examiner, my experience with both, the nature of the prior art, the reputation of the art unit, the strength of the claims, the difficulty of the prosecution, and other factors. For this reason, I strongly recommend against adopting one strategy or another every time, and I discourage any unrepresented applicant from adopting this strategy without first speaking with an experienced patent attorney. Canceling claims, issuing claims, and filing continuing applications involves a lot of experience, strategy, and know how, and missteps here can cost you valuable protection that may not be recoverable.

Patent Appeals

An appeal at the Patent Office is an administrative process providing for substantive review of some action taken by the patent examiner in a patent application. Where a patent examiner has twice rejected a patent application, such as for novelty or obviousness issues, an appeal can be filed to have the case reviewed by the Patent Trial and Appeal Board. PTAB appeals should not be lightly entered, and the below discussion only very quickly touches on the major phases of an appeal. Please consult an experienced patent attorney if you have particular questions about the process or about a pending patent application.

Notice of Appeal
A notice of appeal must first be filed to institute an appeal. This involves filing the Notice of Appeal paperwork and paying the appeal fee, which at the time of this writing was $400.00 for small entities. The Notice of Appeal filing tolls the period for responding to the last office action. Instead, it initiates a 2 month period for filing the Appeal Brief.

Appeal Brief
The Appeal Brief sets forth the Appellant’s argument. It must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken. If any ground of rejection is not addressed, argument or challenge to that ground is waived. An appeal brief should be filed within 2 months of the Notice of Appeal. However, 1-month extensions can be obtained through payment of a surcharge.

Examiner’s Answer
After the Appeal Brief is filed, the Examiner may respond with a formal Answer. The Answer is simply the Examiner’s response supporting his or her previous rejections and addressing the Appellant’s argument. The Answer is deemed to include all the rejections presented in the Office Action from which the Appellant has appealed, and the Answer may also present new grounds for rejection. If the Answer presents a new ground of rejection, the Appellant is given two months to either reopen prosecution or maintain the appeal and present a Reply Brief that addresses the new grounds. The Examiner, together with a Supervisory Patent Examiner and another experienced examiner, will then conduct an appeal conference to discuss the state of the appeal.

Oral Hearing
Oral argument can be requested. It should be requested only in those circumstances in which the Appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.

Board Decision
After quite some time (several years, often) the Board will consider the appeal, the briefs submitted, the facts, and the law, and establish a decision. The decision will generally either affirm, reverse, partially affirm, or remand the decision of the Examiner. After decision, jurisdiction of the application returns to the Examiner for further review consistent with the decision of the Board. The Appellant may also request a rehearing within 2 months of the decision to raise new arguments in light of new law or new rejections.

Patent Office Opens San Jose Office

The Patent Office has been openipatent officeng regional offices to better serve inventors in the US.  While Alexandria, Virginia is headquarters for the Patent Office, within the past 3 years, satellite offices have been opened in Detroit and Denver.  Dallas is scheduled to open later this month.

The USPTO opened the doors to its Silicon Valley Regional Office on October 15.  The new office is intended to entrepreneurs, independent inventors, and companies in the West Coast region advance cutting-edge ideas to the marketplace, grow their businesses, and more efficiently navigate the US patent system.  Obviously, the location was a strategic one, with San Jose marking the center of Silicon Valley.  Patent Office Director Lee said: “Today’s formal office opening is a huge step forward for innovators throughout the region.  This office will be a one-stop shop of resources for those who need it at every step of the business lifecycle.”

The new office will assist the USPTO in fostering and protecting innovation. USPTO services will be readily accessible to all applicants and the office will serve as a hub of education and outreach to the West Coast region.  The office will benefit from hiring local talent as both patent examiners and Patent Trial and Appeal Board (PTAB) judges.  The new office in Silicon Valley will help entrepreneurs bring their products to market quickly, as well as provide resources tailored to local startups.

When the Dallas branch is opened, the Patent Office will have a presence in each of the four continental time zones.

Reissue Patents

A patent can be reissued under a limited patent office 3set of circumstances. Generally, if an error is discovered which renders the patent wholly or partly inoperative, reissue may be the vehicle to correct the error. The Patent Office will reissue the patent to correct the error. You must pay a fee to reissue an application, and you must agree to surrender the original patent being corrected; you cannot have two concurrent patents on the same invention. The term of the reissued patent is limited by the unexpired term of the original patent.

New matter cannot be introduced into a reissue, but the scope of the claims can be enlarged to include broader subject matter when filed within two years of the grant of the patent. This is a common reason to file a reissue. Other reasons include correcting inventorship or adding narrower claims that should have been incorporated into the original patent. Some things, however, cannot be cured with a reissue. For instance, if a divisional was not filed during the pendency of the original application (after a restriction requirement was made), a reissue cannot be used to file the claims that would have been in the divisional application. Somewhat similarly, a reissue cannot be used to “recapture” claimed subject matter which was canceled from the original application, because such subject matter is considered to have been surrendered to the public.

Continuation Application Strategies

Kate S. Gaudry, Ph.D and Thomas D. Franklin, of Kilpatrick Townsend & Stockton LLP, wrote a few days ago an article on Patently-O regarding continuing application practice. I have written previously about continuing applications (here, here, here, and here), which include continuations, continuation-in-parts, and divisionals, but the authors did an excellent empirical study of such applications.  The authors found that the large majority of continuing applications filed were continuations, that more continuations are being filed each year, and that each year a larger percentage of the continuing applications filed are continuations.

Somewhat surprisingly, the study found that continuations are not prosecuted with much more success than original applications, nor are they likely to receive far fewer rejections.  The statistics only slightly more favorable treatment of a continuation application than an original app.  This runs somewhat counter to my experience, in which I’ve found continuations generally to be much more likely to receive an allowance and receive it faster.

Patent Office Automated Interview Request

The Patent Office has started a new program called “AIR,” which stands for Automated Interview Request. The program allows patent attorneys, agents, and applicants to file online requests for interviews with Examiners in their cases. Examiners can sometimes be difficult to get hold of, as many of them work non-standard schedules or practice “hoteling,” in which they work from home. They rarely answer the phone, though most are very good about returning calls. The AIR program is designed to improve the communication between patent attorneys and examiners in scheduling interviews. One issue I see with the AIR form is that it does not allow the applicant or applicant’s representative to request an interview with the Examiner and his or her supervisor, which is often desired. For this, I presume one should still call to request the interview.

By submitting this type of interview request, the pending patent application will be in compliance with the written authorization requirement for Internet communication in accordance with MPEP §502.03. This authorization will be in effect until the Applicant provides a written withdrawal of authorization to the Examiner of record.

Certificates of Correction

An issued patent should be reviewed upon receipt for errors. Occasionally, an error will crop up, either because of a minor clerical or typographical error, or because of something the Patent and Trademark Office processed incorrectly. These errors can be corrected if caught soon after issuance of the patent.

If the mistake was the applicant’s fault but occurred in good faith, then a certificate of correction may be requested. A fee must be paid along with this correction request. Once the certificate of correction issues, the certificate and patent together will operate in law as if the patent had originally been issued with the correction.

Two requirements must be met for a certificate of correction to issue. First, the error must be minor: it must be clerical or typographical or equally small in nature. Second, the correction cannot include new matter or anything that would require reexamination. Therefore, substantial changes to the claims, or changes beyond minor clerical or typographical changes, are not proper for such a request. Anything that would affect the scope or meaning of the patent would require reexamination. If a certificate of correction is the not the proper vehicle for the change, then you must try to implement the change through a reissue application.