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Is the U.S. Patent and Trademark Office Affected by the 2018 Government Shutdown?

The U.S. Patent and Trademark Office is not affected by the shutdown which has closed many government offices and agencies after Congress failed to pass a funding resolution.  Navigate to www.uspto.gov and you’ll be greeted by the banner announcing the Office is still open.

While other agencies are dependent upon immediate funding for their continuance, the USPTO maintains a reserve account of funds. The funds allow the Office to continue operating at nearly full capacity for at least a few weeks. These are collected, in part, from the applicants that have filed and prosecuted patent and trademark applications in the United States in previous years.

In December 2017, the Commerce Department issued a shutdown plan which noted: “The USPTO anticipates that it will have sufficient funds from other than current year appropriations to continue full operations for a brief period after a general lapse in appropriations commences. Therefore, all employees of the USPTO will be excepted for such period following a lapse in appropriations.” Commerce Secretary Wilbur Ross emailed USPTO employees on Friday, January 19, 2018 directing them to continue reporting for work until they were notified otherwise.

Collections from previous years enable the USPTO to operate despite furloughs at other federal agencies. The USPTO is well-funded; in fact, it generates far more money in fees than it consumes in expenses. However, fee diversion moves much of its revenue to other governmental agencies. The 2011 America Invents Act allows the Office to trap some of those fees into the reserve account before they can be diverted outside the agency.

Should the shutdown continue and the reserve funds be consumed, employees would begin to be furloughed. A small staff would nevertheless remain to accept new applications and to maintain the IT infrastructure. The electronic filing systems through which most patent attorneys and agents correspond with the USPTO would continue to operate, allowing filing dates to be established and deadlines to be met. The shutdown does close down the File Repository Warehouse, where the paper files for older patent applications are maintained. That warehouse is not operated by the USPTO and so is affected by the shutdown. As such, requests for copies of paper files (which normally take 1-4 weeks for production) will likely be delayed. This would not affect electronic files, of course.

In 2013, the government shut down lasted for two and a half weeks. The USPTO stayed open then, too, using the same reserve fund.



Patent Prosecution Highway to Expedite Examination of a Patent Application

The Patent Prosecution Highway, or “PPH,” speeds up the examination process for patent applications filed in participating intellectual property offices around the world. In most countries, patent prosecution can take quite a long time, on the order of 1-3 years or more.

However, under the Patent Prosecution Highway, participating patent offices have agreed that when an applicant receives a final ruling from the patent office of one country, and that office determines that at least one claim is allowed, the applicant may then request fast tracked examination of corresponding claims in a corresponding patent application that is pending in the patent office of another country. For example, if you file a US patent application and a Chinese patent application, and the Chinese patent application receives favorable examination first, indicating that four of the claims are allowed, you can expedite examination of those four claims in the US application.

PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

There is no fee under the PPH programs, and often, applications advanced under the Patent Prosecution Highway receive favorable examination. This creates considerable cost and time savings in what is otherwise a very expensive multi-national filing.

Many countries or bodies participate in the Patent Prosecution Highway and have reciprocity with the US. Most notably, Australia, the European Patent Office, Canada, China, Japan, Germany, Korea, and the UK all participate. Further, the results of a favorable written opinion or examination of a PCT application can be used as the basis for a PPH request.



Utility and Design Patent Issuances Up in 2017

Nearly every year for the past decade, the Patent Offices have issued more utility and design patents.  2017 was no exception.  While former Director Kappo’s guiding hand has often been praised for increasing patent quality, the patent numbers during his oversight improved as well.  The Office was without an official director during most of Trump’s first year and is now headed by acting Director Joseph Matal.  Despite the uncertainty, in 2017, there were approximately 5% more issued utility patents and roughly 10% more issued design patents than in 2016.  Charts from Patently-O can be seen here.



Registered Trademarks for the Amazon Brand Registry

Earlier this year, Amazon rolled out its Amazon Brand Registry, which is an effort to work with registered trademark owners to protect the customer experience on Amazon’s site. Since that time, as the official correspondence address on my clients’ trademark registration, I have received many requests from Amazon asking to validate and verify trademark owners for the registry. Enrollment in the Amazon Brand Registry provides trademark owners with improved tools for fighting trademark infringement.

It is well known that having a listing removed or a seller flagged for trademark infringement has often been a difficult endeavor on Amazon. Common types of trademark infringement or misuse I’ve seen there include:

  • Someone sells their own product using your name, logo, or trademark
  • Someone sells their own product using a name, logo, or trademark that is similar, but not identical, to yours
  • Someone hijacks your listing but ships a different product
  • Someone improperly lodges an infringement claim against a trademark you own

Handling things like the above generally required contacting Amazon’s automated service, eventually getting through to a person, and having the listing or complaint analyzed and then potentially taken down. This process was slow and cumbersome, especially if there was infringement by multiple users. And trademark owners could find themselves in a game of whack-a-mole with listings subsequently popping up under different seller’s accounts. The Amazon Brand Registry is intended to ease and speed the process of finding and handling potentially trademark infringement on Amazon.com.

Now, users who are enrolled with the Amazon Brand Registry will be able to create and upload unique videos and photos that are keyed to their accounts. Misuse of that content by others is easier to find and stop. Enrollment also gives you a faster takedown process, letting you clear infringement more quickly than with the old system. Enrolled sellers have access to text searches, image searches, and automated responses to potential intellectual property infringement. Sellers who are enrolled will also appear more legitimate to prospective customers, who may opt to purchase from that seller rather than one with a cheaper price but a more questionable status.

Some points and prerequisites concerning the Amazon Brand Registry:

  • Only owners of federally registered trademarks are eligible to participate in the Amazon Brand Registry. Common law trademarks and pending federal applications do not provide an enrollment basis.
  • Word marks are definitely eligible – these are sometimes known as “standard character marks” because they usually appear simply as capital letters without claim to style or font.
  • Composite marks appear to be eligible. Amazon says that “words, letters, or numbers in a stylized form” and “illustration drawing[s] which include[] words, letters, and/or numbers” are eligible. This seems to imply that a mark or logo having both text and graphical elements will qualify.
  • It appears that pure design marks – graphical elements which have no text, words, or letters – may not qualify.
  • You will need to provide proof of your registered trademark, as well as proof of how the mark is actually being used on the product or packaging for the product.
  • I’ve seen discussion that your trademark has to be registered on the Principal Register, not the Supplemental Register. I have not been able to verify this with Amazon, however.

If you are a trademark owner, consider the following for moving forward:

  • Registering your trademark. Registration is a fundamental requirement for enrollment now, so this action must be taken.
  • Filing the application for trademark registration now. This process typically takes at least 6-7 months, and Amazon’s requirement that your mark be registered means you should start the registration process sooner rather than later. The longer you wait to file, the longer it will take before you can enroll.
  • Registering a word mark version of your mark, if you only have a design or composite mark registered. The word mark will not only be definitely eligible for enrollment in the Amazon Brand Registry, but it typically offers the best and broadest protection for you trademark in the larger marketplace.
  • Does the way you use your trademark on listings, products, and packaging match the registered trademark? Different spelling, spacing, hyphenation, or other variations can limit your ability to use, or potentially even enroll, in the Amazon Brand Registry.
  • Failure to enroll in the Amazon Brand Registry does not mean you cannot report alleged trademark infringement on Amazon, it just means you won’t have all of Amazon’s potential tools available to you for finding and combating that infringement. Typically, clients find it difficult and cumbersome to monitor and remove trademark infringement.
  • If your trademark is on the Supplemental Register, consider moving it to the Principal Register. Not all marks are eligible for this and so attempting the move requires careful analysis together with a use and filing strategy.
  • If you were enrolled in the Amazon Brand Registry before April 2017, you will not be automatically re-enrolled. You have to manually re-enroll.

More info is available at https://services.amazon.com/brand-registry.html



Making Corrections to an International Patent Application under PCT Rule 91

A PCT application is a special tool created by international treaty which lets applicants secure international patent protection. It does not create an “international patent,” but it does establish a foundation from which patent applications may later be filed all around the world. Most countries in the world subscribe to the PCT treaty, with a few exceptions (Taiwan, notably). One advantage of a PCT application is that it allows an application to be centrally searched, examined, amended, and if needed, corrected, rather than having to take those steps in X countries at X times the cost.

Making amendments and corrections one time, to one application, is much easier and cheaper than making them several times for several applications (and usually through several foreign associates). Changes to the claims can be made in various ways, but normally through Article 19 or Article 34 amendments, which have specific timing and formatting requirements and also involve payment of a submission fee.

If the changes are very minor, they could potentially be submitted through a Rule 91 Rectification requests. These requests are reserved for “obvious mistakes,” and the bar for such mistakes is quite high. However, there is no fee involved with lodging a request under Rule 91, and so it can provide an attractive alternative to making an amendment under Article 34, which has about a $400 fee. Rule 91 requests are limited to changes that are so obvious that is becomes clear that “nothing else could have been intended than the proposed rectification.” After speaking with PCT Office specialists who handle these requests, I’ve learned that the requests are granted for things like misspellings and other typographical errors, like capitalization. However, even in some circumstances, capitalization of may considered to give that word a special meaning, and some examiner may refuse such requests. Incorrectly identifying the parts of your invention by typing the wrong reference character (widget 4 instead of widget 44, for example) is not an obvious error, even when the part is correctly identified in every other instance.

If in doubt about the acceptability of the correction, a Rule 91 request can be filed. It may be rejected, or refused, and then an amendment under Article 19 or 34 will have to be filed.



Intellectual Property Lawsuit Between Google/Waymo and Uber

Trial is moving forward in the Google/Waymo v. Uber intellectual property case. It has been thought that this lawsuit might help crown an early king of the self-driving vehicle industry, which Uber describes as potentially “the most lucrative business in history.”

In February 2017, Google spin-off Waymo sued Uber for misappropriation of trade secrets and patent infringement, stemming from the actions of former Google employee Anthony Levandowski. Levandowski was a high-level engineer in Google’s self-driving car division. He downloaded nearly 10GB of Google’s data – over 14,000 files – a few weeks before leaving Google to start his own company in January 2016. His company, Otto, was focused on autonomous truck technology. Just six months after he started the company, Uber acquired it for $680 million, and Levandowski was named to head Uber’s self-driving car work.

Not long after, one of Uber’s supplies mistakenly emailed information to Waymo about a circuit board Uber had ordered. Waymo looked at the board, thought it was a little too similar to the technology it had been working on while Levandowski was part of its team, and filed suit for a preliminary injunction against Uber.

A preliminary injunction is, essentially, a temporary restraining order. It is an order from a court temporarily preventing an entity from taking certain actions until more evidence can be gathered and a lawsuit filed (or not filed) or settlement reached. Here, Waymo requested that Uber’s work on self-driving cars be halted until Waymo could figure out possible damages and how to proceed next. Waymo won that injunction, showing a likelihood of prevailing in an eventual lawsuit and the danger of irreparable harm.

The case revolves primarily around LiDAR, which is a laser-based radar technology that allows a computer to map or “see” an environment. LiDAR has been used extensively for decades, but has recently come to prominence with autonomous vehicle developments. The trade secrets and patent claims revolve around this technology. The trade secrets claims rest, in part, on things like the designs for the printed circuit boards that Waymo developed, the position and orientation of the diodes and photodetectors on the boards, the selection and placement of optical elements for modifying LiDAR laser beams, and the laser pulse rate in the LiDAR system to create a precise resolution profile of objects in the environment. The patents (U.S. Patent Nos. 8,836,922, 9,368,273, and 9,086,273) also cover LiDAR technology. For instance, the ‘922 patent claims protection in a LiDAR device including a rotatable housing including transmit blocks and receive blocks, with a number of transmitters and detectors in them, such that light is emitted from the device and return light is gathered and collimated, or aligned, and focused back into the detectors. This technology assists in three-dimensional mapping of the environment.

Uber has several different types of LiDAR devices, and the patent claims reflected actions against them. However, in July, most of the patent claims were dropped after the judge encouraged the parties to narrow the issues, and after Uber stopped work on its “so-called” Spider technology on one of the LiDAR devices.

Last week, Waymo’s case grew more tenuous with the release of a due diligence report Uber commissioned before it acquired Otto. Although report includes dark details like Levandowski’s deletion of files and then destruction of the hard drives holding those files. Levandwoski tried to talk with Uber CEO Travis Kalanick about the hard drives, but Kalanick put up a brick wall to the discussion. Together with the report, documents regarding Uber’s designs were released, and even the judge noted that “the product is dissimilar. In many ways, it may be a vast improvement of what was going on at Waymo. So [Waymo has] come up a little short there.” In light of the documents release, trial, set to begin yesterday, has been postponed now to early December.



Are Federal Judges Disqualified From Hearing Cases Involving Trump Interests?

In 2016, Prospector Capital Partners sought to cancel a number of Donald Trump’s trademark  registrations (one of the design marks is shown to the right) for TRUMP in connection with golf courses, online retail store services featuring golf accessories, PACs, limo services, gambling services, lotion dispensers, jewelry, dress shirts, and various other goods and services. Prospector asserted that Trump had abandoned the trademark by failing to use them. Prospector did not quite set its claim correctly, however, and Trump was able to dismiss the cancellation on a technicality. The Trademark Trial and Appeal Board hearing the case granted Prospector a 20-day period to fix its error, however.

Rather than filing an amended petition to cancel, Prospector filed a motion to disqualify the entire Board on the basis that President Trump holds an interest in the trademark registrations and the judges are all appointed by the Secretary of Commerce, who serves under the President. Prospector suggested that, since Trump essentially has the ability to fire all of the judges, they could not be impartial.

The Board flatly rejected this suggestion.

First, it noted that the laws governing disqualifications of judges only apply to judges on courts. The TTAB judges are administrative judges on an administrative panel, wholly within the US Patent and Trademark Office. They are not judges on a court, and the laws pertaining to such judges therefore do not apply to them.

Second, it stated that government procedures are at least presumed to operate regularly and without improper motive.

Third, the Board countered that there were no facts indicating that the Board might be swayed by Trump’s ability to fire.

Fourth, the Board found that there was no statutory limitation in proceedings that it was incompetent to handle. Thus, the Board has the authority to determine rights of registration regardless of the owner of the registration. If such limitations were in place, the Board offered, whole classes of applicants, such as both high-level and low-level government executives, might find themselves without a forum to adjudicate their rights, which is “absurd.”

Finally, the Board highlighted the option Prospector has already: it can always appeal the Board’s decision in federal court. We’ll see if that happens….



Prompt Information Disclosure Statements

Applicants and agents appearing before the Patent Office are obligated by a duty of candor and disclosure to the Office. This means, when you file a patent application, you must continually update the contents of that application with anything that may be or become relevant to patentability. This most frequently arises in the form of submitting Information Disclosure Statement, or an IDS. An IDS is often submitted with the initial filing of an application; it will disclose a list of patents, patent application publications, foreign references, and non-patent literature that the applicant was aware of before filing, usually either because of a patentability search, pre-filing due diligence, or knowledge and experience in the industry. However, the duty to disclose relevant prior art continues during prosecution, and applicants will generally disclose prior art that surfaces. Failing to disclose does expose a patent that eventually issues from the application to the risk of invalidation.

IDSs submitted during prosecution are often spurred by parallel foreign prosecution. Because the US Patent Office can be quite slow in prosecution, foreign offices frequently will produce relevant prior art before the US. If a PCT application is filed, the International Searching Authority will usually provide its search report before the US Patent Office has begun examination. The results of such a search report should be disclosed in the US. Some foreign offices move very quickly, and examination results there should also be disclosed. This disclosure duty is not limited to prior art revealed before US examination; it continues throughout prosecution. And there are timing requirements for disclosure. The results of foreign offices should be disclosed within 3 months of production.



Firm Quoted in Newspaper Regarding Recycling

A few months ago, the firm was recognized as a Green Business Leader. Now the word is getting out. I was interviewed last week by the Arizona Republic regarding the program and recycling in Phoenix generally. You can see the article here.



Green Business Certification

This week the law firm was recognized as a Green Business by the City of Phoenix. We are the second law firm in Phoenix to be recognized for its efforts in diverting material away from area landfills. We emphasize all three important elements of reduce, reuse, and recycle to conserve resources here at the office.  We’re thrilled with the recognition, but more concerned that other businesses may be missing the opportunity to reduce their footprints.

If you’d like more information about our efforts or the efforts of the City of Phoenix, please give us a call and we’d be happy to talk with you about how you can help.