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Patent Stakeholder Training on Examination Practice and Procedure

The Patent Office has begun offering a Stakeholder Training on Examination Practice and Procedure (“STEPP”), part of its Enhanced Patent Quality Initiative in which it improves quality and communication between the Patent Office and the public. The Patent Office states: “Training delivered through STEPP is designed to provide external stakeholders with a better understanding of how and why an examiner makes decisions while examining a patent application. In person courses are led by USPTO trainers and based on material developed for training employees of the USPTO.”

The STEPP program is intended to increase the transparency by educating the public about examination practice and procedure, provide perspective to attorneys and applicants about how an examiner approaches an application and an office action, and aiding patent attorneys in compact prosecution by showing them how an application is examined under the MPEP.

This program is a good program. I recently attended a presentation by the Silicon Valley Patent Office which serves the west coast on Patent Office operations. It was interesting and helpful, but some of the audience tried to use it as a personal gripe fest about examiners they had faced. That same waste is a concern I have with the program. More importantly, however, one issue with this program is that apparently is only available if you are at the Patent Office, or perhaps one of the regional offices. Expansion to WebEx or other online training should be a goal.

Acquired Distinctiveness Requires Both Continuous and Exclusive Use of a Trademark

When you file a trademark application for a mark that is descriptive of the goods and services – or a quality or characteristic of the goods and services – the Trademark Office will refuse to register it initially. You can still generally achieve registration by amending the application to the Supplemental Register. Or, if you can show long, continuous, and exclusive use, you can keep the application on the Principal Register by claiming acquired distinctiveness under Section 2(f) of the Lanham Act. Basically, you are asserting that the public has come to recognize your mark as indicative of the source of your goods or services because of the efforts you’ve made over several years to associate your brand with a certain quality.

Until recently, it was common that five years of continuous and exclusive would generally satisfy a Trademark Examiner such that you could successfully make a 2(f) claim. However, a discussion I had recently with an Examiner revealed that the Trademark Office has sent down orders to the examining corps that longer use is now going to be necessary, absent other factors such as massive branding or marketing expenditures relative to revenues.

This indicates that showing an adequate length of use is going to be more difficult moving forward. However, a recent ruling within the Trademark Office has raised a new issue. An application was just defeated in an opposition proceeding because it lacked the requisite exclusivity that is part of the 2(f) test. There, an opposer asserted that, while the trademark applicant had used the mark for a long time, it had not done so exclusively, presenting evidence that the opposer and several third parties had used the identical trademark. This was enough to weigh against the application. While absolute exclusivity – likely an impossible standard – is not required, widespread use is inconsistent with a 2(f) claim.

Ownership of Works Within the Scope of Employment

In copyright law, ownership of a Phoenix Copyright Attorneycopyright in a work originally vests in the author, the person who creates the work. The presumption is that the author owns the work. This presumption is excepted in some situations. For instance, when a work is specially commissioned, the hiring party is often considered the owner. Or if a work made for hire agreement has been written, the contract will specify who owns the copyright – the author or someone else. Or, if the work was created by an employee within the scope of employment.

It is usually pretty clear whether a person is an employee. There is often tax, payroll, control, and business evidence to demonstrate whether someone is an employee or not. Where an employment relationship exists, the work must be created within the scope of employment for the employer to be considered to copyright owner. Courts frequently define the scope of employment very broadly. Even if someone creates something on a home computer, outside of work hours, it might still be considered to be employer-owned if it is closely related to the work of the employer, or the work the employee typically does. Additionally, employee handbooks or policy manuals may define the scope of employment, normal job duties, or other aspects of work that may help color the analysis.

In short, determining whether an author is the copyright owner or a hiring party is the owner is vitally important in determining ownership of intellectual property rights, and subsequent licensing rights. There are no bright line rules on ownership, and a lot of factors can be considered when deciding who the copyright owner is. It is important to consult a competent intellectual property or employment attorney when tackling ownership issues like this.

Late Payment Surcharges in Patent Application Filings

Through what feels like a clever loophole, but really is just common sense, there is a way to file a patent application one day and pay the filing, exam, and search fees another day without incurring any surcharges.

Typically, if you pay those filing fees after filing, you’ll have to pay a surcharge of $140 (for large entities as of this writing). Best practices therefore dictate that you pay the filing fees contemporaneously with an initial filing of a patent application. I’ve never been in a situation where I didn’t want to pay the filing fees immediately after filing the application, though I can envision a few very particular situations in which you might strategically do this.

Intentional non-payment aside, sometimes you may not be able to pay the filing fees. The Patent Office’s payment system – Revenue Accounting and Management, or RAM – sometimes goes down for maintenance, and sometimes for unexpected reasons. Extreme caretakers would check to see if RAM was up before lodging an application. However, because you pay for a filing after making the filing, there would still be the possibility that RAM goes down after you check, while you’re filing, and before you’ve paid. In that situation, you’ll likely incur the surcharge. An exception is if you are filing late at night. If you’ve lodged the application in the wee hours in Alexandria (as one on the East Coast can easily do at 9 or 10pm), you can go to sleep, wake up, and pay the fees the next day. Because your application will receive a filing date post-midnight, the filing fees can still be paid on the filing date, even though they weren’t filed contemporaneously.

I called the Patent Office to confirm this, and they agreed. One representative in the Revenue Accounting Department did note, however, that the payment would still need to be received by 1:45pm EST lest it be timestamped the next day. I couldn’t get her to explain why, so if you adopt a strategy as above – which I really can’t recommend – get that payment in early after waking up.

Petitions to Make Special Based on Age

Patent applications generally take quite a long time to prosecute. From the day they are filed, they can easily take two years before issuance, and often take much longer. Much of this time is usually consumed by initial waiting – the Patent Office assigns an examiner to the case, and you simply wait for the examiner to work through all the cases in front of yours. Sometimes this takes a year to two years. I’ve had a few cases that have received initial examination in as little as six months, but it is by far the exception to the rule.

There are ways to expedite examination of an application. When one of the inventors is older, a patent application can be expedited through what is known as a petition to make special based on age. As of this writing, the inventor must be at least 65 years old. A statement must also be made swearing that the inventor is at least 65 years. Only one of the inventors need be 65 or older – the fact that the other inventors may be younger does not destroy the opportunity.

When such a petition is submitted in an application, especially at the initial filing, it can significantly decrease the time to examination. I’ve had some cases that have been examined in as little as three months.   Just this morning, I received a notice of allowance in a case that was filed merely four months ago with a petition to make special based on age.

Getting Patent Declarations Signed

A declaration is a required part of a patent application. It states a number of things about the inventor and the invention. Before the American Invents Act, a declaration stated that the inventor had authorized the application, that he/she was the original inventor, that he understood not make false statements, that he understood the duty to disclose information material to patentability, and that he had read and reviewed the application filed. After the AIA, only the first three of these have been mandated, however, there are several reasons for still including the statements despite the lessened requirement.

Generally, an application is initially filed with the declarations. However, this is not always possible. In some cases, some inventors may not be willing to sign – perhaps they were a contracted engineer who designed an element and never got paid, and now doesn’t want to help with the patent application. Or they have moved away and are no longer in contact. Or they may have even died. Whatever the reason, the inventor may not be able to sign the declaration. What can be done?

When the inventor is unavailable or refuses to sign, you can sign on their behalf with a Substitute Statement. There are a whole host of rules qualifying this and specifying what has to be done, however. This article won’t describe them in detail, because only a qualified attorney should submit a document like that, but I will describe some basic guidelines. The unavailability threshold is quite high. If the inventor is out of town or on vacation in a foreign country, the standard is not met. And an inventor in the hospital doesn’t count, even if he is in a coma. Facts have to be presented when you sign for the other inventor, and the Patent Office will consider whether those facts are sufficient. If not, the declaration will not be accepted.

If an inventor can‘t be reached right away, you can always file the declaration late. In fact, the declaration just has to be filed before the application is allowed. However, you will have to pay a surcharge for the late-filed declaration. Examination will not begin until you pay this surcharge.

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.