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Category: News

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.



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.



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.



Patent Office Website Features will not be Accessible to Chrome Users Soon

Some of the features of the Patent Office website, such as EFS-Web and Private PAIR, will no longer be accessible to users of Chrome after this month. Those programs are essential tools for a patent attorney, patent agent, or any inventor who has filed an application pro per. They are the portals to filing and accessing a patent application and its status and correspondence. Those two features also rely on Java.

In April 2015, Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts one’s ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that will allow you to use the Java plug-in so that you can continue to log into EFS-Web and Private PAIR. However, this workaround will only work through September 2015, when Google Chrome plans to end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users using version 45 and above will no longer be able to use the workaround and thus will not be able to log into EFS-Web or Private PAIR. Oracle recommends the use of alternative browsers such as Firefox, Internet Explorer, and Safari.

Although the above browsers should continue to work with EFS-Web and Private PAIR, there is always a possibility that these providers may decide to discontinue support of Java plug-ins as well. The USPTO is apparently investigating if there are possible strategies to mitigate the immediate impact, and is working on a longer term plan to improve the overall authentication process.



Direct and Indirect Patent Infringement – Evolving Standards under Akamai v. Limelight

Though I’m not a litigator, infringement concerns are a primary concern for many of my clients. Those concerns evolve with time. Despite decades of case law, the courts are still developing some of the fundamentals of patent infringement. There are two basic types of infringement: direct and indirect (which is further subdivided as contributory infringement and induced infringement. Direct infringement is – generally – infringement that you yourself participate in: you sell something infringing, you make something infringing, you use something infringing, etc. Indirect infringement, on the other hand, occurs when you contribute to another’s infringement, make another’s infringement possible, or benefit from another’s infringement.

Yesterday the Federal Circuit issued an opinion regarding direct infringement after the Supreme Court gave its opinion and told the Federal Circuit to take another look. The case involves the question of whether, when a patent is directed to a method comprising a number of steps, a single party can infringe that patent even if it did not practice every single one of the steps. In another way, the case asked whether a defendant may be liable for inducing patent infringement when no other party has actually directly infringed the patent. As may seem immediately obvious, the Supreme Court said no; induced infringement will not lie unless there is at least a direct infringer first.

The Federal Circuit has now expanded the definition of infringement to include situations where all of the steps, while not necessarily being performed by the defendant, may still be attributed to the defendant. Now, liability can be found where the defendant “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” This broadens the scope of liability beyond the earlier rule which required that the defendant either perform all the steps, use an agent to perform some or all of the steps, or contract with another or enter a joint venture to perform some or all of the steps. This new rule adopts the Supreme Court’s analysis of induced infringement under copyright law, which was used in the seminal case of MGM v. Grokster on internet-based peer-to-peer music file sharing (which happens to have been the subject of this author’s Law Review article).

The ruling indicates that infringement can now be found where a party performs some of the steps of the method claim even if the other steps are performed by another party.



New Website at US Patent and Trademark Office

Last week the US Patent and Trademark Office rolled out a new website.  So far, I have heard nothing but complaints.  The new website is intended to improve the experience of doing business with the USPTO.

The site is supposed to be easy to use for everyone.  Patent attorneys and agents who frequent the site probably will not have much trouble getting used to it.  I have no issues with the no site yet, as most of my work occurs off the front page, where the majority of the changes seem to have taken place.  The pages I use frequently – Private PAIR, EFS-Web, TESS, TEAS, and TSDR – haven’t changed at all.

For those who don’t frequent the site, there are two primary tabs for Patents and Trademarks near the top, and a helpful QuickLinks button at the top right which includes really just about anything you need to get work done.

Patent Attorney



Supreme Court Sanctions Patent Attorney

Previously, I have described how not to write a claim in a patent application. Now, the Supreme Court has let us all know how not to write a Petition for Writ of Certiorari. Such a petition is a necessary part of having a case argued before the Supreme Court of the United States. Unlike the first level of appellate courts, to which any party can appeal, only some appeals are accepted by the Supreme Court to be heard. This is a necessary mechanism: thousands of trial courts funnel appellate work to a handful of appeals courts, and many of those cases are requested to be reviewed by the Supreme Court. However, the Court has only nine justices and can hear only so many cases a year. Thus, the Court picks and chooses which arguments it will hear, and refuses to hear other cases by denying their petitions for writ of certiorari. It would thus seem obvious, then, that a petition would be written clearly to convey the depth and importance of the question presented in the case.

Well, apparently not always. The Court recently denied a petition in a patent case because the petition was so lacking. The question presented in the petition “focused” on a developing line of precedent in the Supreme Court on subject matter eligibility (what types of inventions can be patented). The Court was not impressed with the question, nor should you be. The petition was long, oddly formatted, asked at the outset:Patent Supreme CourtI can’t make too much sense of it, and neither could the Court. It is now requiring that the attorney explain why he shouldn’t be sanctioned for submitting a petition in this fashion.

 



Patent Office Issues New Internal Guidance on Subject Matter Eligibility

On March 4, 2014, the Patent Office published a guidance memorandum titled Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products (Guidance). The Guidance implements a new procedure to address changes in the law relating to subject matter eligibility under 35 U.S.C. § 101 in view of recent court decisions including Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012).

Examiners are being trained – and indeed some have completed training – with regard to these new guiding rules. You can expect some bumps and disagreements as practitioners and examiners debate the role of the Guidance and how it shapes examination of particular claims, but continued efforts towards clarity in patent examination are always appreciated.

You can view the new Guidance document here.

You can view a Quick Reference Sheet here.

You can view Training Slides used to train the patent examiners here.

 



Marty Stoneman Passes Away

Phoenix patent attorney Martin Stoneman passed away on February 5, 2014. Marty had a large presence in the Phoenix patent market; he worked on over 250 issued patents and many more patent applications. Cases continue to issue posthumously and likely will for some time. I knew him only a little, but had colleagues who had worked with him at length. I’d taken over several cases from Marty as well, and clients spoke fondly of him. His death will be felt in the Phoenix community for quite a long time.