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Category: News

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.

Huge Step for PTO Online

Patent on the Web Upgrade

The USPTO has upgraded the USPTO Full Text and Image Database. It now uses PDF images instead of TIFF images which provides several new benefits including the ability to print full documents. Patent images may be viewed, printed and saved using a standard PDF-equipped browser. A separate TIFF plug-in is no longer required. In addition to the standard page-by-page viewing, users may now also click on a “Full Document” button to retrieve all the patent images at once.

This enhancement will make the Patent Office search system much more accessible, and should encourage people to use the PTO’s website more frequently than other third-party sites like Google, Patent Fetcher, or PAT2PDF.  I am very happy about this change.

USPTO Patent Grants Slow with Sequester

In the past 6 months, I’ve noticed in my own practice that the Patent Office has increased the speed with which a first office action is issued, compared to historical numbers.  However, the sequester has had an effect on the Office.  Dennis Crouch from Patently-O reports that patent grants have slowed.  Nevertheless, the 2013 year will still be a record one for patent grants, with an increase of about 5% expected over last year.

KFYI Interview

I just finished an interview with KFYI journalist George Lin.  The interview is on the subject of the rise in patent filings in Arizona and the US.  It should air sometime next week.  I’ll post details when I know more.

Angelo’s, In-N-Out Burger, and their Confusingly Similar Signs

A few weekends ago I competed at Ironman 70.3 Oceanside in California. Oceanside has some restaurants I’ve not seen anywhere else before, in the country or even in California. One of those was a place called Angelo’s, which served everything from burgers to gyros to Mexican. It was decent enough, though probably not the best race food. What struck us was the sign out front. The friend I traveled with is not a lawyer, but he is in sales, so he may be more sensitive to logos than the average bear. We both noticed the sign immediately:

ironman oceanside triathlon angelos burger

The color scheme and prominent shape of the stylized “A” instantly conjured up the iconic In-N-Out Burger sign.  You know the one:

ironman oceanside triathlon in n out

I have no idea how there has not been a lawsuit over this sign. In-N-Out hasn’t shied away from suing others for trademark infringement in the past.  The Angelo’s logo above is interesting because it appears only on the signs that face the road – the signs on the top sides of the restaurant had upstanding As (think Alvin and the Chipmunks “A”).  The road signs are in a place where motorists will catch only a quick glimpse of it from afar or as they pass by.  And with that quick glimpse, the color combination, the angled A, and the writing superimposed through the middle of the A could easily confuse the customer.  It did us, even after we knew we were going to Angelo’s.

Next post: the other incredibly similar trademark infringement we saw during this triathlon trip: ROLA v. POLAR.

Patent Application Filings Increase Dramatically

Inventors and attorneys rushed to file patent applications before March 16, 2013.  That date marked an important change in patent law, with applications filed before being subject to the old patent law, and applications filed after being subject to the new patent law as it has been substantially rewritten by the America Invents Act.  Dennis Crouch of Patently-O produced the below chart showing the drastic change in filings before the deadline.  The week before the changeover, about 6 times as many non-provisional applications were filed, and about 5 times as many provisional applications as is typical.  I’ve reproduced his chart here.

patent application filings

Project Salute helps Arizona Veterans this Weekend

I will be participating at Project Salute this weekend.  If you know of a veteran that has had trouble navigating VA benefits, please encourage them to attend.

The American Bar Association Young Lawyer’s Division will be hosting Project Salute this Friday and Saturday. Project Salute connects volunteer lawyers with veterans to educate veterans on available benefits and to assist them in obtaining these benefits.  Currently, over 1,000,000 decisions on VA benefits are pending, a majority of which have been pending for more than half a year.  Project Salute will be held at the Coliseum (1826 W. McDowell Road) on Friday, March 8, 2013, and on Saturday, March 9, 2013.  Project Salute is a larger part of Arizona Stand Down this weekend (March 8-10), which provides services to Arizona’s homeless veterans, including housing assistance, substance abuse counseling, DES employment and benefits assistance, social security information, tax services, legal aid, and other services like meals, clothing, haircuts, showers, and pet care.