Legal Advantage's Blog

Ensure Consistency in your Design Patents with a Simple Guide

Legal Advantage — Thu, 16 Jun 2011 05:00:00 GMT

When it comes to complex and organic forms, drawing design patents with consistent figures can be a challenge. The validity of a design patent is based on the consistent representation of a form that is seen from figure to figure - no figure can contain any information to the design if it is not seen in a different figure. A design patent protects the structural or ornamental appearance of the new invention, and the claims for the patent are based on the specific ornamental appearance of the patent drawings. It is critical that consistory is not only checked throughout the patent illustration process, but that it is built into the way the drawings are created.

At Legal Advantage we provide supplemental documentation to each design patent illustration, ensuring that all of the figures are drawn to the exact dimensions. We use a technique that the patent examiner's use, an overlay of construction lines that highlight consistency from figure-to-figure for specific aspect of the design. This is a basic visual check list that we perform throughout the creation of the figures that impacts the speed and quality of the draft.

When it comes time for the application submission, our clients are confident with this provided consistency guide, because it is the same visual test an examiner will provide and can reduce unneeded office actions.

Learn more about our consistency guide in the patent illustration section of our site and see an example consistency guide. Please feel free contact us with any questions you may have with your design patents. In future posts we will walk through the steps for ensuring that perfect draft with tips to ensure design patent consistency. Did you start with the most accurate view and how do you build a figure without any documentation of it?

USPTO Appoints New Deputy Commissioner for Trademark Operations

Legal Advantage — Wed, 15 Jun 2011 05:00:00 GMT

Washington - The United States Patent and Trademark Office (USPTO) today announced the appointment of Mary Boney Denison as Deputy Commissioner for Trademark Operations. In her new position, Ms. Denison will oversee the examination and processing of applications throughout the trademark operation.

Ms. Denison is a founding partner of Manelli Denison & Selter PLLC in Washington, D.C. where her practice has focused on trademark prosecution and litigation. She has been an active member of the 5,500 member International Trademark Association (INTA) for many years having served as a member of the INTA Board of Directors for three years; as Vice Chair and Chair of its Treaty Analysis Committee; and most recently she served as Chair of the USPTO subcommittee charged with representing the international trademark bar before the agency. The U.S. Secretary of Commerce appointed Ms. Denison to a three year term as a voting member of the Trademark Public Advisory Committee (TPAC) in October 2008.

“Mary brings unparalleled experience and expertise to the agency and will be a great addition to our team,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “I very much look forward to working with her in her new capacity, and I know she will keep the Trademarks organization on its current path of success.”

"I am delighted to have Mary join our senior management team and know her experience in trademark law and as an active member of TPAC will be invaluable as we work to continually improve our operations," added Commissioner for Trademarks Deborah Cohn.

Ms. Denison was selected as a “Washington DC Super Lawyer 2007,” placing her in the top five percent of Washington, D.C. area lawyers. Prior to establishing Manelli Denison & Selter in 1996, she was a partner with Graham & James LLP where she practiced for ten years. Before joining Graham & James, Ms. Denison was associated with the New York law firm of Smith, Steibel, Alexander & Saskor where she was primarily involved in handling litigation for foreign clients. Ms. Dennison is a graduate of Duke University and the University of North Carolina School of Law.

Read the press release here: USPTO

European Patent Office Applicant Increase in 2010

Legal Advantage — Tue, 07 Jun 2011 05:00:00 GMT

The European Patent Office (EPO) has published its 2010 patent filing statistics, and records have been broken. The EPO received 235,000 patent filings which is an 11% increase over 2009, and sets the records as the most patents files in the EPO’s 34 year history.

EPO President Benoît Battistelli states: "The figures are clear: growth is back. In 2010 there was an increase in demand for patent protection from every region of the world. After a two-year slump the EU and US are nearly back to their levels of patenting of before the crisis. This combined with a massive rise in patent applications from Asia - led by China - has made 2010 a record year at the EPO."

Electronic devices, Chemical engineering, and network data companies lead the top patent applicants with Siemens applying for 2135, Phillips at 1765, BASF at 1707, Samsung at 1691, and Qualcomm at 1682 patent applications.

The EPO has provided its data in excel format for evaluation on the EPO 2010 Patent Statistics Page

Peer to Patent System Launches in the UK

Legal Advantage — Thu, 02 Jun 2011 05:00:00 GMT

The Minister for Intellectual property, Baroness Wilcox, launched an innovative new tool to help improve the patent application process where experts from the scientific and technology communities view and comment on patent applications. A six month pilot program will take place where 200 applications in the computing field will be uploaded and reviewed. Registered users will be able to comment and critique applications, after which the system will summarize the comments and send them to the appropriate patent examiner at the Intellectual Property Office (IPO).

"Patent applications granted after using the Peer To Patent website review will be potentially stronger, giving businesses better protection to grow their innovative ideas. This will give the IPO access to a wider body of knowledge when deciding whether a patent should be granted” commented Baroness Wilcox.

The President of the Chartered Institute of Patent Attorneys (CIPA) Alasdair Poore stated:

The quality of patent applications is so important. Interested observers are the ones who have the expert knowledge, so Peer To Patent gives them the chance to make a real contribution. We welcome this pilot as a way of exploring how third party opinions can really improve the quality of patents. I hope users, observers and applicants will engage positively and constructively in the pilot to show that it can work, and help to build a stronger UK patent system."

The pilot went live on June 1st and will carry on until December 31st.

Read the press release here and check out the pilot program at http://peertopatent.org.uk/

USPTO Studying Therasense v. Becton, Dickinson Decision

Legal Advantage — Fri, 27 May 2011 05:00:00 GMT

USPTO PRESS RELEASE

Washington – Today the United States Patent and Trademark Office (USPTO) announced that it is carefully studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures. The agency also announced that it expects to soon issue guidance to applicants related to the prior art and information they must disclose to the Office in view of Therasense.

“We are now studying the potential impact of Therasense v. Becton, Dickinson on Office practice, and we expect to soon issue guidance to applicants regarding the materials they must submit to the Office under their duty of disclosure,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

The Therasense decision concerns the standards for inequitable conduct, including the materiality and intent prongs. The Court’s decision resolves uncertainties in many aspects of how district courts must apply the inequitable conduct doctrine. It also directly affects applicant behavior in front of the USPTO and, in particular, their disclosure of information relevant to the patentability of their inventions.

USPTO and Swedish Patent Office Partner on Patent Prosecution Highway Pilot

Legal Advantage — Wed, 25 May 2011 05:00:00 GMT

The United States Patent and Trademark Office (USPTO) today announced a new pilot project for the Patent Prosecution Highway with the Swedish Patent and Registration Office (PRV) based on Patent Cooperation Treaty (PCT) work products (PCT-PPH pilot program). PPH will permit each office to benefit from the PCT work previously done by the other office, which reduces the examination workload and improves patent quality.

USPTO Announces U.S. Government-Wide Intellectual Property Training Database

Legal Advantage — Fri, 20 May 2011 05:00:00 GMT

USPTO Press Release, 11-34

Washington – The United States Patent and Trademark Office (USPTO), in cooperation with the Office of the Intellectual Property Enforcement Coordinator (IPEC), today announced the launch of a new online database (www.usipr.gov) where U.S. government agencies are now posting information about the intellectual property rights (IPR) training programs they conduct around the world.

The Global Intellectual Property Education: Training Program Database was a product of the 2010 Joint Strategic Plan on Intellectual Property Enforcement. The Strategic Plan called for the creation of a central database in which agencies that conduct international intellectual property enforcement training could deposit training materials to promote greater coordination and avoid duplication of resources.

“The database is intended to facilitate more efficient use of limited IPR training resources by sharing training materials among U.S. government agencies, avoiding duplicative programs, and identifying IPR enforcement training deficiencies,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

The USPTO, working closely with the U.S. Department of Homeland Security and other agencies that conduct international enforcement training, has established the database for storing and sharing training materials among federal agencies. The database is fully searchable and includes each program’s title, location, description, participants by country, background, and more. It also allows agencies to post attachments, training materials and information describing their program.

“We expect this database will permit agencies to enhance the impact of their IPR training, by building on past programs and targeting U.S. government efforts on countries and topics where more training is needed,” said U.S. Intellectual Property Enforcement Coordinator Victoria Espinel. “Moreover, the database will increase transparency, by allowing the public to see how the U.S. government is allocating resources on IPR training.”

Already, U.S. government agencies that conduct IPR enforcement training have posted information on past activities going back to October 2010. To date, more than 100 training and technical assistance programs that relate to protecting intellectual property rights have been entered into the database. Agencies will continue to provide the latest information on their training programs and upcoming events as they are planned.

Examine the The Global Intellectual Property Education: Training Program Database at http://www.usipr.gov/

USPTO Announces Full First Action Interview Pilot Program

Legal Advantage — Tue, 17 May 2011 05:00:00 GMT

USPTO Press Release 11-33

The United States Patent and Trademark Office (USPTO) today announced the Full First Action Interview Pilot Program, which is an expansion of the Enhanced First Action Interview Pilot Program so as to include all utility applications in all technology areas and filing dates. As with the previous First Action Interview pilot programs (which included the Original and the Enhanced pilots), the applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. This pilot will run through May 16, 2012.

Participants in the previous First Action Interview pilots experienced many benefits including: (1) the ability to advance prosecution of an application; (2) enhanced interaction between the applicant and the examiner; (3) the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process and; (4) the opportunity to facilitate early allowance. Approximately 34 percent of the applications in the First Action Interview Pilot Programs were allowed on the first action on the merits, as compared to approximately 11 percent on average across all technologies for new non-continuing applications.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said, “We’re expanding this pilot program because we’ve seen that, by enhancing the interaction between the applicant and the examiner early in the examination process, it helps both applicants and the USPTO. We hope that by expanding the pilot to even more technology areas, we will see many more applicants take advantage of this program and realize its benefits.”

For applications in the program, the examiner will conduct a prior art search and provide the applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections. Within 30 days of receipt, the applicant schedules an interview and submits proposed amendments and/or arguments. At the interview, the relevant prior art, proposed rejections, and proposed amendments and arguments will be discussed. If agreement is not reached, the applicant will then receive First Action Interview Office action that includes an interview summary that constitutes a first Office action on the merits under 35 USC 132.

Read the Press Release

The USPTO Trademarks Dashboard - A Data Visualization Center

Legal Advantage — Wed, 11 May 2011 05:00:00 GMT

Unveiled on May 10th, the USPTO now provides a Trademarks Dashboard tool demonstrating a data visualization of many factors concerning trademark processing and how they compare to the past years. This tool gives users access to information including first action and total pendency, first and final action quality, filing methods metrics, as well as total registrations broken down by classes and fiscal year.

The end goal of this tool is to keep the users and the applicants up to date with the efforts at the USPTO, by measuring and providing statistics within the Trademark division. A notable measure of quality is the first action quality statistic, which is “measured through an evaluation of all issues involved in making a first action substantive decision on the registrability of a mark. The target is 95.5% for the percentage of error free decisions.”

The Q1 of 2011 showed a marked improvement over 2010 with a 97.3% quality score, while the registrations in Q2 are lower at 96.4%. So far this fiscal year189,064 applications have been filed, a vast majority of which have been filed electronically. Almost halfway through the year, there have been 228,000 new registrations - already topping last year's figure at this point (221,090), approaching 2009’s figure (241,637), and almost matching the 2008's number of 274,250.

This data visualization tool is very similar to the USPTO's patent dashboard, and is welcomed by all of us in the intellectual property field. It is welcoming to see these tools that are meant to provide transparency into the backlogged offices, and offer very informative and up to date data for users.

Take a look at the Trademarks Dashboard

USTR Releases Annual Special 301 Report on Intellectual Property Rights

Legal Advantage — Mon, 02 May 2011 05:00:00 GMT

"The Office of the United States Trade Representative (USTR) released its annual Special 301 Report on the adequacy and effectiveness of U.S. trading partners’ protection of intellectual property rights (IPR). Fighting IPR theft in overseas markets is critical to the livelihoods of the estimated 18 million Americans who work in intellectual property-intensive industries. The Special 301 Report provides a means for the United States to promote the protection and enforcement of IPR. This year, for the first time, USTR has issued an open invitation to all trading partners listed in the report to cooperatively develop action plans to resolve IPR issues of concern.

“This year’s Special 301 Report comes with a call to action for our trading partners. We are ready to work intensively with you to stop intellectual property theft that threatens IP-related jobs in the United States and other countries,” said Ambassador Ron Kirk. “Today’s report is a springboard for ambitious and collaborative partnerships in the coming year to strengthen protection for the innovation and creativity that drive jobs and exports for the United States and our partners around the world.”

In the report, USTR announced that in 2011 it will conduct an out-of-cycle review of Italy to monitor progress on IPR protection and enforcement, in particular in the area of piracy over the Internet. Today’s report also recognizes important examples of progress made by several countries, including through the enactment of significant IPR legislation in Mexico, the Philippines, Russia, and Spain. However, no trading partners are being removed from the two main categories in the report, the Priority Watch List and the Watch List.

America’s two largest trading partners, Canada and China, remain on the Priority Watch List. The report notes the failure of Canadian efforts in 2010 to enact long-awaited copyright legislation and to strengthen border enforcement. It highlights ongoing concerns about the prevalence of piracy and counterfeiting in China, and China’s implementation of “indigenous innovation” and other industrial policies that discriminate against or otherwise disadvantage U.S. exports and U.S. investors. Russia remains on the Priority Watch List as well. While Russia has taken significant steps to improve IPR protection by enacting important legislation, the report urges Russia to take additional steps to address Internet piracy concerns and enforcement more generally."

Follow this link to read the rest Press Release from the Office of the United States Trade Representative

Read the Special 301 Report on Intellectual Property Rights