William A. McKenna

In case you don’t have enough to watch on TV, the USPTO launched a portion of its new Trademark Information Network where anyone can view news broadcast-style videos that cover important topics and can teach you about the various phases of the trademark registration process.  The site, which is not yet fully populated, will provide video walk-throughs of the entire trademark application process.  Examples of the videos which will be available include:

• Before You File – overview of the most important issues you should be aware of when filing a trademark application, including trademark availability searching, ownership information, differences between drawings and specimens, identifications of goods and services, and filing bases.
• Searching – use of the Trademark Electronic Search System (TESS) and an overview of the system and tips for how to use the system effectively.
• Applicant Information – focuses on what is meant by the term “applicant.” 
• Drawing Issues – focuses on what is meant by the term “drawing” and how to comply with the requirements for submitting a drawing to the USPTO.
• Goods and Services Issues – focuses on identifying the correct “goods and services” for filing in association with your application.
• Basis Information – provides specifics about the filing requirements for both Section 1(a), Use-in-Commerce, and Section 1(b), Intent-to-Use-in-Commerce, filing bases.
• Specimen Issues – provides examples of acceptable specimens and highlights the differences between a “drawing” and a “specimen.” 
• After You File – provides an overview of the most important issues you should be aware of after filing your application.  It covers such topics as using the USPTO’s electronic resources to keep your application current, who to contact with questions, and what you must do to avoid abandonment.
• Post-Registration Issues - provides an overview of the most important issues you should be aware of after your application has matured into a registration.  The video explains the required maintenance documents that you must file to keep your registration alive, as well as discusses an optional filing to enhance the legal strength of your registration. 

The Anchor in the videos is the Trademark Information Network’s Mark Trademan.  We will leave it to you as to whether his name is either a great coincidence or an attempt at humor.

The USPTO recently announced its new Ombudsman Pilot Program. The Ombudsman Pilot Program is designed to enhance the experience applicants and their representatives have in dealing with issues that arise during patent application prosecution.  To do so, the USPTO is providing personnel to help applicants identify, understand and overcome organizational roadblocks and act as an intermediary between the USPTO and applicants when problems arise.  In the context of this Pilot Program, the “Ombudsman” is meant to ensure that an applicant, attorney, or agent gets the assistance they need when the normal channels have not yielded that assistance.  More specifically, when there is a breakdown in the normal prosecution process, the Ombudsman Pilot Program is designed to provide a method for getting the process back on track quickly.

The Ombudsman Pilot Program does not supplant normal communication between applicants and the USPTO examiner assigned to the case. For example, when an applicant has a question about a specific application in prosecution and is unable to find the correct person to assist them or they are unable to obtain assistance from the examiner to whom the application is assigned, then the Ombudsman Pilot Program is the venue to use. 

In addition to resolving problems, the Ombudsman program will accept confidential complaints for issues which arise during prosecution and attempt to track their occurrence rate over time.  The Ombudsman Program Director will periodically review reports of the confidential complaints looking for trends or groups of complaints regarding the same or similar issues and will take action based on the trend or group of complaints without revealing the particulars of any individual complaints. 

To view the USPTO’s FAQs on the Ombudsman Pilot Program, click here.

The United States Patent and Trademark Office (USPTO) is considering making a change to pendency of provisional patent applications.  The change, if adopted, would somewhat extend the existing 12‑month provisional application period to 24-months.  This change would be implemented through the missing parts practice common to nonprovisional applications. 

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period.  

Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding nonprovisional application in order to claim the benefit of the provisional application.  The proposed change would not alter this requirement but instead would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application.

Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration.  In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request.  Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees.

The USPTO is currently accepting comments on its proposal before considering it for implementation.  A copy of the USPTO Notice is available here.

Prior unsuccessful attempts to reform the U.S. patent system and rein in massive damages awards have sought to limit damages to the actual economic impact attributable to the claimed invention.  In its most recent bill, the U.S. Senate has shifted its focus from the methodology of the damages analysis, and now seeks to prevent a Plaintiff from presenting a more favorable damages theory absent sufficient evidence to justify its appropriateness. 

 The proposed bill would establish a Daubert like “gatekeeper” role, requiring the district court to exclude unjustified damages theories and evidence.  The proposed bill would mandate that the district courts conduct a thorough hearing on patent damages prior to trial. 

 The bill specifies that “the court shall consider whether one or more of a party’s damages contentions lacks a legally sufficient evidentiary basis” and that “[t]he court shall only permit the introduction of evidence relating to the determination of damages that is relevant to the methodologies and factors that the court determines may be considered in making the damages determination.”  Furthermore, the bill specifically requires that “[t]he court shall identify the methodologies and factors that are relevant to the determination of damages, and the court or jury, shall consider only those methodologies and factors relevant to making such a determination.”  Presumably, such an analysis would be guided by the well established Georgia-Pacific factors.  For a copy of the full version of the current Senate bill, click here.

The USPTO is introducing a new pilot program which will accelerate the examination of certain “green” technology patent applications.  Under normal circumstances, patent applications are examined in the order that they are filed.  Currently, the average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision. Under the new pilot program, for the first 3,000 applications related to green technologies in which a proper petition is filed, the agency will examine the applications on an accelerated basis.

Pending patent applications in green technologies will be eligible to be accorded special status and given expedited examination, which will have the effect of reducing the time it takes to patent these technologies by an average of one year.  The policy behind the program is that earlier patenting of these technologies enables inventors to secure funding, create businesses, and bring vital green technologies into use much sooner.

Additional details on the USPTO pilot program will be available in the Federal Register: USPTO Notice

New USPTO Director David Kappos is reaching out and attempting to engage the public on the topic of patent law and other issues that matter to both inventors and the patent bar alike.  Mr. Kappos began the blog earlier this month by saying:

“I want to hear from you.  All of us at the USPTO know that we benefit immensely from your input.  We are here to serve all segments of the IP community better.  And I am committed to doing what is good for every stakeholder group and every segment of the IP community. That is my pledge to all of you.”

Recent topics from Mr. Kappos’ blog include the impact of KSR and thought on patent reform legislation.  To read the blog or leave comments of your own, click here.

Monday the U.S. Supreme Court heard oral arguments in the highly anticipated Bilski v. Kappos case.  The Court’s decision in this case, which is expected by the spring of 2010, will shape what types of technology is and is not eligible for patent protection.

A transcript of the hour-long oral argument is available here.

ICANN (the body responsible for regulating domain names) is planning to expand the domain name system to better reach an international audience.  Domain names consisting of non-latin characters are currently set to be launched on November 16, 2009.  These characters will include Chinese, Arabic, and Hebrew.

In addition, ICANN is considering removing the cap on the current number of generic top level domains (gTLDs) (e.g., .com, .net, .gov) to allow for an unlimited number of gTLDs.  The current proposal would allow applicants to register domain names with any extension such as “.car”, “.restaurant”, or “.movie”.  Given the proposed opening of this new online frontier, ICANN will attempt to address current brand owner’s concerns by implementing a “sunrise” period which would allow verified mark owners first access to domains including their mark as well as expanded WHOIS listings and dispute resolution policies.  ICANN is currently accepting comments on these proposed policies.

In the event ICANN’s proposed policies are adopted, we will likely see a flurry of activity as brand owners seek to protect their brands and third-parties seek to establish their place in this newly opened space.  However, given the nearly unlimited number of combinations, prioritization will almost certainly be a key strategy.

On September 24, 2009, Thailand (TH) became the 142nd Contracting State of the PCT.  Thailand will become bound by the PCT on December 24, 2009, and all PCT applications filed on or after December 24 will automatically designate Thailand.

A new patent search tool offered by WIPO is available here.  The tool includes about 1.6 million PCT applications as well as the patent collections of ARIPO, Cuba, Israel, Mexico, South Korea, Singapore, South Africa and Vietnam.  Additional collections will be added in the near future.