Posts in USPTO

The USPTO is in the process of redesigning its IT systems to take advantage of new technology that will allow end-to-end electronic processing of trademark matters. The new system, known as Trademark Next Generation (TMNG), will significantly increase the functionality and flexibility of the USPTO’s systems, including those used by TTAB, but the TTAB-related aspects of TMNG, particularly for trial cases, will deploy later than those related to examination and appeals. In the interim, TTAB is considering potential updates to ESTTA that are critical from our perspective and from that of our stakeholders. The goal of the forum is to gain stakeholder input as to capabilities considered to be critical, both for the purpose of enhancing ESTTA functionality in the near term and to assist us in planning for the aspects of TMNG that will impact TTAB.

She then pivoted to address the other side of the issue, which relates to issuing patents that should never have been issued in the first place. Lee explained: “I’ve see the effect of patents that should not have issued, or that have issued with a scope that is too broad. There is a also a cost associated with that as well… On average a start-up may get between $10 to $15 million to last over a number of years, and there are statistics that indicate that patent litigation can cost cost well over $1 million. So you can see if there is abusive litigation or a patent that should not have issued, there is a cost to our businesses.”

Michelle Lee, the current Deputy Director of the United States Patent and Trademark Office, was once again in front of a Senate Judiciary Committee panel yesterday, answering questions during her confirmation hearing. Lee, who would take over the vacant position of Director of the USPTO if confirmed, had already been subject to one confirmation hearing in December 2014. With little time before the end of the 113th Congress, then Ranking Member Senator Charles Grassley (R-IA), informed Lee and the Senate panel that no vote would be taken in the 113th Congress and new members of the Judiciary Committee would be given the opportunity to ask questions prior to a vote in Committee during the 114th Congress, which started January 6, 2015. Newly elected Senators Thom Tillis (R-NC) and David Perdue (R-GA) did take the opportunity to ask questions.

Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy, went over the highlights of the USPTO interim guidance, explaining “first, we were able to narrow the funnel that we use to determine which claims should be analyzed for subject matter eligibility.” In this regard Hirshfeld was discussing how the USPTO modified the proposed guidance, which was initially released for comment and the guidance that was release in December 2014. In the proposed guidance from March 2014, the USPTO would have had examiners apply the patent eligibility matrix if the claims “recited or involved” a judicial exception to patent eligibility. In the final guidance, Hirshfeld explained, that the USPTO opted for “directed to” language instead, which is narrower than the expansive “recited or involved” standard.

Headquartered in Nagano, Japan, the Seiko Epson Corporation is a worldwide leader in the manufacture of computer printers, imaging equipment and other information technologies. Well known for its printer products, Epson made some interesting announcements at the 2015 Consumer Electronics Show regarding a series of wearable gadgets for fitness tracking. Investment in printing technologies is still strong at Epson, which…

This was the SAWS program; an oversight procedure for bringing information to the attention of management. It was designed, by intention, to cast a broad and sweeping net. It was designed to permit resources to be brought to bear on high profile or complex legal, ethical, or controversial subject matter… The SAWS program is not a system of stalling patents. While the Bereznak Article asserts “(a)ny application that is categorized in SAWS … is placed in a special type of patent purgatory.” This is just not true.

Yesterday, as authorized by the AIA, the USPTO published the final rule in the Federal Register that will work to reduce certain trademark fees. As you might expect, the USPTO explained in the Federal Register Notice that ”All commenters expressed support of the USPTO’s efforts to increase the volume of end-to-end electronic processing of trademark applications and agreed that the proposed fee reductions will make filing for individuals and smaller entities more accessible and promote greater efficiency through electronic filing and communication.”

The USPTO guidance, which in large part is reminiscent of the KSR Guidelines put out by the Office in 2010, goes through cases one by one. The USPTO explains the facts, provides representative claims and then explains the holding in each case so that patent examiners can understand the teaching point of the case and how to apply the holding to similar situations moving forward. Perhaps most notable, at least on the first review, is that the USPTO incorporated the recent Federal Circuit decision in DDR Holdings, where the Federal Circuit (per Judge Chen) found that the software patent claims at issue in the case were patent eligible.

The patent examiner stated that, when he had tried to allow the patent application, the USPTO system returned a thread – “SAWS case – cannot be allowed.” The application was indeed rejected… The USPTO explained that our counsel’s law firm (a respected IP law firm) had never heard of the Sensitive Application Warning System (SAWS) because the firm, and indeed the public at large, is not supposed to know of this policy. The Office explained that the Sensitive Application Warning System is an internal USPTO policy, that the policy has nothing to do with the public, and that Gofigure was not supposed to have been informed about its designation in this internal USPTO program.