Latest Patent News
June 15, 2011 - USPTO Appoints New Deputy Commissioner for Trademark Operations
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.
May 31, 2011 - U.S. COMMERCE SECRETARY GARY LOCKE OUTLINES ADMINISTRATION VIEWS ON AMERICA INVENTS ACT
WASHINGTON – U.S. Commerce Secretary Gary Locke today issued a letter to House Judiciary Committee Chairman Lamar Smith and Ranking Member John Conyers outlining the views of the Obama administration on H.R. 1249, the America Invents Act. The legislation to reform the U.S. patent system was voted out of the House Judiciary Committee by a bipartisan vote of 32 to 3 on April 14, and similar legislation overwhelmingly passed the U.S. Senate on March 8.
The America Invents Act, sponsored by Chairman Smith, enhances the U.S. patent system by increasing certainty of patent rights through implementation of a first-inventor-to-file standard for patent approval while also reducing the need for cost-prohibitive litigation, which all too often ties up new ideas in court, stifling innovation and holding back job creation. It will also allow the United States Patent and Trademark Office (USPTO), which is entirely fee funded, to set and retain the fees it collects from its users. This fee-setting authority will ensure high-quality, timely patent review and address the backlog of patent applications that is currently preventing new innovations from reaching the marketplace. Ultimately, the proposed legislation will provide the most meaningful reforms to the U.S. patent system in 60 years.
Since the beginning of Locke’s tenure as Commerce Secretary, reforming the U.S. patent system to support the acceleration of American innovation and competitiveness and drive job creation and economic growth has been one of his top priorities. In meetings with CEOs and U.S. business leaders from companies of all sizes, the shortcomings of the U.S. patent system and the need for reform has almost always been a topic of conversation. Locke and his Director of the USPTO David Kappos have heard from both large-scale innovators and independent inventors, across a variety of industries, as to how an improved patent system can help them bring their ideas to market, grow their businesses and create jobs.
The cost of proving that one was the first to invent under the current first-to-invent system has been prohibitive for many small inventors, generally favoring larger entities better equipped to handle legal challenges. With the appropriate resources to process patents more quickly, inventors will be able to use their intellectual property rights as vehicles to leverage new sources of funding for their innovations. And in a globalized world, comprehensive patent reform will increase productivity by further enabling greater work-sharing between the USPTO and other patent offices around the world. This updated patent infrastructure will level the playing field for small enterprises seeking to participate in the global marketplace – reducing expensive and time-consuming litigation, simplifying the process of acquiring rights and creating a system that mirrors others around the world, all while enhancing American competitiveness and spurring economic growth.
During the last two years, Locke has worked with bipartisan Congressional leaders as they have crafted legislation that is widely supported by industry experts, universities, independent inventors, and the business community, because it will make it easier for America’s innovators to produce new technologies that drive economic growth and generate jobs.
Read Locke’s letter to House Judiciary Committee leadership on the America Invents Act here.
May 26, 2011 - USPTO Studying Therasense v. Becton, Dickinson Decision to Assess Impacts on Agency Practice and Procedures; Expects to Issue Further Guidance to Applicants Soon
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.
May 25, 2011 - USPTO and Swedish Patent and Registration Office to Partner on Patent Prosecution Highway Pilot Based on Patent Cooperation Treaty Work Products
Washington – 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. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. The PCT-PPH program will use international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.
“This new pilot marks a significant achievement in the growing bilateral cooperation between our two offices,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The Swedish Patent and Registration Office is an important partner in the expanding PPH network. Applicants will benefit from expedited examination and higher patent quality through the elimination of duplicative work.”
Mrs. Susanne Ås Sivborg, Director General of PRV said, “To provide high quality, timely processing and excellent services to our applicants is a top priority for PRV and this pilot is a milestone in this work. Reduction and elimination of duplication of work will increase quality and provide more effective procedures. This will bring benefits to applicants and provide business opportunities for companies both in Sweden and in the U.S.”
Under the PCT-PPH pilot program, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the PRV was the International Searching Authority or the International Preliminary Examination Authority may request that the USPTO fast track the examination of corresponding claims in corresponding applications. Full requirements for participation in the PCT-PPH pilot program at the USPTO can be found at http://www.uspto.gov/patents/init_events/pph/index.jsp. Information on the Swedish Patent and Registration Office’s PCT-PPH program may be found at http://www.prv.se/Om-oss/Nyheter/Patent-Prosecution-Highway.
The purpose of the PCT-PPH pilot program is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at the USPTO as well as the Swedish Patent and Registration office. The trial period will start on June 1, 2011, and is set to expire on May 31, 2013, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. The offices will provide notice of any adjustment in the trial period.
May 20, 2011 - USPTO Announces U.S. Government-Wide Intellectual Property Training Database
New database includes all U.S. government agencies’ training program data
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.
May 16, 2011 - USPTO Announces Full First Action Interview Pilot Program
Enhanced First Action Interview Pilot Program expanded to include all eligible applications in all technology areas
Washington – 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.
More information about this expanded pilot is available in the following notice: http://www.uspto.gov/patents/init_events/faipp_full_preog.pdf.
The process remains unchanged from the process used during the Enhanced First Action Interview Pilot Program which ended April 1, 2011. Information about that Program can be found at http://www.uspto.gov/patents/init_events/faipp_landing.jsp.