Tuesday, November 3, 2009

New Trademark Manual of Examining Procedure

The U.S. Patent & Trademark Office recently unveiled the sixth edition of the Trademark Manual of Examining Procedure (TMEP).  Click this link for a copy of the Sixth Edition of the TMEP.  The new edition incorporates new case law through September 1, 2009.  Kudos to John L. Welch's TTABlog® for pointing this out.

Monday, November 2, 2009

Examiners' Union Approves Changes to Patent Examination

One of the first actions taken by USPTO Director David Kappos was to propose reforms to the system used to allocate time for the examination of patents and grade a patent examiner's productivity. The count system probably has a greater impact on how patent examiners do their work than even the patent laws and regulations. In a nutshell, the proposed reforms give more credit for the first action taken on a patent application and give less credit for examining patents after the filing of a request for continued examination. The new system also gives more time for examination, including an emphasis on early communication between examiners and applicants. The Washington Post recently reported that the examiner's union (POPA) recently voted to approve the changes to the count system. This is encouraging progress in breaking with the previous PTO's leadership stance equating higher quality with higher rejection rates and changing the patent office culture from fear of allowing patents to encouraging quick identification and allowance of patentable claims.

Monday, October 12, 2009

Re-importing Copyrighted Goods

By seeking input from the Solicitor General, the Supreme Court appears to be seriously considering granting review of a case raising the issue of whether the doctrine of copyright exhaustion applies to goods sold overseas by a United States. copyright holder and then imported to and sold in the U.S., Costco Wholesale Corp. v. Omega, S.A. Under the doctrine of first sale or exhaustion, once the copyright holder has sold an authorized copy of the protected work, the purchaser takes the copy free of the copyright holders rights and can transfer it without obligation to or subject to restrictions of the copyright holder. Omega sells its watches for a higher price in the U.S. than it does in other countries. Costco purchased Omega watches overseas and began selling them in its U.S. stores. The issue on appeal is whether the overseas sales exhausted the copyright. The Ninth Circuit Court of Appeals held that the doctrine did not apply.

Thursday, October 8, 2009

USPTO Withdraws Controversial Rules

The U.S. Patent and Trademark Office has announced that it will withdraw controversial new rules regarding claiming and continuation applications that have been the subject of a court challenge. Two court challenges were brought by independent inventor Dr. Tafas and by pharmaceutical giant GlaxoSmithKline, which were consolidated as Tafas v. Kappos. The case is currently pending appeal before the Court of Appeals for the Federal Circuit.

Wednesday, October 7, 2009

Federal Circuit Bar Association Model Patent Jury Instructions

The Federal Circuit Bar Association (“FCBA”) has recently released their latest draft of model patent jury instructions and is asking for comments. Comments may be sent by email to juryinstructions@fedcirbar.org. The FCBA announcement can be found here.

Monday, September 14, 2009

Director Kappos to patent examiners: Higher rejection rates does not equal higher quality

Professor Dennis Crouch of Patently O has reported that new USPTO Director Kappos sent an email to patent examiners rejecting the past leadership's attitude that higher rejections rates in recent years was a sign of increased patent quality. As discussed in a previous post, the USPTO needs a dramatic change in institutional culture and attitude if it is to restore its damaged relationship with the patent community and meaningfully address problems such as application backlog and declining revenues. The trend for several years has been for rejections to be more arbitrary and subjective, in part due to recent court decisions, but Director Kappos' message may be a sign that improvement is coming. They say "the proof of the pudding is in the eating." In the this case, the proof that the Examiners are listening will be if and when the examiner's corp improves the quality of its examination.

Tuesday, September 1, 2009

CAFC Reins in TTAB Fraud Decisions

The Court of Appeals for the Federal Circuit ruled yesterday that fraud on the U.S. Patent and Trademark Office (“PTO”) requires proof of actual intent to deceive, which may not be inferred merely because a trademark applicant made a misstatement that it should have known was false. The court held that “a trademark is obtained fraudently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.” In re Bose Corp., 2008-1448, slip op. p. 7 (Fed. Cir., Aug. 31, 2009).

Thursday, August 27, 2009

New PTO Director Must Change the Agency’s Culture

David Kappos’ biggest challenge as the new Director of the United States Patent and Trademark Office may be to change what has been called a “culture of fear” among patent examiners into a “culture of cooperation” with the patent community.

Tuesday, June 2, 2009

Supreme Court to Review Scope of Patentable Subject Matter

The U.S. Supreme Court agreed to review the en banc decision of the Court of Appeals for the Federal Circuit in In re Bilski (545 F.3d 943). In that decision, the Federal Circuit rejected its previous “useful, concrete and tangible result” test for patentable subject matter articulated in State Street (149 F.3d 1368). Finding that test inadequate or inappropriate, the court articulated two tests for patentability that are commonly referred to as the “machine-or-transformation” test. Under the new test, a claimed process is patentable if “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”

Friday, February 13, 2009

Heritage Foundation on Patent Reform

The Heritage Foundation, a leader is conservative thought, recently issued an open policy-memo to President Obama on patent reform (link below). The recurring theme of the memo is that patent reform should serve to reinforce patent rights and certainty in the strength of patent rights in general rather than weaken the entire system to address a few narrow, limited problems. Heritage proposes that all proposed reforms should be measured by “whether they are likely to increase or decrease investments in industries that rely on patent protections to foster innovation.”