Ensuring the validity of micro entity certifications – which provide reduced fees to eligible inventors and small businesses
Guest blog by Andrew Faile, Acting Commissioner for Patents
A core focus of our work at the USPTO is to foster innovation, competition, and economic growth, by providing opportunities for all current and aspiring inventors and entrepreneurs to participate in the intellectual property (IP) system. The cost of filing an application for a patent or trademark should not hinder individual inventors and small businesses from obtaining these key IP protections. That is why we offer a 50% and 75% reduction on most patent application fees to independent inventors and small businesses that qualify as small and micro entities.
A small entity is generally defined as a business which, including affiliates, has fewer than 500 employees, a qualifying nonprofit organization, or an individual who has not assigned, licensed or otherwise conveyed or promised to convey an interest in the invention to a non-small entity. To be a small entity applicant, it is required that all parties holding rights in the invention qualify for small entity status.
A micro entity must meet the criteria of a small entity, but also qualify for micro entity status, either on a gross income basis or on a basis of higher education, where the applicant must be obtaining the majority of their income from a United States institution of higher education. An additional requirement when filing for micro entity status based on gross income is that neither the applicant nor the inventor has been named as an inventor on more than four previously filed applications.
In recent years, we have seen a significant increase in applications by inventors claiming micro entity status, especially in the field of design patents. For example, from fiscal year 2019 to fiscal year 2020, applications for design patents filed with micro entity certifications increased by 44%, and that percentage continues to rise. In addition, requests to expedite the examination of a design application (referred to as “rocket docket” filings) with micro entity certifications increased by almost 400% during that same one-year period.
We love to see inventors utilize the micro entity discount to protect and grow their businesses – that’s why it exists. However, this uptick in micro entity filings has been accompanied by a significant increase in the number of erroneous micro entity certifications filed by inventors who do not qualify as micro entities. Many of the erroneous micro entity certifications we have seen are from applicants that are disqualified from claiming micro entity status because they have already been named on more than four previously filed applications and/or patents. The problem is particularly acute among rocket docket applications, and we are looking into whether similar issues exist in utility applications. These erroneous micro entity certifications, and the heavy use of the rocket docket by these applicants, unfortunately mean longer wait times for all applicants seeking design patents, including legitimate micro entity applicants.
We are proactively taking steps to address the issue of erroneous filings. We recently sent notices to applicants with questionable micro entity certifications requiring additional information to support their micro entity claim (if you received a notice and have questions, please call the Patents Ombudsman at 571-272-5555). Applicants who mistakenly claimed micro entity status will be able to make a fee deficiency payment and proceed through the application process in a non-micro entity status. Those who cannot provide information to support their micro entity status, and who do not make a fee deficiency payment, run the risk of their application being abandoned. We will continue to communicate with our customers and the public to ensure the requirements on how to file a patent application as a small and micro entity are clear.
We are always grateful for the opportunity to serve our dynamic innovation community. By taking these important steps to reduce current wait times and flush out erroneous certifications, we aim to protect all patent applicants, including legitimate micro entity applicants and small businesses, and prevent abuse of our world-class patent system.
For more information and assistance with filing an application, please visit the newly revamped inventor and entrepreneur resources page of the USPTO website.
Apply for a judicial law clerkship at the USPTO by September 10
Guest Blog by Scott Boalick, Chief Judge of the Patent Trial and Appeal BoardAre you interested in launching your career as an intellectual property (IP) practitioner by clerking for an administrative patent judge on the USPTO’s Patent Trial and Appeal Board (PTAB)? The PTAB is currently hiring for one-year clerkships to start in the fall of 2022. Check out our posting on the USAJobs website, which closes September 10, and read on to learn more about the role.
The PTAB serves two important functions in the intellectual property system. First, the PTAB reviews the work of patent examiners in ex parte appeals and determines whether an examiner’s rejection of a patent application should be sustained. Additionally, the PTAB adjudicates the patentability of issued patents in America Invents Act (AIA) trial proceedings, which serve as a cheaper, faster alternative to district court litigation. For both types of proceedings, a panel of three administrative law judges who are skilled in technology and trained in patent law hear the cases and render decisions for the Board.
As a judicial law clerk, you would work directly with judges on a variety of assignments, from researching legal issues to discussing cases with judges, for both ex parte appeals and AIA trials. Additionally, you would have the opportunity to participate in all Board training events, attend conferences, and prepare and deliver presentations. The diversity of work and training gives our judicial law clerks a broad understanding of the PTAB.
Serving as a judicial law clerk also helps you establish a network within the intellectual property community. One former law clerk commented that “[the] environment is very collaborative and welcoming. At all levels, people are willing to answer your questions. More importantly, they want to hear your perspective.”
Judicial law clerks are required to be U.S. citizens and graduates of an accredited law school prior to starting at the PTAB. Additionally, judicial law clerks must have an undergraduate degree in a technical area, such as engineering, chemistry, or biology. Admission to a state bar or the patent bar is not required, though encouraged.
If selected as a judicial law clerk, you would serve for a paid, one-year term. Typically, terms start in October and end the following September. To apply, you must submit a resume and undergraduate, graduate (if applicable), and law school transcripts through USAjobs.gov. Providing a cover letter is optional, but may help us get a better idea of what makes you a great candidate.
Perhaps best said by a recent law clerk: “If you are interested in practicing before the PTAB, the judicial clerkship program is an excellent way to develop skills and insight into the forum and set yourself apart from your peers.” For example, past law clerks have gone on to further prestigious positions in public service, including as law clerks at the U.S. Court of Appeals for the Federal Circuit.
If you meet the qualifications outlined above and are interested in the intersection of IP and the law, we hope you consider joining us at the PTAB.
USPTO’s comprehensive strategy to fight trademark fraud
Blog by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and David Gooder, Commissioner for Trademarks at the USPTO
Businesses at home and abroad are becoming more and more aware of the value and benefits of a U.S. trademark registration. Unfortunately, along with the historic surge of new trademark filings over the past year (see our blog on the surge), the USPTO has also seen an increase in suspicious submissions ranging from inaccurate to fraudulent. The Department of Commerce’s Office of Inspector General, after analyzing a snapshot of data (applications filed between October 2, 2019 and April 30, 2020), found that we need to enhance controls aimed at combatting this increase in suspicious filings. We agree, and have been actively enhancing our register protection efforts to meet this challenge for some time now (as described in Appendix B of the report, titled Agency Response). The integrity and accuracy of our trademark register is more important than ever to our economy, to businesses everywhere, and to the USPTO.
The rise in fraudulent trademark filings and trademark-related scams has driven us to implement new strategies and tactics to intensify our attack against those who would seek to undermine the value and legitimacy of this important intellectual property right. A change of approach, which we embarked on several years ago, was necessary to confront an unprecedented threat, one that is common among industries dealing with the scourge of counterfeits, fakes, illicit trade, and even piracy. We believe the best way to fight trademark application fraud and scams and to aggressively safeguard our trademark register is to pivot to a comprehensive brand protection-type strategy and starting last fall, we did just that.
As of this writing, the USPTO has experienced a 40+% increase in trademark applications over the past year, representing the greatest number of new trademark applications in history. This increase in applications has been driven by a number of factors during the pandemic, including the growth of cross-border e-commerce, foreign government subsidies, and a tremendous rise in new business formation. Thousands of foreign manufacturers that want to sell directly to U.S. consumers have been told that they need a U.S.-registered trademark for their products to receive priority position on e-commerce sales platforms. Even though this is not necessarily true, the phenomenon has spawned new low-cost filing mills, multi-national scams, and even created a secondary market for buying and selling U.S. trademark registrations.
As a result, low-cost trademark filing companies claiming to specialize in the acquisition of U.S. trademarks have aggressively been marketing their services to potential and unsuspecting clients. Most foreign manufacturers and sellers have little or no experience with U.S. trademark laws and registration procedures so they don’t know whether or not these services are legitimate.
Conversely, many foreign agents are aware of the USPTO rules, yet try to find ways to circumvent them. For example, they hijack the credentials of attorneys licensed in the U.S. or they enter into relationships with questionable U.S. attorneys who rubber-stamp whatever paperwork they provide. The U.S. trademark registration system has historically relied upon the good faith intentions of its customers and their counsel. These illicit operators, however, are trying to game the system in order to illegally obtain U.S. registrations.
Traditionally, our examining attorneys have been on the front lines of this fight, but conducting investigations instead of examinations only does a disservice to legitimate applicants seeking trademark registrations. Moreover, the examination process does not always efficiently lend itself to discovering wider patterns of fraud and improper behavior that often taint many applications at a time.
Because multiple applications are often filed by a single entity using the same data elements but owned by multiple applicants, it is by tracking those common data points through our IT systems that we identify and fight back against these schemes. To achieve this result on the scale we need, in 2019 we created – and are now expanding – a special task force of attorneys, analysts, cyber investigators and IT personnel to investigate submissions that we suspect are violating U.S. rules of practice, representation rules, or USPTO’s terms-of-use.
The USPTO does not have law enforcement capability, so we leverage what we do have: the ability to enforce our rules against those seeking to circumvent them. Further, when an investigation uncovers attorney misconduct, we refer them to our Office of Enrollment and Discipline. And when an investigation involves suspected criminal activity, we engage with law enforcement authorities.
For those suspected of violating the USPTO’s rules, we issue show-cause orders requiring them to establish that their filings and behavior are legitimate. If they respond inadequately, or if we find that applications were filed with the intent to circumvent our rules, then we issue a final order for sanctions, including terminating the tainted applications and blocking the filer’s access to our trademark system. Additionally, we are increasing our database security through login, identity authentication, and role-based access controls. Doing so will help prevent bad actors from submitting any future applications.
The USPTO has other new tools we are now employing against inaccurate or fraudulent submissions. For example, in our Post-Registration Proof of Use Audit Program, we implemented a fee penalty in January for those filing inaccurate claims-of-use in their filings to maintain their registrations. And this is starting to have a positive impact on accuracy. Also, the soon-to-be implemented Trademark Modernization Act of 2020 will allow third parties to challenge registrations they believe are not or have never been validly used. These new cancellation proceedings will help clear our register of inaccurate and unused registrations which clutter the register and diminish its value to our country and the trademark ecosystem.
The surge of trademark filings has created challenges, but those challenges also highlight the significant value of U.S. trademark registrations. Brands that are registered at the USPTO command more respect than ever before, and their growing status is a direct result of the U.S. trademark system that is constantly evolving. And as we forge ahead, we welcome every opportunity to work with our stakeholders both foreign and domestic to protect our register and issue trademarks that have true and lasting value.
Protecting our trademark customers with federal registration of USPTO marks
Guest blog by David Gooder, Commissioner for Trademarks
Exterior shot of the Madison Building and Dulany Gardens at the United States Patent and Trademark Office (USPTO). Photo by Jay Premack/USPTO.
Imagine you are a trademark applicant who receives a notice in the mail from an agency claiming to be the USPTO, with an almost identical logo, informing you that the USPTO will deny or cancel your registration unless you pay a required fee. Or if a business appearing to be affiliated with the USPTO solicits fees to help file your application and perform other registration services for you at a price that seems too good to be true. You pay the fees, assuming the businesses and promised services are legitimate, only to never hear from them again.
These types of misleading solicitations and trademark filing scams are a growing problem, especially as we are seeing more sophisticated enterprises entering the space. Some of these scammers attempt to impersonate the USPTO or claim varying forms of endorsement. The USPTO has taken several proactive steps to protect trademark applicants from being victimized by these opportunists, including alerting users to known scammers by posting a list on the USPTO website, working with law enforcement when appropriate, and sanctioning filers that violate USPTO rules.
Yesterday, the Department of Commerce took another important step to protect trademark customers by filing for federal registration of the USPTO marks. Like any other brand owner facing infringement by third parties, if we have federal trademark registrations, they will help us take appropriate legal action as needed to protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation or endorsement with the USPTO.
We recognize the intrigue and irony of filing for federal registration of the USPTO marks...with the USPTO. It’s a big reason why the Department of Commerce is filing the application on our behalf, just as it has for its other bureaus. In fact, many other federal agencies own federal trademark registrations, including the Internal Revenue Service, the Environmental Protection Agency, the Food and Drug Administration, the Federal Aviation Administration, the National Aeronautics and Space Administration, the National Oceanic and Atmospheric Administration, the Department of Homeland Security, the National Park Service, and branches of the U.S. military, to name just a few.
As for process, the USPTO trademark examining attorney will examine the application as he or she does any application, and make his or her own determination. And while some could ask why we didn’t federally register these marks years ago, we realized we require the additional legal protections afforded the owner of a federally registered trademark in light of the rapid increase in sophistication of those unlawfully passing themselves off as the USPTO. We firmly believe that it’s never too late to do the right thing, and doing everything within our power to protect our trademark customers is the right thing.
While there is no one-size-fits-all strategy to address illicit or misleading activity of scammers, we are committed to keeping our customers well-informed and to fighting these scams. We look forward to building upon our comprehensive efforts and sharing more about them in the weeks to come. In the meantime, we encourage you to visit the USPTO website to learn more about ways to identify scams and keep your brand(s) protected.
PTAB’s “Fast-Track” pilots available for regular and COVID-19 related ex parte appeals
Guest Blog by Scott Boalick, Chief Judge for the Patent Trial and Appeal Board
The United States Patent and Trademark Office (USPTO) has two programs to expedite our turnaround time for ex parte appeals. By speeding up patentability determinations on new inventions, we aim to quicken the pace at which products or services embodied in these inventions reach the marketplace, spurring follow-on innovation, economic growth, and job creation.
Last year, the USPTO launched the first-ever, one-year “Fast-Track Appeals Pilot Program” to offer patent appellants a way to secure expedited resolution of any ex parte appeal. We just extended the pilot program to run for another one-year period through July 2, 2022. On April 15, 2021, we also launched a specialized Fast-Track Appeals Pilot Program just for COVID-19 related inventions.
To advance an appeal under the regular Fast-Track Appeals Pilot, an appellant must meet four conditions. First, the application must be an original utility, design, or plant nonprovisional application. Second, the appeal desired for fast-track status must be pending before the Patent Trial and Appeal Board (PTAB). Third, the appellant must file a petition to request fast-track treatment. And fourth, the appellant must pay a petition fee, currently $420.
For the COVID-19 Fast-Track Appeals Pilot, the first three requirements apply but the appellant is not required to pay a petition fee. In addition, the application must claim a product or process that is subject to an applicable FDA approval for COVID-19 use.
Since the regular Fast-Track Appeals Pilot’s launch through June 30, 2021, we have granted 197 petitions, on average within two days of filing. Merits-based appeal decisions were decided in an average of 2.1 months, much quicker than our fast-track target of six months to decision, and much quicker than the approximately 13-month average time to decide appeals overall.
To date, we have not received any petitions under the COVID-19 Fast-Track Appeals Pilot. The COVID-19 Fast Track Appeals Pilot is a companion to the COVID-19 Prioritized Examination Pilot Program, and applications that are under review in the COVID-19 Prioritized Examination Pilot feed into the COVID-19 Fast-Track Appeals Pilot. The COVID-19 examination pilot started a little more than one-year ago, and therefore applications under the COVID-19 examination pilot are only now approaching a second or final rejection, placing them in position for appeal.
In order to ensure that there is no adverse impact to appeal processing overall caused by the expedited turnarounds offered in the regular Fast-Track and COVID-19 Fast-Track pilots, size limitations have been placed on both pilot programs. Information on these limitations can be found on the Fast-Track Appeals Pilot and the COVID-19 Fast-Track Appeals Pilot pages of the USPTO website.
We remain committed to monitoring and evaluating the effects of both the regular Fast-Track Appeals Pilot Program and the COVID-19 Fast-Track Appeals Pilot Program. If you have any questions or comments about these programs, please email or email@example.com or COVIDfasttrackappeals@uspto.gov, respectively. Also, the webpages for the regular Fast-Track Appeals Pilot and the COVID-19 Fast-Track Appeals Pilot are replete with information, including current filing data and open slots for each program.
Celebrating the 75th anniversary of the national trademark system
Blog by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO
It was 75 years ago that President Harry S. Truman signed Rep. Fritz Lanham’s Trademark Act into law. This landmark legislation made possible today’s system of trademark registration and protection, but it took almost a decade of debate in Congress with countless hearings on the need to replace earlier, outdated statutes and the patchwork of trademark systems in each of the states. Today, the U.S. economy is the beneficiary of those efforts and this masterful law that has stood the test of time, transforming the U.S. economy through the growth of national and global brands.
Fritz G. Lanham, Texas. Photo courtesy of the Library of Congress.
Today, when you read the Lanham Act, its simplicity, prescience, and thoroughness are striking. There are not many 75-year-old acts of Congress that have withstood the kinds of changes our nation and economy have experienced since 1946.
The U.S. Patent and Trademark Office has issued almost 6.3 million trademark registrations since the Lanham Act became law. There are currently 2.8 million live trademark registrations and there are 55,000 trademark attorneys representing the owners of these active marks.
Trademarks and brands are an essential part of the global economy. And through all the economic growth and dramatic changes in industry, society, and technology, the Trademark Act of 1946 has remained virtually unchanged--and now, in its 75th year, we are on track to implement the Trademark Modernization Act of 2020 by December of this year. The goal is to improve the integrity of the trademark register, provide trademark owners with better means to protect their trademarks, and implement systems and procedures aimed at reducing registrations that are not in use, fraud and abuse.
The Trademark Modernization Act could not have come at a better moment. The pandemic has vastly accelerated the shift to an all-digital economy, along with incredible growth in e-commerce. We currently expect to receive over 750,000 trademark applications this year, an increase of about 35% over 2020 and more than triple the number of trademark applications we received in 2001. Read more about the recent surge in trademark filings.
Trademark applications from U.S. filers have increased by 21% so far this fiscal year. The vast majority of our applications are either from first-time filers or small businesses.
As our trademark system evolves, we continue to benefit from the vision of U.S. history’s greatest champion of trademark protections, Fritz Lanham. We are proud to celebrate 75 years of our federal trademark structure and all it has provided to past, current, and future American entrepreneurs.
To learn more, watch the brief documentary “75 years of the Lanham Act” produced by the National Inventors Hall of Fame, in cooperation with the USPTO and the State Bar of Texas, or watch the recording of the USPTO's 75th anniversary celebration event.
Deputy Secretary of Commerce Don Graves praises USPTO for critical work in promoting American competitiveness, innovation, and ingenuity
A blog about the USPTO by the U.S. Department of Commerce
USPTO’s Drew Hirshfeld presents Deputy Secretary of Commerce Don Graves with a copy of his ancestor’s patent. (Photo by Jay Premack/USPTO)
On July 1, U.S. Deputy Secretary of Commerce Don Graves visited the USPTO headquarters in Alexandria, Virginia. During his visit, he toured the National Inventors Hall of Fame museum, experienced a “day in the life” of a patent examiner and a trademark examining attorney, and met with leadership about the USPTO’s role in advancing American competitiveness. He later received a surprise framed copy of his ancestor’s patent, who was one of the Nation’s first Black patent holders.
The National Inventors Hall of Fame® (NIHF) museum, located at USPTO headquarters, tells the story of American innovation and showcases famous inventors including Thomas Edison, the Wright Brothers and George Washington Carver. During his tour of the museum, Deputy Secretary Graves viewed the inspiring Gallery of Icons™ commemorating each of the more than 550 National NIHF Inductees, and saw first-hand the vast innovative advancements in automotive, photographic, and smartphone technologies via the museum’s Intellectual Property Power exhibit. Deputy Secretary Graves also learned about NIHF’s numerous invention education programs, focused on inspiring America’s youth to pursue careers in STEM.
Linda Hosler, USPTO’s National Outreach Partnerships Manager, provided a tour of the National Inventors Hall of Fame Museum to Deputy Secretary Graves. (Photo by Jay Premack/USPTO)
Deputy Secretary Graves then participated in a tour where he visited five USPTO buildings, the Public Search Facility, the Global Intellectual Property Academy, the Clara Barton Auditorium and the Patent Trials and Appeals Board hearing room.
Deputy Secretary Graves visited the USPTO’s Global Intellectual Property Academy and Public Search Facility. (Photo by Jay Premack/USPTO)
He then participated in a “day in the life” of an examiner and heard from each business unit head at the USPTO to better understand their work and role at the USPTO. USPTO employs thousands of patent examiners and trademark examining attorneys that work regularly with inventors and entrepreneurs on intellectual property matters.
“The work you do is rooted in the fabric of America,” Deputy Secretary Graves told them. “Your work and the work of all your examiners provides the incentives for inventors to create things we never thought possible. And those inventions are commercialized into globally competitive companies that create jobs right here in the U.S.”
Deputy Secretary Graves later held a meeting with Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and other USPTO leadership on the important role USPTO plays in American competitiveness. During that discussion, Deputy Secretary Graves praised them for reaching patent number 11 million as an important milestone in American innovation and ingenuity.
Deputy Secretary Graves met with Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. (Photo by Jay Premack/USPTO)
“Patents and trademarks are fuel for our economy by enabling the creation of new products, new businesses, and entirely new industries that have the potential to change the world,” he said.
Before his visit concluded, Deputy Secretary Graves was presented with a copy of his ancestor’s patent. Deputy Secretary Graves comes from a long line of small business owners and has a rich family history connected to the Commerce Department. His four-times great grandparents built a successful horse and buggy taxi business in Washington that once stood at the site of the Commerce Department’s headquarters. Their son went on to own a premier hotel just blocks away and became one of our nation’s first Black patent-holders.
“It was a wonderful surprise to receive a copy of my ancestor’s patent from the USPTO. Thinking back on my family’s roots, in this country, you can achieve anything you want — with a little help,” said Deputy Secretary Graves. Today, I still draw on the lessons of my family history for inspiration and today is a moment I will never forget.”
Posted at 05:19PM Jul 07, 2021 in ip |
What a huge surge in trademark filings means for applicants
Guest blog by David Gooder, Commissioner for Trademarks
Since last fall, trademark applications from U.S. and foreign applicants have surged to unprecedented levels. As of June 17, the increase is roughly 63% over last year, which translates to about 211,000 more applications. And in December 2020 alone, the USPTO received 92,608 trademark applications, an increase of 172% over December 2019. This surge has doubled the number of applications waiting to be examined and increased waiting times at various stages in our processes. As a result, applicants may have to wait longer for initial processing of their application, receiving an office action, processing of responses to office actions, and reviewing of post-registration filings. For updated information and current processing times, please visit the Trademarks Dashboard page of the USPTO website.
We are continuing to explore the reasons behind the surge, but we do know that the increase comes from both foreign and domestic filings and is caused in part by an increase in e-commerce during the pandemic. For our customers, the bottom line is that applications are coming in faster than we have historically been able to examine them, and the backlog is increasing. We are keenly aware of this challenge and have taken steps to increase productivity, while maintaining the high quality our applicants expect.
For example, we’re implementing information technology solutions and system enhancements to process applications even faster. In addition, we've hired more examining attorneys and staff, we're finding better ways to distribute the workload among our current attorneys and staff, and we’re looking at every step in the examination process to find ways to increase efficiency. Through these and other actions, we will eventually bring our processing times back to customary levels.
If you have questions about this issue, or suggestions for us to consider, we welcome your feedback at TMFeedback@uspto.gov.
Global protection and local outreach: How the USPTO’s IP attachés are helping U.S. business interests abroad
Guest blog by Molly Kocialski, Director of the Rocky Mountain Regional U.S. Patent and Trademark Office, and Damian Porcari, Director of the Elijah J. McCoy Midwest Regional U.S. Patent and Trademark Office
The USPTO IP attachés posted to China, Belgium, Mexico, Switzerland, India, and Thailand shown here, along with their colleagues in seven other posts around the world, work to support the interests of U.S. IP rights holders.
During the past several months, we were pleased to welcome the USPTO’s intellectual property (IP) attachés to a series of virtual events in our respective regions covering the Midwest and the Rocky Mountain states.
Who are the IP attachés? They are U.S. diplomats with expertise in intellectual property. Their prior experience includes work in government, industry, major trade associations, and some of the best law firms in the country. They are currently assigned to 12 embassies, consulates or missions around the world, where they advocate U.S. positions on IP matters for the benefit of U.S. businesses. Three attachés cover China, two focus on multilateral issues in Geneva, and the others cover Southeast Asia, South Asia, Central Eurasia, Europe, Latin America and the Caribbean, and the Middle East and North Africa.
Aside from their diplomatic duties, the IP attachés also provide information to U.S. businesses entering foreign markets, including how to navigate foreign laws and protect their IP abroad. One way they do that is through the kinds of outreach efforts they conducted recently with stakeholders located in our two regions. These included a series of virtual meetings held with Utah stakeholders in October 2020 and another round of meetings held in April 2021 with stakeholders in Ohio and Kentucky.
The virtual visit with stakeholders in Utah included discussions with the Utah Governor’s Office of Economic Development and the World Trade Center Utah. These meetings consisted of a series of wide-ranging discussions on global IP protection and gave attendees—who represented established businesses, startup companies, government, academia, and IP law firms—answers to their questions about IP challenges abroad. Topics included counterfeit goods, patents, trademarks, and trade secret protection. Our other virtual meetings included conversations with a number of Utah based companies, as well as the IP Law Section of the Utah State Bar. Likewise, in Ohio and Kentucky, the IP attachés’ virtual visits led to engaging conversations about international developments in patent, trademark, and trade secret protection. In these sessions, we were joined by a diverse group of inventors, law school students from throughout the Midwest, attorneys, and more than 45 businesses located in the two states.
Both of these series of meetings made clear to us what a tremendous service the IP attachés provide to our country and to American businesses and inventors. Over the past 15 months alone, the IP attachés helped more than 8,000 U.S. stakeholders, held more than 2,500 meetings with foreign government officials, conducted more than 80 training programs (with more than 4,400 foreign government officials), and reported over 60 significant IP successes.
Examples of the IP attachés’ recent work on behalf of U.S interests include:
• Conducting training programs on patents, trademarks, copyrights, and trade secrets for officials from U.S. trading partners—including Egypt, Saudi Arabia, Mexico, Peru, Bolivia, El Salvador, Ukraine, China, and Thailand—so that they can better protect and enforce IP in their countries.
• Organizing two international leadership programs for officials of the European Union who are responsible for IP enforcement.
• In China, in response to the pandemic, a focus by the three IP attachés on sourcing and shipping Chinese-made personal protective equipment and medical devices to the United States, while remaining vigilant against counterfeit or substandard medical products.
• Shutting down, in the Middle East and North Africa region, a major broadcasting operation that carried pirated satellite signals—a collaborative effort by the IP attaché for that region and local authorities.
“Successes like these show the important role our IP attachés play,” notes Dominic Keating, the director of the USPTO’s IP Attaché Program. “Each attaché brings an average of more than 15 years of IP experience to the table to help secure the highest of standards in international agreements and host country laws.”
These virtual visits drove home to us, and to the many participants in all three states, the importance of protecting IP globally. Our economy benefits greatly from strong IP protections here at home. It also depends on our international counterparts to take the same approach in protecting rights holders’ interests overseas. The IP attachés play an important role in making that a reality.
The next series of IP attaché outreach events will be taking place in early June 2021 in Kansas and Nebraska, with programs on June 8 and June 9. If you are a Kansas or Nebraska company that wants to learn more, please contact the Rocky Mountain U.S. Patent and Trademark Office. For further details on the work of the IP attachés, or to learn about upcoming visits to other states and regions, view the IP Attaché Program page of the USPTO website.
Posted at 12:57PM Jun 07, 2021 in International Affairs |
Help us find the next National Medal of Technology and Innovation Laureates
Blog by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO
The design for the National Medal of Technology and Innovation is the work of medalist and sculptor Mico Kaufman of North Tewksbury, Massachusetts. (Photo by Jay Premack/USPTO)
From the personal computer to satellite technology, the last few decades of technological innovation have dramatically changed the way we live our lives. Those changes would not have been possible without the amazing inventors behind them – women and men who inspire us all with their spirit of ingenuity and perseverance. That’s why we are immensely proud to administer the National Medal of Technology and Innovation (NMTI), our nation’s highest honor in technological achievement, which recognizes these often unsung heroes.
Awarded by the President of the United States, the NMTI is given to individuals, teams, and companies that have made lasting contributions to America's competitiveness, standard of living, and quality of life through technological innovation. We are currently soliciting nominations from the public for this high honor, and we invite a wide range of submissions for recipients of the NMTI – called Laureates – that represent the diversity and ingenuity of our incredible innovation ecosystem from all corners of the United States.
If you know of a person or team who you feel has changed the technological landscape through their discoveries and achievements, we want to know! Submissions are being accepted on the NMTI page of the USPTO website through July 30.
By highlighting the importance and achievements of NMTI Laureates, the Medal is also meant to inspire future generations of Americans to prepare for and pursue technical careers. Since the Medal’s inception in 1980, only 220 people have been awarded this prestigious recognition. Here are just a few of their stories.
Steve Jobs and Steve Wozniak receive the National Medal of Technology from President Ronald Reagan. (Photo courtesy of the Ronald Reagan Presidential Library)
Steve Jobs and Steve Wozniak were among the first class of Laureates in 1985. Their development of the personal computer revolutionized the world, bringing the power of computing technology into people’s homes. Relying on Jobs’ marketing and design skills and Wozniak’s engineering insights, the pair co-founded Apple Computers in 1976. Today, Apple remains an international, multibillion-dollar company.
Helen Edwards receives the National Medal of Technology from President George H.W. Bush. (Photo courtesy of the George H.W. Bush Presidential Museum and Library)
Helen Edwards was the first woman to receive the NMTI. She was awarded the Medal in 1989 for overseeing the design, construction, and operation of the TEVATRON particle accelerator. This amazing piece of equipment explored the fundamental properties of matter. It allowed experiments that could previously only be theorized, by accelerating beams of protons and antiprotons to approximately the speed of light around a four-mile circumference. It was the most powerful particle accelerator in the world for 25 years.
Irwin Jacobs received the NMTI from President William J. Clinton. (Photo courtesy of the William J. Clinton Presidential Library and Museum)
Irwin Jacobs, co-founder of Qualcomm, received the NMTI in 1994 for taking a military technology called Code Division Multiple Access (CDMA) and transforming it into 3G cellular and wireless networks. 3G allows multiple conversations to share the same frequencies simultaneously. This, in turn, allowed for more customers and fewer cellphone towers—and made wireless technology more affordable.
James West receives the NMTI from President George W. Bush. (Photo courtesy of the National Science and Technology Medals Foundation)
James West received the NMTI in 2006 for co-inventing the foil electret microphone, which is used in phones, computers, hearing aids, and many other devices. Over two billion electret microphones are currently produced every year. After working at Bell Labs for 40 years, West is still inventing as a faculty member at Johns Hopkins University. He is also a lifelong advocate for increasing diversity in science, technology, engineering, and math fields.
Yvonne Brill receives the NMTI from President Barack Obama. (Photo by Arva Adams/USPTO)
Yvonne Brill received the NMTI in 2010 for inventing a rocket propulsion system to keep communications satellites in their orbits—a remarkable achievement for a woman who was not allowed to major in engineering in college and chose to major in chemistry and mathematics instead. Brill is believed to be the only woman in the United States who was working in rocket science in the mid-1940s. She advocated for women in engineering and science throughout her career.
We are honored to celebrate the best minds in American innovation whose creations have improved our world and kept the United States at the forefront of global technology and economic leadership. For more information on the NMTI and the award process, attend the webinar on June 2, sign up for the USPTO Awards newsletter, or contact us at firstname.lastname@example.org.
Modernizing patent filing with DOCX
Guest blog by Acting Commissioner for Patents Andrew Faile and Chief Information Officer Jamie Holcombe
At the USPTO, we are continuously working to modernize and streamline our patent application systems. As part of that ongoing effort, you can now file patent application-related documents in DOCX format through EFS-Web, Private PAIR, and Patent Center. To improve application quality and efficiency, the USPTO will be transitioning to DOCX for all filers on January 1, 2022. Keep reading to learn more about DOCX, its benefits, and opportunities to provide feedback on implementation.
DOCX is a word-processing file format supported by many popular applications, such as Microsoft Word, Google Docs, and LibreOffice. As an open standard format, DOCX offers a safe and stable basis for authoring and processing intellectual property documents.
Filing in DOCX provides you with many benefits in the application process, including:
- Increased efficiencies: eliminates the need to convert structured text into a PDF for filing.
- Higher data quality: reduces conversion errors that can occur when converting to a PDF file.
- Smarter interface: detects common errors, such as formatting errors, and provides instant feedback to prevent unnecessary delays in processing your application.
- Privacy: provides automatic metadata detection (e.g. track changes and comments) and removal features to support the submission of only substantive information in the DOCX file.
- Improved application quality: provides content-based validations pre-submission, identifying issues up front and allowing for them to be addressed before examination begins.
- Ease of use: provides automated document indexing.
- Compatibility: eliminates the non-embedded font error, the most common obstacle in uploading a PDF, by uploading your file with supported fonts.
We believe that meaningful improvements to our application processes can only happen through collaboration with our users. To that end, we received helpful feedback last year after the publication of our federal register notice that prompted us to make a few changes as we transition to the DOCX format.
First, we delayed the effective date for the non-DOCX surcharge fee to January 1, 2022, to provide more time for applicants to transition to this new process, and for the USPTO to continue our outreach efforts and address customer concerns. We’ve also made office actions available in DOCX and XML formats and further enhanced DOCX features, including accepting DOCX for drawings in addition to the specification, claims, and abstract for certain applications.
Additionally, based on what we’ve heard from our customers, we are adopting the submitted DOCX files as the authoritative document, otherwise referred to as the source or evidentiary copy (read the federal register notice). This will simplify the filing process, allowing the applicant to only review the DOCX files before submission rather than reviewing the USPTO-generated PDF version.
We look forward to continuing our engagement with the public on the DOCX transition so we can better serve America’s innovation community. We will be hosting DOCX training sessions on a regular basis to provide more information, demonstrate how to file and retrieve DOCX files in Patent Center, EFS-Web, and PAIR, and answer any questions. Applicants can also file test submissions through Patent Center training mode to practice filing in DOCX. In addition, we will offer a listening session this fall to gather feedback and suggestions to further improve DOCX features.
For more information and to view frequently asked questions, visit the DOCX page of the USPTO website. If you need assistance, please contact the Patent Electronic Business Center at email@example.com or 866-217-9197.
Spotlight on Commerce: Hannah Wang, Primary Patent Examiner
Guest blog post by Hannah Wang, Primary Patent Examiner, U.S. Patent and Trademark Office (USPTO)
Hannah Wang, Primary Patent Examiner, USPTO
As a primary patent examiner at the Commerce Department's United States Patent and Trademark Office (USPTO), I handle patent applications in the area of computer networking. In addition, I have the privilege of currently serving as president of the Asian Pacific American Network (APANET), one of the largest affinity groups across the federal government. I also recently became a co-host of our workgroup’s Quality Enhancement Meetings (QEM). These QEMs provide patent examiners with the opportunity to learn about various topics and bring up any questions related to patent examining.
During my undergraduate studies in China, I pursued a major in Electrical Engineering, focusing on circuits and signal processing. In 2007, I moved to the United States to pursue my master’s degree at George Washington University, focusing on communication networks. Afterward, I attended Cornell University and earned a master’s degree in engineering management. At the time, I wanted to prepare myself for a career in consulting. However, life always has a way of surprising you. I happened to take a job as a patent analyst at a patent firm. That job opened my eyes to the patent field and changed my career path. I discovered my passion for a field that perfectly integrated my engineering expertise with innovation and law. When the opportunity arose, I decided to join the USPTO in 2016 to further pursue this passion. Today I am proud to be part of an amazing agency that serves as the backbone of American innovation.
Asian American and Native Hawaiian/Pacific Islander (AANHPI) Heritage Month is a perfect time to reflect on how far the AANHPI community has come and to celebrate the AANHPI community’s integral role in our Nation’s accomplishments and developments. During this month, we are not only reminded of the sacrifices and hardships experienced by past generations, but also to cherish the valuable equality and opportunities we have today. These reflections motivate us to continue working diligently and to provide an even better foundation for future generations. As a first-generation immigrant, it is very special to have my culture recognized, shared, and celebrated with so many people across the Commerce Department and the country. During this Covid-19 pandemic, it is especially important to raise awareness, promote diversity, and offer support to our AANHPI community.
The strength of the USPTO’s AANHPI community is reflected in the growth of APANET throughout the years. I am extremely proud that APANET has grown from 10 members when it was created to more than 800 members today. APANET hosts annual events every year for our members and USPTO employees. Events include our Lunar New Year celebration, AANHPI Heritage Month celebration, dragon boat races, and Diwali celebration, to name a few. Serving as the president of APANET provides me with many opportunities to collaborate with colleagues and coordinate events outside of patent examining. I am truly grateful that I can grow with APANET, provide help and services to others, and learn how to become an effective leader.
As a career civil servant at the USPTO, my job helps foster an environment that creates economic growth and opportunity. I can’t think of anything more impactful than protecting and expanding innovation in the U.S. through intellectual property. It helps create new jobs for Americans and advance our nation. My advice for those interested in a federal career is to not be afraid of exploring new things and changing original plans. As we explore, we discover new interests and develop new skills. Although this can mean deviating from our original plan, it can also lead to an even more suitable career path. The federal government offers a variety of opportunities that are a good fit for talented and hard-working individuals. Being willing to explore these opportunities will help you find your passions, talents, and a successful career path.
Ed. note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce employees during Asian American and Native Hawaiian/Pacific Islander Heritage Month.
The Trademark Modernization Act: What brand owners need to know
Guest blog by David Gooder, Commissioner for Trademarks at the USPTO
Sustaining and promoting a healthy, vibrant trademark system is at the core of what we strive to do at the USPTO. That is why we welcomed the passage and signing of the Trademark Modernization Act (TMA) this past December. The TMA includes key provisions that will give the USPTO and trademark owners additional tools to better protect and strengthen the integrity of the federal trademark register.
To help drive U.S. innovation, in 1946, Congress passed the United States Trademark Act, widely known as the Lanham Act. This federal statute sets out procedures for the registration of trademarks. Trademark owners may apply for a U.S. registration if they are either using the mark at the time of filing or have intent to use the mark in commerce. However, actual use of the trademark in commerce is required to obtain and maintain a U.S. registration.
In recent years, the USPTO has received an increasing number of trademark filings with dubious and sometimes bogus claims of use. This raises concerns about invalid registrations that clutter the register and interfere with the adoption of new marks. It is in this arena that the TMA will provide brand owners and the USPTO with the following powerful new tools:
- The TMA codifies the Letter of Protest procedure, which allows third parties to submit evidence during the examination of trademark applications, including evidence that claims of use in an application are inaccurate.
- The TMA gives the USPTO the authority to shorten response deadlines in order to move applications more quickly through the system, thereby allowing us to swiftly dispose of applications where fraud or other deceptive or deceitful behavior is evident.
- The TMA provides new registration cancellation mechanisms so that third parties or the USPTO Director may challenge registrations that are not in use without having to engage in more expensive proceedings before the Trademark Trial and Appeal Board.
Efforts to implement these and other provisions of the TMA are well underway, with the deadline for implementation set for December 27, 2021. Public feedback has been and will continue to be essential to USPTO’s rulemaking process. Brand owners and stakeholders can learn more by visiting the Trademark Modernization Act page of the USPTO website, emailing TMFeedback@uspto.gov with any feedback, or by viewing the recording of our public roundtable on the implementation of the TMA held on March 1, 2021. Further, there will be the opportunity to submit formal comments on the Federal Register website next month when a Notice of Proposed Rulemaking is published.
Our trademark ecosystem will benefit greatly from these important new provisions which will remove clutter and provide greater access to new marks, thus benefiting businesses and entrepreneurs throughout the United States.
Posted at 10:26AM Apr 22, 2021 in trademarks |
USPTO concludes successful Women’s Entrepreneurship Symposium
The USPTO hosted the final installment of the 2021 Women’s Entrepreneurship Symposium (WES) on March 31, where participants heard from a diverse panel of successful women innovators who shared their stories of entrepreneurship and the challenges they faced along the way.
WES, an annual event launched in 2011, has proven to be one of the USPTO’s most popular programs to date. Over 6,000 attendees tuned in this year to hear lessons learned, helpful tips, and resources for women entrepreneurs to protect the various forms of intellectual property (IP) which might be present in their businesses - namely patents, trademarks, copyrights, and trade secrets.
The speakers at the March 31 session described how they got to where they are, and what they recommend for all the aspiring young women in our country. They also addressed the vital role of IP protection, how to identify a market segment for growth, and discussed best practices and successful habits in today’s changing business climate.
Panelists included Janeya Griffin, Founder and CEO, The Commercializer; Rea Huntley, Founder and CEO, Lavii INC; and Sarah Gibson Tuttle, Founder and CEO, Oliver and June. Dr. Lisa Cook, Professor at Michigan State University, and Edison Research Fellow at the USPTO, moderated the panel.
Throughout the month of March, WES offered engaging, expert panels featuring successful women entrepreneurs, notable inventors, and subject matter experts from the USPTO, the International Trade Administration and the Small Business Administration.
In addition, the discussions focused on important topics such as expanding opportunities for women and underrepresented groups in innovation, increasing educational opportunities for girls and women in invention and STEM, and highlighting the role women entrepreneurs play in innovation and economic growth.
Spotlight on Commerce: Valencia Martin-Wallace, Deputy Commissioner for Patents, USPTO
Guest blog post by Valencia Martin-Wallace, Deputy Commissioner for Patents, USPTO
Valencia Martin-Wallace, Deputy Commissioner for Patents, USPTO (Photo by Jay Premack/USPTO)
As the Deputy Commissioner for Patents at the USPTO, I am responsible for leading the organization’s international patent cooperation programs and initiatives. I also have oversight of the technology centers responsible for examining patent applications in the fields of telecommunications, mechanical technologies, and design.
I graduated with a B.S. in electrical engineering from Howard University, where I learned alongside a wonderful group of students from diverse backgrounds. After flexing my engineering muscle for three years, I decided to pursue intellectual property (IP) law at George Washington University School of Law. At about the same time, I began my career at the USPTO as a patent examiner. After graduating from law school, I realized public service at the USPTO was the right career choice for me. Nearly 29 years later, I’m still a member of the USPTO community. I would not be where I am today, in an exciting career in IP, without the support and guidance of very progressive parents, teachers, and mentors, and the examples set before me by talented women scientists, engineers, and attorneys.
I also have the unique pleasure and responsibility of being the executive lead, assisting the Director of the USPTO, with establishing the National Council for Expanding American Innovation (NCEAI) and the development of the national strategy for expanding American innovation.
The NCEAI consists of leaders from every corner of the innovation ecosystem; it was established to help guide the USPTO in developing a comprehensive national strategy to build a more diverse and inclusive innovation ecosystem by encouraging participation of women and other underrepresented groups. This strategy will be organized by a broad conceptual framework that considers the entire pathway along which interest and expertise in intellectual property and innovation is cultivated and nurtured in an individual.
I am honored to be a part of the Department of Commerce USPTO family during this groundbreaking period in the history of intellectual property. I feel privileged to be a part of this movement to increase participation in our innovation ecosystem by inspiring, empowering, and supporting all future inventors and entrepreneurs. These efforts will advance innovation and help our Nation’s economy grow.
Whenever I have the opportunity to talk to young women about intellectual property, I encourage them to challenge their minds through the fields of sciences, technology, engineering, and math. I know they would find the same fulfillment in these fields that I have always found. I also urge them to work hard, take pride in a job well done, never limit themselves, and reach back to help those who come behind them.
During Women’s History Month, I celebrate the accomplishments of the women engineers and scientists who have paved the way for me and many women just like me. I revel in the contributions of the women who have played a vital role in advancing our great country. Women like Beulah Louise Henry, a prolific inventor with 49 U.S. patents and over 100 inventions credited to her name; Marian Croak, a pioneer in the advancement of Voice over Internet Protocol (VoIP) who holds over 200 patents; and Ellen Ochoa, the first Hispanic-American woman in space and co-inventor on three patents. These and so many other women inventors are an inspiration and I look forward to seeing how future women innovators and entrepreneurs will shape our world.
Ed. note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce employees during Women’s History Month.
Posted at 04:25PM Mar 22, 2021 in USPTO |