USPTO creates new programs to provide economic relief during the pandemic
Blog by Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO
In response to a January 2021 Executive Order (EO) on economic relief during the COVID-19 pandemic, we established an Economic Relief Working Group (ERWG) comprised of individuals from across the USPTO to identify and develop programs and strategies to fulfill the goals of the EO – specifically, “to provide the greatest relief to individuals, families, small business; and to State, local, Tribal, and territorial governments.”
Similar to our Council for Inclusive Innovation (CI2) initiative, our goal with this working group is to vastly increase awareness of the benefits of patents and trademarks among aspiring innovators and creators, and to remove barriers to access for those who have historically been underrepresented in the U.S. intellectual property (IP) system. We want more people to utilize our resources to start new companies, develop new products and brands, expand their enterprises and, in some cases, create entirely new industries.
Notably, a year later, we have initiated more than a dozen projects for achieving this goal. Below we’ve highlighted just a few new and upcoming programs.
Expanding USPTO resources to wider audiences
We will soon unveil an “AccessUSPTO Pilot Program” aimed at providing IP training to new audiences through enhanced collaboration with national organizations who assist small businesses and creators not traditionally versed in IP. With this new program, we hope to reach more aspiring inventors and entrepreneurs and empower them with the tools they need to protect their ideas, creations, and brands.
Another upcoming program is the Tribal Nations Partnership, a year-long initiative to assist Native Americans, Alaska Natives, and Native Hawaiians who are interested in establishing or expanding their e-commerce presence, through monthly sessions focused on topics ranging from entrepreneurship to marketing and planning. We also are expanding our IP education programs to regions of the country that have been underrepresented in the innovation economy through strategic collaboration with Historically Black Colleges and Universities, Hispanic Serving Institutions, Tribal Colleges and Universities, and community colleges to offer training and outreach programs that seek to broaden participation in the innovation ecosystem at all levels.
Enhanced Training opportunities for filing applications
In addition, through our new Stakeholder Application Readiness Training (StART) program, which will launch as a pilot program this spring, a selected group of aspiring inventors will be able to participate in a three-day intensive training program on the application process to empower them with the tools and knowledge to successfully file a patent application. Further, the ERWG will be piloting a Customer Ambassador Program this summer to help a selected group of individual or joint inventors file on their own and avoid common mistakes throughout the application process.
New pro bono programs
The costs of preparing a patent application should never discourage those who want to protect their inventions. That’s why for many years, the regional not-for-profit organizations that make up the Patent Pro Bono Program have endeavored to match volunteer patent professionals with financially under-resourced inventors and small businesses in their regions for the purpose of securing patent protection. Based on the success of the program, not only will we be launching a new Patent Trial and Appeal Board (PTAB) pro bono program in 2022, but we will also soon be starting a new Trademark Trial and Appeal Board (TTAB) pro bono program. These programs will provide free legal assistance to financially under-resourced individuals and businesses involved in patent or trademark proceedings before the Boards. These important programs were born out of our valued collaborations with the PTAB Bar Association and the International Trademark Association (INTA), and will connect volunteer member attorneys with those eligible inventors and entrepreneurs seeking legal assistance to secure and defend their patents and trademark registrations.
For those interested in learning more about how to apply for a patent or trademark registration, we encourage you to visit our redesigned inventor and entrepreneur resources page. Additionally, we recently launched a new free services page that highlights the many intellectual property resources we provide at no cost. As always, we welcome your feedback, and invite you to join us at one of our upcoming Patent Public Advisory Committee meetings or Trademark Public Advisory Committee meetings.
Our economy thrives when we put American innovators first. We are honored to do our part to assist all those whose ideas drive our economy forward.
USPTO’s FY 2021 Performance and Accountability Report: A clean bill of financial health
Guest blog by Jay Hoffman, Chief Financial Officer
Madison building at USPTO headquarters in Alexandria, Virginia (Photo by Jay Premack/USPTO)Here at America’s innovation agency, we place a high value on transparency and providing our stakeholders with the most up-to-date information on our agency’s activities and goals. One of the ways we do that is through the publication of our annual Performance and Accountability Report (PAR). This document, now available online for fiscal year (FY) 2021, serves as a comprehensive report on the state of the USPTO.
In addition to describing how the agency is responding to the administration’s directives and executive orders on certain priorities, the PAR describes our progress toward our goals of optimizing patent and trademark quality and timeliness, and providing domestic and global leadership to improve intellectual property policy, enforcement, and protection worldwide. In short, it offers our stakeholders a detailed update on how we are using our financial resources responsibly to deliver organizational excellence to all those who work with us.
Overall, the USPTO’s financial health is strong, and we continue to carefully monitor demand and revenue and work towards establishing a prudent spending and investment plan. The USPTO maintains operating reserves that enable us to consistently fund operations. We closed the year with strong and healthy balances in both our patent and trademark operating reserves, which will position us well as we look to the future.
One of our most important achievements highlighted in the FY 2021 PAR was the removal of a long-standing “significant deficiency” associated with our information technology (IT) internal security controls. This deficiency was present for the past several audit cycles and was based on the auditor’s finding that the agency could strengthen the processes, procedures and technologies that help not only ensure that those authorized had access to our IT systems, but that those systems are also properly configured to be secure in order to prevent unauthorized access. By successfully implementing a series of corrective actions over the years, the USPTO was finally able to resolve the IT deficiency first identified by the independent auditor dating back to 2015.
We recognize the trust that our stakeholders place in us every day by providing us with information related to the protection of their intellectual property. This is why USPTO continues to focus on improving the security of our financial information and our IT infrastructure to keep up with evolving risks.
This focus on security proved essential when, as recently as last month, we proactively and deliberately shut down all external access to filing systems for about 12 hours in light of a serious and time-sensitive concern related to Log4j vulnerabilities. The shutdown was necessary to perform critical maintenance to safeguard not only our infrastructure, but also the security of our filers’ data. Stakeholders were still able to file documents via email channels we created during the outage. In the new normal of continuous cyber threats, we will continue to actively monitor, prevent, and remediate cybersecurity vulnerabilities as quickly as possible to ensure the safety and security of our American intellectual property system.
While the PAR highlights our achievements, it is also a frank assessment of the challenges we face as an agency. We will continue to address those challenges, which include working to continue to provide stable and sustainable funding and investments to maintain and improve USPTO services, and ensuring IT development and operations are agile, reliable, and adaptable.
We take great pride in our long record of producing annual PARs that meet the highest standards of transparency, quality, and accountability. FY 2021 marks the 29th consecutive year that the USPTO’s financial statements have received an “unmodified” (or clean) audit opinion from an independent public accounting firm. In addition, for FY 2021, the auditors reported no material weaknesses or significant deficiencies in the design and operation of the USPTO’s system of internal controls over financial reporting, and the financial system complies with all relevant laws and regulations.
This past May, the Association of Government Accountants (AGA) also recognized the USPTO with its Certificate of Excellence in Accountability Reporting for the 19th consecutive year. The AGA awarded the USPTO its “Best in Class” honors for displaying “a prominent, clear, and concise one-page of their financial and performance highlights, including key financial measures, trends, performance measures and color-coded results.” Our team has worked hard to ensure this year’s PAR continues to deliver this standard of excellence. I am grateful to everyone who contributed to this effort.
I hope you find value in this document, and that it provides you greater insights into the USPTO’s activities and achievements.
The Trademark Modernization Act: Implementing changes to protect brand owners
Guest blog by David Gooder, Commissioner for Trademarks
On November 17, we published the final rule to implement provisions of the Trademark Modernization Act (TMA), which provides trademark owners with powerful new tools to protect their brands and enables the USPTO to strengthen the integrity of the U.S. trademark register. While you can read more about these changes on our Trademark Modernization Act page, in this blog, I’d like to specifically highlight how the public helped us shape these provisions.
The ongoing COVID-19 pandemic presented both challenges and opportunities to seek input from the public regarding our implementation of the TMA. While we couldn’t travel the country and meet with stakeholders in their communities (as we did when implementing the America Invents Act), or hold events at USPTO headquarters in Alexandria, Virginia, the widespread use of video conferencing allowed us to get out early and frequently to stakeholder groups as we developed the rules and procedures.
Starting in late January, prior to publication of the notice of proposed rulemaking (NPRM), we hosted meetings and virtual roundtables to field questions and comments and to give stakeholders the opportunity to directly voice their concerns and viewpoints. Doing so virtually allowed us to gain this input far more quickly and efficiently than in-person events. In fact, over 500 people registered for our March 1 roundtable. We heard from in-house counsel for multinational corporations and partners at major IP firms, as well as small business owners and practitioners working for nonprofits and in under-resourced communities. The diversity of perspectives and breadth of feedback from these meetings gave us valuable guidance through the rule drafting process. Watch the recording of the roundtable.
Based on the success of the first roundtable, we held two more in June after publication of the NPRM. Combined, another 600 people registered.
Additionally, throughout 2021, we met virtually with industry and practitioner groups to present the about the TMA and answer questions. We created new channels, including a special TMA email box, TMFeedback@uspto.gov, to field questions and concerns.
All comments we received during this entire process were read and heard, and many of them influenced the final rule. For example, after receiving comments on the NPRM, we increased the time allowed for responding to a non-final office action issued in connection with an expungement or reexamination proceeding from two months to three months and added a one-month extension of time to respond. We also increased the time allowed for responding to a final action in such cases to three months.
We also asked the public for comments on two specific issues that were not required by the TMA, but helped us determine what to include in the final rule:
• Whether to establish a limit on the number of petitions for expungement or reexamination that can be filed against a registration. The public consensus was that we shouldn’t.
• If the USPTO Director should require a petitioner to identify the name of the real party in interest on whose behalf the petition for expungement or reexamination is filed. The public consensus was that petitioners shouldn’t be required to identify the real party, but that the Director should be able to require it if abuse was suspected.
To each of you who took part in this collaborative effort to implement the most sweeping change to our trademark law in a generation - thank you. Your participation shows that every voice has the power to shape government in ways that better serve the public.
Stay tuned as we continue to implement changes to modernize and strengthen our trademark system, to the benefit of businesses, brand owners, and consumers everywhere.
Modernizing how we issue patents and trademark registrations
Blog by Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO
Like so many other service agencies and organizations, it is imperative that our business practices evolve to meet the needs of inventors and entrepreneurs who look to our agency to help safeguard their valued intellectual property. With that in mind, today we are announcing our transition to the electronic issuance of patents and trademark registrations in 2022.
For patents, we have issued a notice of proposed rulemaking (NPRM) to seek public feedback on our proposal to revise the rules of practice to issue patents electronically. Under the current rule (37 CFR 1.315), the USPTO is required to deliver or mail a patent “upon issuance to the correspondence address of record.” Under the proposed changes, the USPTO would no longer physically deliver the patent by mailing it to the correspondence address, but would issue the patent electronically via our patent document viewing systems (i.e., Patent Center and Patent Application Image Retrieval (PAIR)). Patentees would also be able to download and print their electronically issued patents through these systems.
This change comes with many benefits for patent owners. For example, the new process will result in electronic patent issuance with the USPTO seal and the Director’s signature within one week after the patent number is assigned, reducing the pendency of every issued patent application by approximately two weeks.
The proposed changes represent another step toward the full digitization of our patent application processing and streamlining of our services. Beginning in 2001, we implemented the electronic filing system for patent applicants and have since launched numerous initiatives to provide high-quality services, including the Image File Wrapper system, the eOffice Action program, Public/Private PAIR, and Patent Center, among others.
While no similar amendment to the trademark rules is necessary, we still believe it is important for the public to have the chance to give us feedback about our transition to only providing digital copies of registration certificates. To that end, we recently issued a public request for comments on replacing paper registration certificates with digital versions. This change reflects a strong preference expressed to us by our trademark community. We anticipate the transition to digital delivery of trademark registration certificates to begin in the spring of 2022.
And similarly to patents, this new electronic process will benefit trademark owners by providing a more accessible and timely registration certificate – one they will be able to view, download, and print a complete copy of at their leisure. This change will also allow us to issue trademark registrations 1-2 weeks faster than our current process by discontinuing the printing, assembling, and mailing of paper registration certificates upon issuance. Since we currently issue 6,000-9,000 printed trademark registration certificates per week, this will reduce paper processing to a minimum.
Once the transition is complete, for customers who wish to continue to receive paper “presentation copies” of issued patents and trademark registration certificates with an embossed gold seal and a Director’s signature, that option will still be available for a $25 fee per copy. On future digital formats, we plan to use a digital seal and electronic Director’s signature to officially authorize the patent or trademark.
By gathering feedback from the public regarding this transition to electronic patents and trademarks, we can fully consider all views as we continue to modernize our processes while continuing our core mission of providing the high-quality patents and trademark registrations our customers have come to expect and deserve from America’s innovation agency.
As always, we look forward to working with our stakeholders to ensure their needs are met, and that American innovation continues to drive our nation, and the world, forward.
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.
Posted at 02:53PM Sep 02, 2021 in USPTO |
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.
Posted at 10:49AM Aug 04, 2021 in USPTO |
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.
Posted at 10:08AM Jul 27, 2021 in trademarks |
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
Update: The USPTO has issued a federal register notice delaying the effective date of the non-DOCX surcharge fee from January 1, 2022 to January 1, 2023, giving applicants more time to adjust to filing their patent applications in DOCX format. Sections of this blog have been updated to reflect the delayed effective date of the surcharge.
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. 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 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.