Protecting design innovations in new and emerging technologies
Blog by Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO
As with other intellectual property rights, design patents play a critical role in our economy, stimulating job creation and economic prosperity. Maintaining our ability to protect designs effectively is critical to our efforts to revitalize America’s domestic manufacturing and secure our supply chains. According to a National Endowment for the Arts study in 2017, design patent protection provides a “catalyst for growth for small and medium-sized manufacturers” and “a competitive edge for U.S. manufacturing success in the global economy.” According to the study, success of small and medium-sized manufacturers (SMMs) (those employing fewer than 500 people) “is key to the U.S. manufacturing sector as SMMs create 56% of all new manufacturing jobs, comprise 98% of manufacturing firms and complete 60% of the process of taking goods from raw material to consumer product.” Indeed, since “up to 95% of production costs occur at the design stage,” good designs can lower cost. They can make products better, more usable, more environmentally sustainable, and create a personal connection between the product and the consumer.
Good designs promote competition by allowing SMMs to compete in the market even though they have limitations larger firms do not. They can often be a “major differentiator in ensuring product success in a global market.”
Examples of U.S design patents through the years
The value of designs is underscored by “the level of S&P 500 companies building large design functions” and by the rise in the number of design patent applications filed at the USPTO. Over the 10-year period from 2009 to 2019, our USPTO data shows that filings of utility patent applications increased by 36% whereas filings of design patent applications increased by 82%.
As to whether the USPTO’s guidelines are effectively incentivizing and protecting innovative designs within the laws as set forth by Congress and as interpreted by the courts, several commenters expressed that the guidelines are too restrictive and that modifications to the guidelines are permissible under the law and could allow the USPTO to better protect designs in new and emerging technologies. Some commenters called for harmonization, noting that other jurisdictions are moving toward broader protection in these newer technologies. Other commenters set forth reasons why some of these newer technologies should not be eligible for patenting and cited cases that may be limiting. One commenter made a policy argument that certain protections would not incentivize innovation but would instead stifle it. Other commenters addressed concerns about the lack of prior art for inventions not previously patentable, noted that copyright and trademark law also protect certain designs, and expressed First Amendment concerns. The commenters also addressed whether eligibility for patent protection should depend on (1) the degree to which users interact with the design or (2) the integrality of the design to the operations of the device.
In view of the importance of this issue, the USPTO will immediately turn to reviewing the “Guidelines for Examination of Design Patent Applications for Computer-Generated Icons” and the surrounding law. We will also revisit Chapter 1500 of the Manual of Patent Examining Procedure (MPEP) directed to design patents to ensure it is updated with current case law. If you have additional thoughts or comments on design patents, please email IndustrialDesigns@uspto.gov.
Posted at 08:29AM Apr 21, 2022 in USPTO |
Update on Global Trademark Harmonization
Guest blog by Commissioner for Trademarks Mary Denison
In late May, I attended the TM5 mid-term meeting in Barcelona hosted by the European Union Intellectual Property Office (EUIPO). The TM5 is a strategic cooperation group of the five largest trademark offices in the world including the USPTO, EUIPO, China (SAIC), Japan (JPO), and Korea (KIPO). I gave a blog update last year on the TM5 meeting we hosted at the USPTO, and I’m happy to report we have continued making headway this year towards global trademark harmonization.
TM5 Leadership
The TM5 seeks to facilitate and harmonize trademark filings within its members, as well as other trademark offices around the world. The work of the TM5 is structured through cooperative projects designed to improve users’ interactions with national trademark offices and the World Intellectual Property Organization (WIPO). These projects include, among others, the Common Status Descriptors project, the Identification project, and the Indexing of Non-Traditional Marks project.
Common Status Descriptors (CSD)
The CSD Project is designed to assist trademark owners and other interested parties in understanding the status of their applications and registrations in other offices, whether or not they understand the language, by using icons and common terms. In the past, partners have used terms to describe the status of applications and registrations that may be confusing to users outside their country or may not have been understandable without knowledge of the local language. While partners will continue to use terminology specific to their offices, they have now agreed to implement a series of Common Status Descriptors which will use icons and a second set of terms common to all of the partners.
CSDs for Live Application/Published for Opposition and Dead Registration/Expired
These icons and common terms were implemented by the USPTO in 2015 and have now been implemented by EUIPO, JPO, and SAIC. KIPO plans to implement the icons and common terms by the end of calendar year 2017. View all icons and common terms.
Identification Project (ID Project)
For global trademark filers, one bottleneck in applying in multiple jurisdictions has been the differing national practices in accepted application wording to identify the goods and services on which a mark will be used. To attempt to alleviate that bottleneck, the USPTO used the success of the U.S. ID Manual as an inspiration to create a harmonized TM5 ID List. To date the TM5 partners have agreed on more than 17,000 terms they will all accept. Applicants can determine whether a good or service has been agreed upon by the TM5 members by consulting the USPTO’s Manual of Acceptable Goods and Services. For example, if you search for the term “golf shoes,” you will see it is marked with a “T” meaning that it acceptable to all TM5 members.
The USPTO has also solicited participation in the project from a number of countries outside the TM5 members, and we are delighted to report that Colombia, Chile, Mexico, and Singapore have now each accepted more than 10,000 terms. Other current participants include Canada, the Philippines, and the Russian Federation, and we are seeking participation from a number of additional countries throughout the world.
Indexing of Non-Traditional Marks Project (INTM Project)
Non-traditional marks include three-dimensional, sound, single color, tactile, holographic, scent, movement marks, and more—basically all marks that include elements other than character data (words, letters, numerals, etc.) and designs. Trademark professionals have long acknowledged the difficulty in searching for non-traditional marks in the United States and around the world. Most national offices use the WIPO Vienna Classification System, or some variation thereof, to index the design elements in a trademark application. That system does not provide specific codes to index the elements of a non-traditional mark. The TM5’s INTM Project is designed to improve and potentially harmonize the TM5 Partners’ methods of searching for non-traditional trademarks.
We have worked to identify which member countries accept which types of non-traditional marks, and next we will determine how they index them. Once we have that information, the TM5 will move forward to determine best practices, with the potential for agreeing to a common standard amongst the TM5 and perhaps other national offices.
The USPTO is proud to play an important part in facilitating and harmonizing trademark filings throughout the world. The projects that USPTO is leading, along with other projects led by the other TM5 member countries, will contribute to a more streamlined global trademark system going forward.
Posted at 07:06AM Jun 13, 2017 in trademarks | Comments[2]
Keeping International Competition Front of Mind
Guest blog by Chief Communications Officer Patrick Ross
Empowering bold entrepreneurship by inventors and businesses drives the U.S. economy in a global marketplace. We at the U.S. Patent and Trademark Office know that entrepreneurs today must keep the challenge of global competition front of mind. That’s why we provide an array of tools and resources designed to assist innovators in ensuring their intellectual property rights are respected across the globe. Check out our International IP Toolkit to learn more about our Global Dossier program, our Global Intellectual Property Academy, and so much more.
As part of her leadership on behalf of the Obama Administration on intellectual property issues, USPTO Director Michelle K. Lee recently met in Japan with the leaders of the largest patent offices in the world – the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO)—at an annual meeting known as IP5. You can learn more about the USPTO’s focus on furthering international IP cooperation in Director Lee’s editorial for IAM.
Likewise, Commissioner for Trademarks Mary Boney Denison recently sat down in China with the Trademarks leaders of those same offices—at the annual TM5 meeting—to focus on increased harmonization efforts on that critical element of any company’s IP portfolio. I invite you to read Commissioner Denison’s editorial, “A Smoother Road Thanks to TM5 Harmonisation Efforts,” published by Managing IP.
Posted at 12:41PM Jul 25, 2016 in ip |
Five Largest Trademark Offices Hold Annual Meeting at the USPTO
Guest Blog by Commissioner for Trademarks Mary Boney Denison
The USPTO is dedicated to working closely and regularly with its trademark office counterparts worldwide to cooperate on processes and exchange best practices. With that in mind, we hosted the 2015 TM5 Annual Meeting at USPTO headquarters December 1-2. The TM5 comprises the five largest trademark offices in the world: the USPTO, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the European Union’s Office for Harmonization in the Internal Market (OHIM), and the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China (SAIC). The annual meeting saw progress on a number of cooperative projects, including a vote to expand invitations to other countries to participate in the USPTO-led ID List Project, (which I’ll tell you more about below).
The TM5 is an outgrowth of the Trademark Trilateral, a cooperative framework established by JPO, OHIM, and the USPTO in 2001. That framework was expanded to include KIPO and SAIC in 2011 and 2012, respectively, and the group became known as TM5. The TM5 framework allows the partner offices to exchange information on trademark-related matters and to undertake cooperative activities aimed at harmonizing or improving their respective trademark protection systems and procedures. The 2015 TM5 Annual Meeting also included sessions with users, designed to obtain feedback on the existing efforts and to generate ideas and discussion about future work.
The work of the TM5 is structured through cooperative projects designed to improve users’ interactions with national trademark offices and the World Intellectual Property Organization (WIPO). These projects include, among others, minimizing bad faith filings, TMview, common status descriptions and ID List, and comparison of examination results and Madrid Protocol procedure.
Minimizing Bad Faith Filings
The TM5 partners continue to make efforts to minimize the incidence of bad faith trademark filings around the world by exchanging best practices in order to provide more transparent information to users. To that end, the TM5 published a report summarizing the partners offices’ best practices. The TM5 agreed at the 2015 Annual Meeting to continue to hold seminars with users and other national trademark offices to generate recommended solutions to this global problem. The next seminar for the TM5 partners to engage with users will be held in Tokyo, on March 1, 2016.
TMview
In order to make it easier for trademark applicants to access trademark information and to conduct global trademark clearance searches, the TM5 partners provide their trademark data to OHIM, the designated project leader for “User Friendly Access to Trademark Information.” The project, also known as “TMview,” allows users to conduct a single search of multiple databases, including data from OHIM, WIPO, and 43 trademark offices (which includes the USPTO, JPO, and KIPO). The TM5 partners expect that the trademark data from SAIC will be added to the system in 2016. TMview also provides a link to access the trademark prosecution history and all associated documents of an application file, if that information is provided by the national office.
Common Status Descriptors and ID List
To help make the search results of TMview or TM5 partner offices more understandable for users, the TM5 partners are developing and implementing “common status descriptors,” or uniform terms and icons that multiple national offices can use to signify the particular status of trademark registrations and applications. The USPTO is the designated lead for this project.
To improve global filing, the USPTO also leads a project to develop a harmonized global “pick list” of preapproved and pre-classified identifications (IDs) of goods or services and their translations, called the “TM5 ID List.” All of the TM5 partners participate in this project, as well as the national trademark offices of Canada, the Philippines, Singapore, Mexico, the Russian Federation, Colombia, and Chile. The ID List is now available online and is fully searchable. By including entries from this list in trademark applications filed in any of the participating countries, trademark applicants may avoid a refusal on the ground that the identification is indefinite or otherwise unacceptable. One significant development at this year’s TM5 Annual Meeting was a decision by the partners to expand the project to additional countries so that the TM5 ID List can be a truly global tool for use in offices around the world.
Comparison of Examination Results and Madrid Protocol Procedure
The TM5 partners are now comparing examination results for applications filed before each of the partners’ offices to see where practices might diverge or converge, in order to gain a better understanding of the partners’ practices and policies. The applications currently being reviewed were filed in all of the partner offices using the Madrid Protocol. Such analysis could provide helpful information to users, as well as to the partner offices regarding the ability to register applied-for marks.
Additionally, JPO leads a project to standardize information provided by the TM5 partner offices regarding practice and procedure related to designations under the Madrid System. This project will make it easier for global users to understand how to navigate prosecution in the various TM5 partner offices when filing via the Madrid Protocol.
A full list of the topics discussed at the TM5 Annual Meeting, as well as more information about TM5 in general, may be found on the TM5 website. SAIC will act as Secretariat in 2016 and will host the TM5 meetings, including the TM5 Annual Meeting, in China.
Posted at 12:11PM Jan 05, 2016 in trademarks |
IP Stakeholders Discuss Harmonization of Substantive Patent Law at USPTO Roundtable
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
On Wednesday, November 19, 2014, the USPTO hosted a roundtable on International Harmonization of Substantive Patent Law at our headquarters in Alexandria, Virginia. Roundtables like this one are essential tools for the USPTO to hear and understand stakeholder views on key intellectual property topics and their effects on various stakeholder and public policy interests, and we were glad to have a broad representation of stakeholders join us for the event.
In her opening remarks, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee said that although the USPTO and offices around the world have in recent years invested significantly in work sharing, the lack of harmonized laws related to key examination issues remains a barrier to more efficient and effective reuse of work. These key issues include the definition and scope of prior art, the grace period, as well as issues related to conditions for patentability, including novelty and obviousness.
Following Deputy Under Secretary Lee’s remarks, Commissioner for Patents Peggy Focarino introduced patent experts from the USPTO, the Japan Patent Office, the European Patent Office, and the U.K. Intellectual Property Office, who presented reports on the results of recent surveys on specific harmonization issues, including the grace period.
The roundtable discussion that followed was moderated by Robert Armitage, former General Counsel for Eli Lilly and Company, and featured panelists representing a broad spectrum of U.S. stakeholder interests, including: Q. Todd Dickinson, former USPTO Director; Herb Wamsley, Executive Director, Intellectual Property Owners Association of America; Hans Sauer, Associate General Counsel, Biotechnology Industry Organization; and James Love, Director, Knowledge Ecology International.
The panelists gave their views on the importance of harmonization and its impacts on stakeholders and the public, and indicated a willingness to be flexible in achieving workable compromise solutions. We will use this input and the position of flexibility as we work with partner offices to determine an appropriate course to decrease work sharing barriers.
Throughout the next year, the USPTO Office of Policy and International Affairs will work closely with our international counterparts in Group B+, our group in the World Intellectual Property Organization (WIPO), to establish a clear path forward in patent law harmonization. Read Deputy Director Lee’s remarks to the heads of Group B+ offices at WIPO, September 23, 2014 in Geneva, Switzerland.
Learn more about the Roundtable on International Harmonization of Substantive Patent Law or watch the webcast.
[Read More]Posted at 09:22AM Dec 18, 2014 in International Affairs |
Examiner Training Continues on First Inventor to File
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
The much anticipated First-Inventor-to-File (FITF) provision of the Leahy-Smith America Invents Act (AIA) became effective March 16, 2013. The new system improves the transparency and fairness of our patent system. By harmonizing our filing system with the rest of the world’s industrial leaders, innovators competing in the global economy can more easily acquire venture capital, begin constructing their inventions, and seek out new markets at home and abroad.
The USPTO has already begun conducting examiner training on the FITF provision for our examining corps of more than 8,500 employees. The FITF training addresses critical changes to 35 U.S.C. §102 that redefine both prior art and the effective filing date afforded applications.
The training entails a three-part approach, recognizing applications to be examined under the AIA FITF law will gradually rise to the top of their dockets. For most examiners, this will not occur until this summer.
The first phase runs through April 4, 2013, and offers a three-part overview:
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An introductory video that familiarizes the examiners with the AIA FITF statute and highlights some of the major changes;
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A live, lecture-style training session that delves deeper into rejections under 35 USC §§102 (a) (1) and (a)(2) and the exceptions to these rejections under 35 USC §§102(b)(1)(A-B) and (b)(2)(A-C), showcasing practical examples of each; and
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A follow-up video that re-emphasizes the statutory framework and provides additional practical examples of the provisions discussed in the live training.
A computer-based version of the live training is also being prepared as an online reference for examiners.
The second training phase consists of “just in time” or one-on-one training with an AIA FITF subject matter expert. It is intended to assist examiners in applying the provisions to particular applications in need of immediate examination, such as prioritized applications. This phase will run prior to the commencement of the third phase of training, a comprehensive course in July. Because applications filed on or after March 16, 2013, will take some time before being ready for examination, it is not expected that many employees will require this intermediate training.
The third and final phase in July 2013 will provide all examiners with an in-depth understanding of the FITF provisions, including how they impact prosecution. It will consist of small workshops geared toward greater interaction between examiners and FITF subject matter experts, providing examiners the opportunity to have specific questions answered.
All of the examiner training material on the FITF provisions of the AIA will be made available to the public on our AIA microsite.
Posted at 05:47AM Mar 20, 2013 in America Invents Act | Comments[2]
The USPTO Thomas Alva Edison Visiting Scholars Program Celebrates its First Year
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
I’m happy to report that the first year of our Thomas Alva Edison Visiting Scholars Program has been a great success. The program brings leaders in academia to the USPTO to pursue research projects, drawing on our extensive resources and specialized expertise, with the aim of furthering their intellectual pursuits as well as contributing to the USPTO mission. Since its debut on January 18, 2012, we’ve had the privilege of working closely with three distinguished academics, and the benefit of obtaining their input on a number of issues of key importance to USPTO functions.
Our first Edison Scholar was Professor Jay Thomas of the Georgetown University law faculty. While at the USPTO, Thomas studied and made proposals for new administrative practices that would modernize and improve the patent disclosure system. He also reviewed existing quantitative indicators of agency performance and patent quality, identifying potential points of improvement. Finally, Thomas has been developing new ways for the USPTO to make it easier for applicants to comply with disclosure duties, attempting to minimize concerns regarding inequitable conduct while increasing the quality of information provided to the agency.
Professor Peter Menell of Berkeley’s Boalt School of Law joined the USPTO as an Edison Scholar in June 2012. Menell identified best practices for improving patent claim clarity, which will facilitate patent prosecution, improve overall patent quality, provide better public notification of the scope of a protected invention, and reduce litigation disputes over claim construction. He has also worked on IT tools that can potentially help create an unambiguous prosecution history and searchable database of claim "topography." In addition, Menell lent his expertise to discussions of patentable subject matter as it relates to computer software, contributed to developing a mechanism to enable district judges to easily determine the status of reexamination proceedings, and provided input to a policy paper on digital copyright issues.
Our third Edison Scholar, Professor Jay P. Kesan of the University of Illinois, focused primarily on research related to international patent harmonization. Specifically, Kesan studied how the grace period available under 35 USC § 102 relates to the disclosure of useful information, and the pace and impact of cumulative innovation. Kesan also contributed empirical research related to patent law changes, as well as issues related to innovation, technology transfer, and the IP transactional environment. An additional focus of Kesan’s work was investigating how to develop a standardized set of metrics associated with patent office quality, and identifying circumstances in which such a set of metrics may improve prospects for international work-sharing.
The Edison Scholars devote six months or more to the USPTO on either a full or part-time basis. On behalf of the USPTO, I thank our three inaugural scholars for their outstanding contributions over the last year.
Posted at 05:25AM Feb 08, 2013 in USPTO |
Working Together on Chinese Trademark Issues
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
Many IP issues in China receive high-profile attention in the media. However, quiet efforts by both countries’ leaders to develop and promote a long-range shared vision do not as a rule make the news. A good example is USPTO’s work with the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB), a model of successful, sustained technical cooperation. The USPTO has worked closely and intensively for several years with these offices, exchanging best practices and candidly discussing challenges. This engagement, in turn, has led to several positive developments.
For example, USPTO collaborated with and supported CTMO’s effort to increase transparency through projects such as creating an online English-language trademark registration to assist companies conducting preliminary searches, as well as publishing for an English-speaking audience its research reports on the protection of foreign well-known marks. Thanks to these two efforts, U.S. companies can now conduct easy, no-cost preliminary trademark searches in English, and they can gain a better understanding of the way China protects well-known marks.
USPTO has also exchanged best practices with CTMO and TRAB examiners in substantive areas of examination, such as sound and single color mark examination, by both providing training and Chinese translations of sections of the USPTO Trademark Manual of Examination Procedure for reference by CTMO examiners. USPTO, CTMO, and TRAB have held exchanges on trademark administration and IT issues over the years, and during that time the CTMO has drastically reduced its pendency.
Another notable area of cooperation has been on the topic of bad faith filings, also referred to as “trademark squatting”—the practice of a party intentionally filing for another party’s trademark. In 2010, the USPTO joined together with the Japan Patent Office (JPO), The Office of Harmonization for the Internal Market (the European Union’s Trademark Office), and the CTMO to launch a series of technical seminars in Beijing on that issue, intended to identify useful features of national trademark systems that can be implemented as best practices in other countries.
Following the collaborative seminars, we were pleased to see that China’s Supreme People’s Court newspaper recently highlighted the results of its study on bad faith filing issued in December by the Beijing Number 1 Intermediate People’s Court. The study counseled courts to deter squatting activities when they interpret and apply the law, as well as to admit evidence with the goal of prohibiting this activity. In conjunction with this report, the court issued judgments in six cases against trademark squatters, sending a message about the importance of honest trading.
We have also followed the issue of bad faith filing as China’s legislative branch tackles the problem. On December 31st, China’s National People’s Congress published a draft of China’s proposed new trademark law for review and comment. One of China’s goals in revising its trademark law is to address the issue of bad faith trademark filing. We will continue to work together with China on this issue.
The Chinese have a saying that the longest journey begins with the first step. We believe the steps the U.S. and China have taken together have improved the IP system for all.
Posted at 09:19AM Jan 30, 2013 in trademarks | Comments[1]
China’s SAIC Minister Zhou Visits USPTO
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
On Sept 10, 2012 the USPTO was privileged to host Minister Zhou Bohua and his senior delegation from the State Administration for Industry and Commerce of China (SAIC) of the People’s Republic of China. Minister Zhou, visited us for about four hours, as part of a stopover en route to a meeting in Brazil. This was likely the first time that a Minister from SAIC has visited USPTO.
SAIC remains one of China’s largest ministries, with 364,199 civil servants (according to their 2011 annual report). SAIC houses the CTMO, or Chinese Trademark Office, the Trademark Review and Appeals Board (TRAB), as well as other IP-related agencies. It implements and enforces laws regarding company and enterprise names and business licenses, trade secret, consumer protection, market regulation, and antitrust law. Unlike agencies such as China’s State Intellectual Property Office (SIPO) which has offices in provinces and major cities, SAIC has offices in local governments that reach down to Chinese municipal, county and even sub-county/township level. It is China’s largest IP-related agency in terms of overall employees and penetration into localities.
In the past several years USPTO has worked on several areas of common concern with SAIC, including: training of examiners and translation of our Trademark Manual of Examining Procedure (TMEP) into Chinese; training on three dimensional and sound trademarks; exchanging information on protection of geographical indications; discussion of measures to deal with abusive trademark registrations; discussions on trademark dilution and well-known marks; training in on-line counterfeiting and IP infringement; and encouraging SAIC to develop an on-line trademark database including an English language search interface. Many of these developments took place in the context of the memorandum of understanding (MOU) we signed with SAIC in 2008, and with the assistance of our IP Attaches. Minister Zhou observed that many of these exchanges have helped in not only promoting better understanding of our IP systems, but also in assisting market reforms in China and providing more global opportunities for new businesses.
Minister Zhou toured USPTO headquarters, met on a government to government basis with USPTO and colleagues from Office of the United States Trade Representative (USTR), United States Department of Justice (USDOJ) and Federal Trade Commission (FTC), and later met with representatives from organizations such as the U.S. Chamber, International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Licensing Executives Society (LES) and the US-China Business Council. He was extremely candid and helpful in responding in a constructive and informed manner to all the questions we raised, including several pages of questions from industry.
We learned of several important new developments and areas of concern. One key area is improvements in trademark pendency. Although SAIC has succeeded over the past three years in eliminating the huge backlog at the CTMO and TRAB, the rapid escalation in trademark filings may present real challenges in continuing to maintain past improvements. The current goal of the CTMO is “the year you apply for a trademark, is the year you will be granted one.”
Minister Zhou hoped that the revisions to the trademark law, which are now pending at the State Council Legislative Affairs Office (SCLAO) will help in sustaining quality and growth. He noted in particular that the revisions will help with appropriate use and prosecution of trademarks, and he hopes that passage by the NPC may occur as early as next year. He also expected that there would be greater deterrence from the administrative trademark system with higher fines available under the revised law. He also separately noted that new guidelines on referrals of administrative trademark cases to criminal prosecution are being prepared jointly with other IPR and law enforcement agencies. This “referral rate” is often used to measure the deterrence of the administrative system and has traditionally been quite low. Last year the rate of referral from administrative enforcement to criminal prosecution was only 0.61%.
China has also become a member of the “TM 5” in Trademarks, much as it has been a member in patents, and Minister Zhou indicated an interest in participating in an ID List Project of the TM 5, which could help in insuring harmonization of sub-classifications of goods and services.
Trade secret matters have been a hot topic of discussion between the U.S. and China, with several high profile cases that have brought considerable media attention. Our focus with Minister Zhou was on two key areas of his responsibility: administrative enforcement of trade secrets and revisions to the rather old law governing trade secrets, the Anti Unfair Competition Law (AUCL) (1993). Minister Zhou was candid in acknowledging that theft of trade secrets affects Chinese and foreign companies alike and due to restrictions on evidence gathering and other compulsory measures by administrative agencies, SAIC’s administrative enforcement cases to date have been relatively modest matters brought mostly against small companies or individuals. Under current Chinese law, he believed that the courts and police are better equipped to handle complex trade secret theft cases.
SAIC has been discussing means to improve the Anti Unfair Competition Law with the SCLAO. On our suggestion, Minister Zhou said he would look into recommending that the AUCL be amended to clarify that preliminary injunctions, evidence and asset preservation measures would be available in the new law, as they are already provided for in the trademark, copyright and patent laws. Minister Zhou quickly recognized that immediate provisional relief is critical in trade secret matters in order to prevent further loss to rights holders. He also welcomed further exchanges on trade secret matters, which we plan to follow-up on.
SAIC also discussed the fifth draft of its guidelines on handling of IPR in antitrust matters. We urged that these guidelines will be available for public comment. On the substance, Minister Zhou did state that SAIC did not view intellectual property and antitrust law as contradictory concepts; both laws have a goal of promoting market efficiency and innovation. Minister Zhou advised that SAIC would only investigate licensing transactions that hurt competition, and that his agency has not yet had one case in this area since the law’s passage (2008), although it had prosecuted 16 antimonopoly enforcement cases. Minister Zhou welcomed the USPTO’s participation in this area, and noted that he was working closely with our colleagues from USDOJ and FTC on the IPR guidelines.
Industry also raised a question concerning SAIC’s role in enforcing trademark rights when the local trademark owner asserts the rights against a foreign trademark owner who has commissioned the manufacture of products in China, as was the case in the recent Proview/iPad dispute. Minister Zhou said the iPad issue was raised by many local AIC’s after the initial trial court decision in Shenzhen that was adverse to Apple. His Ministry’s position was not to take any administrative enforcement action until a final decision from the Guangdong High Court on appeal. One of the key reasons for this was that any action could adversely affect Apple and the iPad trademark at a time when matters had not been settled.
The volume and variety of work handled by SAIC is indeed staggering, and Americans have important interests in these developments. SAIC has been the largest trademark office in the world for the last 10 years based on their data of trademark applications. We were told that there are 206,000 registered American-owned trademarks in China, and 120,000 new foreign trademarks are filed each year in China. With approximately 1,500,000 trademark applications expected this year, and with 68,836 reported administrative trademark enforcement actions last year, engagement on trademark office related matters has been especially important for Americans. Of particular note, there were 17,022 administrative trademark enforcement actions taken by SAIC on behalf of foreigners in 2011, which was nearly 14 times the number of all foreign-related civil litigation involving all types of IP rights that were disposed of by the China courts in 2011 (1,321).
We highly valued this exchange with Minister Zhou and his delegation, and we hope we can have more exchanges with SAIC in the future.
(This blog was jointly written by Director Kappos and Mark Cohen, Senior Advisor to Director Kappos on China matters.)
Posted at 10:53AM Sep 18, 2012 in ip | Comments[1]
Top Reasons Why USPTO Is Moving to CPC
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
Today I'd like to return to our work on patent classification. With the planning and development phases of the Cooperative Patent Classification (CPC) project well underway, this is a good opportunity to reemphasize the importance of CPC and highlight why the USPTO is cooperatively pursuing this initiative with the European Patent Office (EPO). Last year we began working with the EPO on the requirements for a bilateral classification system that would be jointly managed by both offices. We provided an overview of our efforts to the examining corps in February of this year. Throughout the transition to CPC, we will continue to work collaboratively with the EPO and the Patent Office Professional Association (POPA) on implementation details. I am strongly committed to the benefits CPC will bring. CPC will greatly benefit the USPTO and its employees, as well as the entire U.S. and indeed global innovation communities. To highlight the benefits, here are the top reasons why we are moving to CPC:
1. CPC Is Up-to-Date.
The U.S. Patent Classification System (USPC) has not been updated and maintained over time. Thanks to EPO's efforts, CPC will start out current. And the USPTO and EPO will jointly maintain CPC, so it will remain current and affordably so, with revisions made on a regular basis to provide manageable breakdowns.
2. CPC Is Dynamic.
CPC will allow for more frequent updating that will improve our ability to adapt to and incorporate filing trends and emerging technologies quickly into the scheme through more frequent revisions.
3. CPC Is Compatible.
USPC is not compatible with any other classification system used in the world today. The other four major intellectual property offices (EPO, KIPO, JPO, SIPO), all utilize a classification system based on the International Patent Classification (IPC) standard. Moving to CPC will provide the USPTO with a classification system that is compatible with the IPC.
4. One Search, One Source.
U.S. patent examiners will be able to select one set of CPC classification codes pertinent to a technology, and then have before them the available U.S., European, and other foreign art.
5. CPC Has More Breakdowns.
The CPC scheme (or classification schedule, as it is known at the USPTO) will initially have approximately 200,000 breakdowns as compared to 150,000 breakdowns in USPC. This will provide, in many art areas, a more targeted search that will yield more focused results.
6. CPC Will Have U.S. Documents from Day One.
Since CPC is initially based on European Classification (ECLA), and since the EPO has already classified U.S. documents from 1920 to date in the ECLA, we can leverage the work already done by EPO and use it as a starting point for CPC.
7. CPC Promotes Work Sharing.
After a transition period, the USPTO will only have to classify U.S. documents filed first in the U.S. Likewise, EPO will only have to classify EPO and member states’ documents filed first in Europe. By jointly sharing the work to classify new documents, CPC will save resources for both USPTO and EPO.
8. CPC Is Collaborative.
Collaboration tools will be developed for USPTO and EPO examiners to share and exchange classification and search ideas.
9. CPC Is For All Users.
Use of the CPC classification system will provide both examiners and patent system users worldwide the ability to conduct patent document searches by accessing the same document collections.
10. CPC Facilitates Harmonization.
CPC will foster patent harmonization efforts by enhancing our ability to leverage and use work of other intellectual property offices.
11. CPC Is Accommodating.
CPC is targeted to be launched in both the EPO and the USPTO on January 1, 2013. At the USPTO, there will be a two-year period when both USPC and CPC will be running in parallel to allow USPTO examiners sufficient opportunity to learn and transition to the CPC scheme.
12. CPC Is Global.
CPC will be used by the USPTO and more than 45 patent offices in their internal search systems. This user community totals more than 20,000 patent examiners who will share the same classification scheme, i.e., the CPC. This diverse community will help establish the CPC as an international standard.
I hope you will share in my enthusiasm for this important undertaking. Please check the co-owned and jointly maintained CPC website periodically for further updates.
Posted at 06:55AM Jun 13, 2012 in patents |