On December 1, 2019, the United States Patent and Trademark Office (USPTO) and Brazil’s National Institute for Industrial Property (INPI) put into effect a new Patent Prosecution Highway (PPH) agreement that significantly expands on a prior agreement, allowing for applications for more industries and for higher annual caps. For details, visit our USPTO-Brazil PPH page or INPI’s PPH page (in Portuguese).
Content tagged "Patents"
In November 2019, the United States Patent and Trademark Office published a second edition of the America Invents Act (AIA) Trial Practice Guide (Practice Guide) to incorporate the Practice Guide updates released in August 2018 and July 2019 into the original August 2012 Practice Guide. The second edition consolidates all updates of the Practice Guide into a single document. This second edition also includes additional revisions for greater consistency across all sections of the newly consolidated guide.
Updated guidance included in the November 2019 edition
- Institution of trial after SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018)
- Use of sur-replies in lieu of observations
- How parties may contact the Board to request an initial conference call
- Use of word counts
- Updates to the sample scheduling order for derivation proceedings
- Updates to the default protective order
Trial Practice Guide resources and updates
- Consolidated Trial Practice Guide November 2019
- Trial Practice Guide July 2019 update
- Trial Practice Guide August 2018 update
- Trial Practice Guide August 2012
More information about AIA trials can be found on the PTAB webpage.
Earlier this year, Commissioner for Trademarks Mary Boney Denison reported to the House Subcommittee on Courts, Intellectual Property, and the Internet Committee on the Judiciary that “the USPTO is aggressively taking steps to combat the various threats to our trademark system.” In a recent blog post, we announced new ways to enhance trademark security, and we added new filing features for trademark users.
On October 26, 2019, mirroring our requirements for patent users, we deployed security measures that now require trademark users to log in using a USPTO.gov account with two-step authentication in order to access the Trademark Electronic Application System (TEAS) and TEASi (international) systems. Now, both trademark users and patent users will have the same secure access to USPTO online resources for paying fees and conducting business.
Another significant security change that will take place over this weekend will limit Patent Private PAIR research to return only that data associated with that customer number. In other words, we will remove the ability for Private PAIR users to mine data belonging to others in Private PAIR—that is, to run automated scripts (bots) that query data not associated with that individual user account and its associated customer number(s).
Beginning this weekend, publicly available data of others will be available only through Public PAIR. Therefore, in order to access such data, patent users are encouraged to use Public PAIR and Patent Examination Data System, which offer the capability to search, display, and download Public PAIR content in machine-readable formats (XML and JSON). This security change is one of several steps we are taking in our increased effort to secure and improve USPTO online performance for all members of the IP community.
Please search for more information about Public PAIR and the Patent Examination Data System on our USPTO website. Alternatively, please contact the Patent Electronic Business Center (EBC) at 866-217-9197 between 6 a.m. and midnight ET, Monday through Friday, or email email@example.com.
The United States Patent and Trademark Office (USPTO) today provided notice of an update to the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG).
The October 2019 Update responds to public comments regarding the 2019 PEG. The update does not change the 2019 PEG, but provides further explanation on how the USPTO applies such guidance. For example, the update provides additional information on how the USPTO determines if a claim “recites” an abstract idea and how groupings within the abstract idea exception are determined. It also explains the procedures examiners can use to identify “tentative abstract ideas” and provides more information on how examiners evaluate whether a judicial exception is integrated into a practical application. The update also addresses the examiner’s responsibility to provide adequate notice to applicants in making a subject matter eligibility rejection. In addition to the written explanations described above, the update includes additional helpful examples in the life sciences and data processing areas. It also includes an updated index of examples for use with the 2019 PEG and an updated case law chart that lists selected eligibility cases from the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit.
The October 2019 Update materials are available to the public on the Subject Matter Eligibility page of the USPTO website. Feedback on the update or on any patent eligibility issue is welcome on an ongoing basis. Instructions for submitting feedback, and more information on the public comments, are available on our Subject Matter Eligibility page.
When his heat-pump prototype shot a stream of water across the room, Lonnie Johnson realized the technology could create a super-powered water gun. Getting the toy to market, however, would take years.
Each month, our Journeys of Innovation series tells the stories of inventors or entrepreneurs whose groundbreaking innovation have made a positive difference in the world. Hear it in their own words or read the transcript below.
Linda Hosler: Taking a great idea from concept to market can require years of hard work and unwavering persistence. This is Linda Hosler from the United States Patent and Trademark Office. I recently interviewed Lonnie Johnson, an inventor and engineer, originally from Mobile, Alabama. His journey as an inventor began in high school, when he designed and built his own robot, entered it in a regional science fair, and won first place. Since then he has received more than 100 patents for inventions that include new types of engines, batteries, and spacecraft. In fact, it was his work at NASA that inspired his most famous commercial success in the Super Soaker®—a line of toy water guns. Here is a bit of our conversation.
Linda Hosler: So where did it all start? I like to think of inventors as having an origin story, like a superhero. Is there a moment that defines you when you turned into an inventor?
Lonnie Johnson: A moment that defined me, when I turned into an inventor? I have been inventing and tinkering with things and have always, as far back as I can remember, I've been curious about how things worked and I used to take my toys apart.
Lonnie Johnson: I’d take my siblings' toys apart because I wanted to see inside. I can't remember when I was not curious that way. I think you might find, when I—the time I got my first patent, maybe that would officially classify me as an inventor. In reality, we're all inventors. We all have creative minds and I think some of us are focused on tapping into that more so than others.
“In reality, we're all inventors.”
Linda Hosler: One of the most accessible inventions that you created was the Super Soaker®. [LJ: Yes.] Was that a problem you were trying to solve or is it just something that sort of came about?
Lonnie Johnson: Actually, it was a problem. I was working on a new type of heat pump that would use water as a working fluid instead of freon and I was experimenting. I was working for NASA at the time, at the Jet Propulsion Laboratory, and I would go home and work on my own projects, and I machined these nozzles and, and I'd hook them up to the sink in my bathroom, and I was looking at the stream of water coming out of a nozzle, and I turned and shot the stream across the bathroom, and I thought jeez it would be neat to have a really powerful toy water gun. And I thought to myself about inventions that I’d come up with up until that point. In fact, I had gotten my first patent a few years before that point and having trouble getting investors and figuring out how to commercialize some of my other ideas. I felt that a toy would be something that could, anyone could look at it and appreciate, and if I can get that going, then maybe I can get enough income to really become a full-time inventor. So that worked out pretty good.
Linda Hosler: Was there ever a time that you struggled or you felt like you wanted to quit?
Lonnie Johnson: Well, Super Soaker® is a good story along those lines of, you know, being frustrated. And I can remember I was still working a day job, and then I'd go home at night and I'd work on my own projects, and my sleeping hours actually were very short, and I remember one time stopping and thinking to myself jeez, I can conceive of things. I can actually go into my shop, make them, make them work, have demonstrating models and prototypes. Why is this so hard? Why is it taking so long to get some—to achieve some success? Super Soaker®, I got the idea in  and it wasn't until  that I actually got a deal going. It wasn't until  that the toy came out on the market. So it took about eight years to get it on the market.
“There were a lot of false starts, and a lot of reasons to give up.”
LONNIE JOHNSON: There were a lot of false starts along the way and a lot of reasons to give up. One of the companies I was working with actually went out of business trying to do it. Another company where I was going to try and set up manufacturing myself and found out that it was gonna cost a lot more money than a captain in the Air Force was making at the time, so there was just one discouraging event after another, but I think the key to success, and the most important thing above anything else is perseverance. I think sticking to it and not giving up is what makes the difference.
“I think sticking with it and not giving up is what makes the difference.”
Linda Hosler: That's fantastic. So having a mentor and being a part of team is often—I've often heard that that's part of the invention process as well.
Lonnie Johnson: In terms of actual mentors, you know my dad was my first mentor. He wasn't an inventor or anything, but he used to work on the car, and I was always curious about how things worked. When he was working on something around the house, I was Johnny-on-the-spot. I was watching his every move. I think that was—that made a difference, but it wasn't long. He was not, didn't have formal training, so it wasn't long before he couldn't help anymore.
And you find inspiration along the way, you know, wherever you can draw upon it. One of the things that happened, for example, when I was in college, I went to Tuskegee University and that's where the Commodores started when I was a student there. They started on a freshman talent show the year before I got on campus. And one year, one of the stagehands came to me, and said, you know the group is playing in the dark in a lot of nightclubs, and could you come up with some lighting systems? And I say, Oh sure, I can design some. So I designed some lights for the Commodores. And I was really excited about that. So you know, having a problem or a challenge I think is a source of inspiration for me. But I remember later on after I entered the Air Force, and the Commodores and Lionel Richie became very, very famous, and I thought to myself, if they can do it, I can do it too. But why is it taking me so much longer?
At one point they had actually offered me—this was back when I was in college—they offered to have me go on the road with them, and handle their equipment. As I said, no, I don't think I want to be a roadie. I'll stay here and finish my—and get my engineering degree. [LH: Wow, what a cool story.]
Linda Hosler: Was there something that first piqued your interest or made you excited about science?
LONNIE JOHNSON: I remember when I was 12 years old, it was back in , when President Kennedy made his moon speech: we're going to put a man on the moon before the decade is out. I really was excited and I watched the space program from day one, and all of the different launches as we expanded our capability to really launch vehicles, and even design larger and larger vehicles and improve reliability to all them baby steps along the way of actually building that capability was really, really impressive over a very, very short period of time.
I watched—we used to watch sci-fi, science fiction TV shows, and I used to watch these shows. Robby the Robot was one, and then Lost in Space robot, and I was excited about those. And so at one point I decided I wanted to have my own robot. So I actually built a robot. I built robots, little small things with erector sets and things like that that I had gotten for Christmas, but they were different, so I wanted to have a real robot.
And so I started working on him. It took me about a year, but by the time I got into the twelfth grade, I actually had built my own robot, and he was Linex the Robot, and he won first place at the University of Alabama at a regional science fair in 1968. And that was during the heart of the civil rights movement and it was a major personal victory for me. In fact my senior year in high school was, that was pre-desegregation, and so it wasn’t until after I graduated that my high school was desegregated. So, there was a lot to overcome.
LINDA HOSLER: Shifting gears a little bit could you describe the role that intellectual property has played in the course of your career?
LONNIE JOHNSON: It's been pivotal. Certainly the Super Soaker® patent, the original patent, if it we're not for that patent, I would not have been able to license it with—under the circumstances that we did, and even when the infringers started, we were able to get injunctions put in place based on the patent. We actually stopped shipments coming into the country at the docks in Los Angeles. And I think when we took the first infringer on, the other companies decided to step back and leave it alone. That allowed us to focus on developing the product and proving it, and it became a major success. And I think it's extremely important that if you take the risk, do all the development work, and stick your neck out, and prove that something is possible, and then have everybody jump on, pile on and eat the benefits away from you, that is unfair.
“When we took the first infringer on, the other companies decided to step back and leave it alone.”
Linda Hosler: Could you talk a little bit about taking the Super Soaker® from prototype to patent? How long did it take you? What was that like?
Well, let’s see, I got the idea in . Okay, and at the time I was at the Jet Propulsion Laboratory in Pasadena—I decided to go back on active duty in the military—so I got the idea, but I didn't start working on the gun until I actually moved. And when I got my family resettled a few months later—when I had gotten a shop set up in my basement and everything—then I started working on the prototype. Initially I wanted to manufacture the gun myself and set up a company and all this, and I went and talked with injection molding company. And then the owner of the company came back and said, okay it's gonna cost $200,000 and set up the first, set up the production line and get the first thousand guns out. And I thought to myself, I don't have $200,000.
And I realized that I really didn't know very much about business—all my professional work had been you know with the government. And then I started, um, pursuing licensing opportunities. But now it's a situation where I'm going to talk to existing companies, toy manufacturers, about my idea, my baby, and they could just take it and run with it. And then I'd be fighting and trying to get them to acknowledge a contract, or put some kind of contract or instrument in place. But then I decided, well, you know, first off, if nobody knows about it, I can't make any money.
So it really was a conscious decision of being willing to take the risk so that I could learn some things that I didn't know about business in particular, and I thought, you know, that I could follow the process, be involved in the whole process of commercializing a product, and then with that knowledge, I could—I'll be ready for the next project, win or lose.
By , I'm ready to make another stab at it, and I went to New York with the idea of meeting some people at Toy Fair. This is a major trade show for toys. And I literally walked the halls looking for someone to talk to about my invention.
“I literally walked the halls looking for someone to talk to about my invention.”
And it wasn’t like an open trade show, because at Toy Fair you had toy rooms, and you had to know someone in order to get in there because everybody was very secretive about their new product line. So, I ended up talking to the vice president of Larami. And he basically told me in essence, this sounds like an interesting idea, but I can't look at inventions now. We're at a major trade show here. Our headquarters is in Philadelphia. If you're ever in the area and drop in to see us, we'd love to look at your product. So as I was getting up to leave he said to me, “But don't make a special trip.”
And I said, Oh, you burst my bubble right even before I get out the room. And as soon as I got home, I started working on the next version of the gun, because I had not gotten the previous gun back from the other manufactures I had been talking go. They’d take it apart. And it took me a couple of weeks to get a new gun made. And this is the first time I put the bottle on the top, which gave it the ability to hold a whole lot of water, but through other mechanisms: pumping it up, pressurizing, and things like that—that was all fundamental. So after I finished it and I called him up and asked to speak with the president, and I told them that—the vice president, Al Davis—and I said, “Look, I'm going to be in your area next week. Are you available for a meeting?” So I did make a special trip.
And I went in and they were, all of the—the president of the company there Myung Song, Al Davis, the other staff was there, and he asked me, well, what do you have? I opened up my suitcase. I took it out and pumped it up and fired it across the room. And the president of the company said, wow! It was like, they had never seen a gun perform like that. And then the brainstorming started and I could just sit back and let it happen because I realized that I captured their imagination we were on our path to success. So that was the genesis of the Super Soaker®.
“I realized that I captured their imagination.”
LINDA HOSLER: That's fantastic. Lots of ups and downs.
LONNIE JOHNSON: Oh yeah. Lots of challenges, setbacks, disappointments, all of those things that I know just about every inventor runs into.
LINDA HOSLER: Absolutely. I’m going to shift gears again and ask you a little bit about what kind of advice you might have for other inventors. Again, speaking to a wide audience.
LONNIE JOHNSON: I only have one word of advice: persevere. Nothing else is gonna to make a difference. And it's actually difficult for other people to see your dream. It helps to have a model or a prototype or something like that that you can actually demonstrate. Fortunately the people at Larami were in the toy water gun business already, and when they saw my gun compared to what they had, and they knew what to say luck and perseverance and opportunity. But I think perseverance is a path by which you can make your own luck.
“Perseverance is a path by which you can make your own luck.”
LINDA HOSLER: What do you think it takes to be a good inventor?
LONNIE JOHNSON: I think it takes knowledge more than anything. I think, again, the Super Soaker® is a good example. I realized what I didn't know, and I set out to compensate for that and obtain the information I needed in order to succeed. So, you need to embrace the unknown.
LINDA HOSLER: That’s great. And looking back at the impact of all your inventions and your career, what's the thing you're most proud of?
LONNIE JOHNSON: Wow, well, you know, I don't—that's like asking, well, what's your favorite child; they all have a special place. To answer your question, the robot that I built in high school is a—was a highlight. Getting an invention on an interplanetary spacecraft that my peers at the time—handpicked engineers at the Jet Propulsion Laboratory—was saying would not work, but making it work, and successfully solving a major problem. That was a highlight.
Of course the Super Soaker®. Most people don't know that I'm also responsible to large extent for the success of the Nerf dart gun line. In fact the N-Strike line of products we're based—started based on my patents. And the things I'm working on now, the JTEC, which is a new type of engine that converts heat directly to electricity, more efficient than other engines. And what's really unique about it is that it's all solid state with no moving mechanical parts. And I'm developing an advanced battery technology that could be as much as an order of magnitude higher in energy storage capability than existing batteries.
So these are highlights that I'm excited about it this point.
LINDA HOSLER: This is really fantastic. It's so fun to hear the stories firsthand. So I really appreciate it.
LONNIE JOHNSON: You have a fun job, obviously…
LINDA HOSLER: A big thank you to Lonnie Johnson for taking the time to sit down with us and share his experiences. And thank you for listening.
In 1979, Black & Decker introduced the Dustbuster®—a cordless, rechargeable, hand-held vacuum cleaner that is still popular 40 years later.
Less known is the story of the product’s evolution from earlier innovations and its origins in the “space race.”
Each month, our Journeys of Innovation series tells the stories of inventors and entrepreneurs who accomplish great things. This month, we delve into the past for a look at Space Age technology.
In 1961, President John F. Kennedy famously called for “landing a man on the moon and returning him safely to the Earth.” Eight years later, on July 20, 1969, Neil Armstrong stepped out of the Apollo Lunar Module Eagle and onto the surface of the moon. The ambitious national effort that made such an extraordinary feat possible also generated a flood of “downstream” innovations that soon found their way into the homes and businesses of ordinary Americans. From quartz-powered wrist watches to building insulation, many consumer products we use today have their origins in the space race. Few were as commercially successful as the pint-sized cleaning tool with a big name: the Dustbuster®.
“A successful consumer product is not the result of an instantaneous flash of genius that many imagine.”
Before Armstrong could take his "one small step for a man, one giant leap for mankind"—before, in fact, the National Aeronautics and Space Administration (NASA) could even plan on sending him to the moon—there was a pressing need for power tools that could be safely operated in space. NASA’s scientists and engineers were particularly concerned about cords, which could easily entangle astronauts in the weightlessness of zero gravity.
To solve that problem, NASA awarded Black & Decker (B&D)—a household company name since 1914, when S. Duncan Black and Alonzo Decker invented the first hand-held electric drill—the contract to develop a cordless, rechargeable drill for extracting core samples from the moon. Using battery technology created by General Electric, B&D had already begun experimenting with cordless tools, including the world’s first rechargeable drill in 1961.
For the NASA project, the company accelerated its research and development, experimenting with different kinds of batteries and even creating a computer program to help optimize power usage so astronauts would not have to stop their work to recharge. These new cordless tools included the B&D Moon Drill, first used during the Apollo 15 mission in 1971.
In true entrepreneurial fashion, B&D sought to profit more broadly from their work on the Moon Drill, incorporating some of the ideas behind it into their mass-market consumer products. In 1969, they debuted a cordless lawn mower featuring bigger rechargeable batteries, followed by a cordless shrub trimmer a year later.
“Where others might have focused on cost-cutting, B&D execs focused on creating new products that would expand their business into new markets,” recalled the company’s design chief, Carroll Gantz, in his book “The Vacuum Cleaner: A history.” Gantz had come to B&D after 17 years at vacuum maker Hoover, and his experience would prove invaluable creating B&D’s breakthrough products in the years to come.
One such product, released in 1974, was the Mod 4 Power Handle Cordless System. A multi tool with five attachments—allowing it to be a drill, shrub trimmer, and small “Spot-vac” vacuum cleaner—it came in B&D’s signature orange-and-white color scheme. The interchangeable tool heads resulted in a versatile product while keeping the overall cost affordable thanks to a single battery pack that worked interchangeably with the various attachments.
As with many new and innovative ideas, however, the Mod 4 ultimately failed in the marketplace, generating far fewer sales than anticipated. But B&D believed they had a good product on their hands, one they weren’t ready to abandon. They wanted to know why it failed to sell.
One reason, B&D’s market researchers soon discovered, was that consumers would often forget to place the tool’s rechargeable batteries back in the charger after use, defeating its convenience the next time the tool was needed. However, the researchers also uncovered a bright spot: 92% of women users were highly satisfied with the handheld Spot-Vac component of the Mod 4, which they often borrowed from their husbands’ workshops to clean up small kitchen spills. The small vacuum was much easier to use than lugging a heavy canister vacuum out of a closet, unwinding the cord, cleaning a minor kitchen spill, and then rewinding and returning it to storage.
According to Gantz, “B&D learned several important lessons… First, that market research needed to be done before inventing a new product, not after. Second, consumers needed to be educated about new technology.”
With these insights in mind, the B&D marketing department believed the company could sell a revamped stand-alone product based on the Spot-Vac. To lead that effort, Gantz was tapped to be the design chief for a team consisting of B&D product managers, engineers, and designers.
“In contrast to almost all B&D products intended for men, [the new product] needed to be one aimed primarily at women, to be used upstairs in the home, not the basement,” wrote Gantz.
Within a few days, he and his team had an initial prototype, patched together from modified Spot-Vac components and including a wall-mounted charging base. The base addressed consumer confusion over where and how to store and recharge the tool, but the team agreed the product still looked too much like a power tool that belonged in a workshop or garage. To make it more appealing and practical, it had to be completely rethought.
Instead of a round mini-vacuum, they changed the device body to be triangular, a nod to the shape of dustpans commonly found in the kitchen. Because it needed to be kept within plain sight, where it would be most useful, they streamlined the footprint to keep it from being knocked off the wall in high-traffic areas. Lastly, they ditched B&D’s bright orange color scheme for a goes-with-anything almond beige. With a slimmed down and neutral appearance, B&D had a new product designed to be out in the open in American homes. Initial market tests with customers were promising, and the sales team doubled their initial sales estimates from 50,000 to 100,000 units. But the product still needed a name.
After a company-wide naming contest and some consumer testing, B&D’s logo—long associated with power tools for the male-dominated, do-it-yourselfer market—was reduced to minimal size, and the “Dustbuster” was born.
The Dustbuster’s design was so new and different that Gantz urged B&D to protect it by filing the company’s first-ever design patent.
“This protection would prove invaluable in a few years,” recalled Gantz, “when design patent infringement lawsuits would begin.”
For years, vacuums all had a similar shape: a fat, round body with a long nozzle attachment. But the angled and nozzleless design of the Dustbuster was unique and signaled to customers that the product itself was new and innovative. The design patent—a form of intellectual property protection first started in the United States in the 1840s—protected B&D from others who wanted to copy the vacuum’s new appearance, while a separate utility patent applied to the function-charging base. Indeed, B&D used the protections provided by its patents on the product to block competitors from selling vacuum cleaners in the United States that had a similar appearance.
The Dustbuster created a whole new category of cordless vacuums that satisfied consumers’ needs for a quick way to clean up messes and spills. It also opened a new market for B&D and led the company to create a household products division. One of the first products the new division created was a Dustbuster for cars. The company would continue to refine and develop the Dustbuster, including a major redesign in 1986 and subsequent redesigns in the 1990s and 2000s.
By some estimates, more than 150 million Dustbusters have been sold in the 40 years since the product’s introduction in 1979, racking up $6 billion in sales for B&D. An original Dustbuster is even on display at the Smithsonian’s National Museum of American History in Washington, D.C., where it joined two of its B&D “ancestors” in 1995: the first cordless drill and the Moon Drill.
As Gantz wrote, the Dustbuster “illustrated that a successful consumer product is not the result of an instantaneous flash of genius that many imagine. Rather it is a lengthy and complex process of high stakes trial and error, perfecting and refining a concept.”
From its origins in the first Apollo missions, to the commercial failure of the Mod 4, to its unique patented design and ultimate triumph as a popular household tool, the Dustbuster offers a fascinating example of the journey that innovation can take, and the benefits that consumers can enjoy, when we challenge ourselves to shoot for the moon.
This story was produced by the USPTO Office of the Chief Communications Officer. For feedback or questions, please contact OCCOfeedback@uspto.gov.
Story by Laura Larrimore. Photo credits noted in captions. Additional contributions by Eric Atkisson, Alex Camarota, and Steve Schatz.