Blog Posts

USPTO Adopts New Annual Practitioner Maintenance Fee Rules (Source: USPTO)

zeev@patentim.com — Wed, 19 Nov 2008 03:00:00 +0100

Fees will recover costs for maintaining attorney-agent automated system; fund the disciplinary system.

Consistent with its commitment to e-government initiatives and promoting high standards of practice before the Office, the United States Patent and Trademark Office (USPTO) has adopted new annual practitioner maintenance fee rules for individuals recognized to practice in patent cases. The annual fee recovers costs to the USPTO of maintaining the roster of attorneys and agents authoriz [...]

End of software and business method patents in the USA? The Bilski decision

jep@patentgruppen.com — Mon, 17 Nov 2008 03:00:00 +0100

In the In Re Bilski case, the US Court of Appeal for the Federal Circuit has made a decision about what it takes for a process claim to be patentable.

On October 30, 2008, the United States Court of Appeal for the Federal Circuit has made a much anticipated decision in a case concerning a business method patent, the so-called In Re Bilski case.

The decision is expected to be of vital importance to the validity of process claims in general, but especially to software/computer-imp [...]

Macedonia accedes to the European Patent Convention (source: EPO website

zeev@patentim.com — Sun, 16 Nov 2008 03:00:00 +0100

1. Accession to the EPC

On 28 October 2008, the Government of the former Yugoslav Republic of Macedonia (MK) deposited its instrument of accession to the European Patent Convention (EPC).

The EPC will accordingly enter into force for the former Yugoslav Republic of Macedonia on 1 January 2009.

The European Patent Organisation will thus comprise the following 35 member states as from 1 January 2009:

Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denma [...]

Waiting times for a first office action in the US

ophir@patentim.com — Sun, 16 Nov 2008 03:00:00 +0100

I'd like to draw your attention to Dennis Crouch's latest posting on Patenly O, presenting an actual estimation of waiting times for a first USPTO Office Action .

I don't know if the statistics refer to all US Applications, i.e. including those filed as a PCT National Phase. As far as I know, Applications filed as a national phase of a PCT Application take longer than Applications originally submitted as a US Application.

USPTO EPO JPO - Trilateral offices move forward on work-sharing (Source: EPO website)

zeev@patentim.com — Sat, 15 Nov 2008 03:00:00 +0100

The European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) have agreed to move forward on work sharing and to support the recently initiated co-operation of the five largest intellectual property offices (the three Trilateral Offices plus the Korean and Chinese IP Offices, known as IP5).

Meeting at their 26th annual Trilateral Conference in The Hague on 14 November, the heads of the three offices also agreed to contribute t [...]

USPTO Adjusts PCT Transmittal and Search Fees (source: USPTO)

zeev@patentim.com — Thu, 13 Nov 2008 03:00:00 +0100

The United States Patent and Trademark Office (USPTO) is revising the rules of practice to adjust the transmittal and search fees for international applications filed under the Patent Cooperation Treaty (PCT). The Office is adjusting the PCT transmittal and search fees to recover the estimated average cost to the Office of processing PCT international applications and preparing international search reports and written opinions for PCT international applications. The new PCT transmittal fee wi [...]

USPTO and DKPTO to Pilot Patent Prosecution Highway (source: USPTO)

zeev@patentim.com — Thu, 13 Nov 2008 03:00:00 +0100

PRESS RELEASE
CONTACT: Jennifer Rankin Byrne or Ruth Nyblod
Phone: (571) 272-8400 or jennifer.rankin_byrne@uspto.gov or Ruth.Nyblod@uspto.gov

November 03, 2008
#08-39

USPTO and DKPTO to Pilot Patent Prosecution Highway
Trial program to improve quality and pendency at both offices

Washington, D.C. - The Commerce Department's United States Patent and Trademark Office (USPTO) and the Danish Patent and Trademark Office (DKPTO) today [...]

Russian trademark search services: few facts

dmitri@patentsfromru.com — Wed, 05 Nov 2008 03:00:00 +0100

Originally published at Russian Patents blog .

We’ve just updated our “Russian trademark search services” page, and that reminded me of a case we came across recently with one of our Chinese clients (an Intellectual Property Agent based in Beijing).

They wrote:

“During the period of cooperation with another Russian ip firm, we have to conduct trademark search through a Hong Kong firm because Russian charges too much (they just wasn’t ac [...]

Balkan anti-counterfeiting

dieter.habib@cosoviciplaw.com — Sun, 26 Oct 2008 03:00:00 +0100

A significant quantity of counterfeits and pirated goods of all kinds are often crossing the Serbian, Montenegrin and Macedonian state borders, either in transit to the European Union, for end use on the local markets or for transformation and re-export.

The Cus [...]

Montenegro IP

dieter.habib@cosoviciplaw.com — Sun, 26 Oct 2008 03:00:00 +0100

The IP Office of Montenegro is functional since May 28, 2008. The term for validation is November 28th, 2008

In general and as a principle rule, the said Decision provides that all intellectual property ri [...]

THE INTERPRETATION OF ART.124, SECTION I IN THE BRAZILIAN LEGISLATION:

cesar@trademarks.com.br — Wed, 22 Oct 2008 03:00:00 +0100

According the Art.124, section I of Industrial Property Law are not registered as mark blazonry, weapon, medal, flag, emblem, distinctive, official monument, public, national, foreign or international as the respective designation, figure or imitation.

The article above is part of a prohibitive legislation, but it is to preserve the sovereignty and respect of nations. For instance the flag of Brazil can not be registered as mark, because is a feeling of a country and [...]

Revisiting the protection to well-known and famous trademarks in Mexico

areyes@reyesfenig.com — Tue, 14 Oct 2008 03:00:00 +0100

The Mexican statute provides explicit protection for well-known trademarks since the Law of Patents and Trademarks of 1976. Before the 1976 statute, there is evidence of direct application of the stipulations stated in Paris Convention to fill the gaps in the Mexican statute, but none of the published decisions refer to well-known trademarks.

On June 16, 2005, the Federal Congress amended the Industrial Property Law to introduce important modifications to the provisions regarding the pr [...]

FALAFEL WAR

mshalem@gmail.com — Mon, 06 Oct 2008 03:00:00 +0100

The Lebanese government threatens to sue the Israeli government for distributing Falafel (fried chickpeas balls) abroad. The Lebanese claim that the dish called Falafel belongs to their ancient tradition and culture and that Israel sells this product under the same name claiming it to be an Israeli national food.

Although the name "Falafel" was never registered by the Lebanese as a trademark, the Lebanese rely on a precedential case in which Denmark, [...]

USPTO and JPO Agree on Enhanced Mutual Cooperation

zeev@patentim.com — Sat, 04 Oct 2008 03:00:00 +0100

USPTO PRESS RELEASE:

Washington, D.C. -On September 24, 2008, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) Jon Dudas met with Commissioner of the Japan Patent Office (JPO) Takashi Suzuki in Geneva, Switzerland. They discussed how the USPTO and the JPO can further promote the existing close relationship between the two offices. They agreed that the expeditious protection of intellectual property rights [...]

The USPTO Announces A New Patent Prosecution Highway

michael.kondoudis@gmail.com — Tue, 30 Sep 2008 03:00:00 +0100

The USPTO and the European Patent Office (EPO) have agreed to launch a patent prosecution highway (PPH) pilot program similar to the PPH pilot programs between the USPTO and the patent offices of Japan, the United Kingdom, Canada, Korea, and Australia. An exception is that PCT international applications (including national stage applications filed under 35 U.S.C. 371) are excluded. This PPH pilot program will commence on September 29, 2008, and continue for a period of one year en [...]

HOW CAN I PROCEED IN AN IMTATION AND COPY OF TRADEMARK IN BRAZIL?

cesar@trademarks.com.br — Sun, 28 Sep 2008 03:00:00 +0100

HOW CAN I PROCEED IN AN IMITATITION AND COPY OF TRADEMARK IN BRAZIL?

First of all keep quiet, is a secret case that you should communicate only to your lawyer or agent of industrial property in Brazil. Then he counsels to do an extrajudicial notification to stop the imitation and copy in about 15 to 30 days, and write if not stop that there´s the forfeit to file a judicial lawsuit requesting indemnification plus abstention of mark use with the forfeit of fi [...]

Trademark searches in Mexico

areyes@reyesfenig.com — Thu, 25 Sep 2008 03:00:00 +0100

In a first-to-file country, such as Mexico, one way of foreseeing if a trademark is available for use and registration is conducting a trademark search with the databases of the Mexican Patent and Trademark Office (MPTO).

There are two main databases that may be consulted in a trademark search: the Industrial Property Gazette that the MPTO issues on monthly basis, and the online phonetic database of the MPTO.

Foreign entities that offer search services usually obtain the informati [...]

IMPORTANCE OF INTELLECTUAL PROPERTY PROTECTION – Trademarks

rselvam@selvamandselvam.in — Tue, 23 Sep 2008 03:00:00 +0100

INTELLECTUAL PROPERTY

Intellectual property refers to creations of the mind such as musical, literary, and artistic works; inventions; and symbols, names, images, designs, logos, words, signatures, devices, labels, numerals, acronyms and logos used in commerce, including copyrights, trademarks, patents, and related rights.

Intellectual property rights refer to the exclusive rights being held over the creations of mind by the creators for artistic and commercial purposes. The [...]

USPTO No Longer Requiring Duplicate Copies of Paper Filings That Require Fee Processing

michael.kondoudis@gmail.com — Mon, 22 Sep 2008 03:00:00 +0100

For those who are still filing by paper, the USPTO announced last week that it will finally be doing away with the requirement for duplicate copies of forms required for processing fees (e.g., an authorization to charge a deposit account). Before Image File Wrappers (IFWs), when paper filing was an Applicant's only option, duplicate copies of fee processing forms were required because the USPTO processed fees separately from the paper application file. Today, however, these fo [...]

USPTO Implementing Continuing Legal Education for Registered Practitioners

michael.kondoudis@gmail.com — Mon, 22 Sep 2008 03:00:00 +0100

The USPTO has developed a system to administer continuing legal education to practitioners. This system, entitled the "Continuing Education for Practitioners" or ("CEP") system, is intended to "increase efficiency, reduce pendency, and improve quality in the patent process." The USPTO states that the CEP system is "built on the recognition that a smoothly operating patent system requires well-qualified USPTO personnel working hand-in-hand with up-to-date pate [...]