USPTO 2019 Update for the National Docketing Association Denver, - - PowerPoint PPT Presentation

USPTO 2019 Update for the National Docketing Association

Denver, Colorado September 24, 2019

Patents

Patent Prosecution Highway (PPH)

What is PPH?

• A system of work sharing that improves examination efficiency by

reducing duplication of effort among patent offices

• Enables an applicant who has received a determination of

allowable claims in an application from one office (national stage

• r PCT) to obtain fast track processing of corresponding claims

in application pending in other offices

• Originally proposed by the Japanese Patent Office (JPO)

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How Does PPH work?

• Applicant receives a positive examination result from a

PPH participating office

– A national/regional office action indicating allowable claims – Patent Cooperation Treaty (PCT) written opinion or PCT international preliminary report on patentability

• Applicant files a PPH request in a corresponding

application in another PPH participating office

• Once the PPH request is granted, the examination of the

application in the second office is expedited

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PPH Full-range of Benefits

Office Applica nt

Higher grant rates  Reduced overall pendency  Higher initial allowance rate  Reduced workload and duplicated effort  Cost savings   Rapid prosecution   Improved search/examination quality   Single set of principles  Filing in multiple offices  Rapid portfolio building  Fast-tracked and streamlined examination  Reduced time to receive office action and patents 

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Applications excluded from PPH

• Provisional applications
• Plan applications
• Design applications
• Reissue applications
• Reexamination proceedings, and
• Applications subject to a secrecy order

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Types of PPH agreements

• Global PPH
• IP5 PPH
• Bilateral agreements

Agreement offices with the USPTO (as of 03/31/2019)

• Worldwide = 36 Offices (48 Offices worldwide)
• Global/IP5 = 27 Offices
• Bilateral Agreements = 9 Offices

At the end of 2017, a total of 3,168,900 applications worldwide. The applications from 26 GPPH/IP5 Offices account for 2,912,903 of those applications or 91.9%

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PPH participants with the USPTO

Global PPH Principles

• 1. AUSTRALIA (IPAU)1
• 6. ESTONIA (EPA)3
• 11. ISRAEL (ILPO)1
• 16. NORWAY (NIPO)1
• 21. SINGAPORE (IPOS) 2
• 2. AUSTRIA (APO)2
• 7. FINLAND (NBPR)1
• 12. JAPAN (JPO)1
• 17. PERU (INDECOPI)7
• 22. SPAIN (IPAU)1
• 3. CANADA (CIPO)1
• 8. GERMANY (DPMA)3
• 13. KOREA (KIPO)1
• 18. POLAND (PPO)4
• 23. SWEDEM (PRV)1
• 4. COLOMBIA (SIC)5
• 9. HUNGARY (HIPO)1
• 14. New Zealand

(IPONZ)5

• 19. PORTUGAL (INPI)1
• 24. UNITED KINGDOM

(UKIPO)1

• 5. DENMARK (DKPTO)1
• 10. ICELAND (IPO)1
• 15. NORDIC (NPI)1
• 20. RUSSIA (ROSPATENT)1
• 25. VISEGRADE (VPI)6

1. Effective January 6, 2014 2. Effective November 1, 2014 3. Effective July 6, 2015 4. Effective January 6, 2017 5. Effective July 7, 2017 6. Effective January 8, 2018 7. Effective January 6, 2019

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lP5 PPH participants

Began January 6, 2014 (will expire on January 5, 2020)

• European Patent Office (EPO)
• Japan Patent Office (JPO)
• Korean Intellectual Property Office (KIPO)
• United States Patent and Trademark Office (USPTO)
• State Intellectual Property Office of the People’s

Republic of China (SIPO)

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PPH participants with the USPTO

Bilateral Agreements

• 1. ARGENTINA* - March 3, 2017
• 6. ROMANIA (OSIM)* - April 15, 2015
• 2. CZECH REPUBLIC (IPOCZ) – October 1, 2012
• 7. TAIWAN (TIPO) – September 1, 2011
• 3. MEXICO (IMPI)* - July 1, 2015
• 8. BRAZIL** - January 11, 2016
• 4. NICARAGUA (NRIP) – September 5, 2013
• 9. Chile* - November 1, 2018
• 5. PHILIPPINES (IPOPH) – January 29, 2013

*Bilateral agreement under global principles.

** Bilateral agreement with the incoming application to the USPTO following global principles.

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Patent resources

• Inventors Assistance Center (IAC)

– Monday-Friday 8:30 am-8 pm ET – 1-800-786-9199

• Electronic Business Center (EBC)

– Monday-Friday 6 am-midnight ET – 1-866-217-9197 – ebc@uspto.gov

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Trademarks

Proof of use and specimen best practices

When is a mark used in commerce?

• Goods

– The mark is placed on the goods and the goods are sold or transported in commerce

• Services

– The mark is displayed in the sale or advertising of the services and the services are rendered in commerce

• Use must be in the ordinary course of trade, not

merely to reserve a right in the mark

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What is “proof of use”?

• For goods, evidence showing the mark as actually

used in commerce with existing goods, such as:

– Photographs that show the mark on a tag or label affixed to the goods – Web page printouts or screen shots that show the mark being used in connection with the goods at their point of sale in a manner that directly associates the mark with the goods – Photographs of the mark on packaging where the goods are visible through the packaging

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What is “proof of use”?

• For services, evidence showing the mark is actually used

in commerce with existing services, such as:

– Copies of advertising, such as brochures or flyers, where the mark is used in a manner that directly associates the mark with the services – Photographs of the mark on retail store or restaurant signage – Photographs of the mark on service vehicles – Screen shots of website printouts with the URL and date of printing where the mark is used in the actual sale or advertising

• f the services

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Tips for completing an audit

• Clearly label or describe in the declaration or response

to office action the nature of the goods/services in specimens and/or proof of use evidence

– Consider submitting tables, charts, or lists of exhibits that clearly describe the proof of use

• If we cannot determine what kind of goods are shown

in the images submitted, proof of use may not be able to be determined and an additional office action may issue

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Tips for completing an audit

• “Stale” specimens/proof of use evidence

submitted in a prior filing should not be resubmitted

• Avoid a second office action by thoroughly

reviewing all goods and services in a registration after issuance of a first action audit letter and deleting all goods and services for which proof of use cannot be provided

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Prepare now for a possible audit

• Before filing, confirm that specimens and proof of

use are legitimate

– Page two of our new Exam Guide 03-19 Examination of Specimens for Use in Commerce provides tips on identifying digitally created/altered and mockup specimens

• Ensure that every good and service for which

current use cannot be confirmed is deleted in the initial Section 8/71 declaration

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Upcoming revision to specimen rule

• We plan to amend the trademark rules concerning

specimens to set criteria for electronic submission, including:

– Requiring that webpages show the URL and access or print date – Requiring that a specimen for goods shows use of the mark placed on the goods, on containers or packaging for the goods, or on labels or tags affixed to the goods

• Requirements for proof of use align with this criteria
• This is expected to become effective October 2019

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Trademark Assistance Center

Monday-Friday 8:30 am-5 pm ET

Phone: 1-800-786-9199 Email: TrademarkAssistanceCenter@uspto.gov Web: www.uspto.gov/TrademarkAssistance

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Thank you!

www.uspto.gov

Molly Kocialski

USPTO Rocky Mountain Regional Director

rockymountain@uspto.gov 303-297-4600