uspto 2019 update for the national docketing association

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 Patent Prosecution Highway (PPH) Patents What is PPH? A system of work sharing that improves examination efficiency by reducing duplication of

  1. USPTO 2019 Update for the National Docketing Association Denver, Colorado September 24, 2019

  2. Patent Prosecution Highway (PPH) Patents

  3. 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 or PCT) to obtain fast track processing of corresponding claims in application pending in other offices Originally proposed by the Japanese Patent Office (JPO) • 4

  4. 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 5

  5. Office Applica PPH Full-range of Benefits 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  6

  6. Applications excluded from PPH • Provisional applications • Plan applications • Design applications • Reissue applications • Reexamination proceedings, and • Applications subject to a secrecy order 7

  7. 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 % 8

  8. 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 8. GERMANY (DPMA) 3 13. KOREA (KIPO) 1 18. POLAND (PPO) 4 23. SWEDEM (PRV) 1 3. CANADA (CIPO) 1 4. COLOMBIA (SIC) 5 14. New Zealand 24. UNITED KINGDOM 9. HUNGARY (HIPO) 1 19. PORTUGAL (INPI) 1 (IPONZ) 5 (UKIPO) 1 5. DENMARK (DKPTO) 1 10. ICELAND (IPO) 1 15. NORDIC (NPI) 1 25. VISEGRADE (VPI) 6 20. RUSSIA (ROSPATENT) 1 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 9

  9. 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) 10

  10. 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. 11

  11. 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 – 12

  12. Proof of use and specimen best practices Trademarks

  13. 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 14

  14. 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 15

  15. 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 of the services 16

  16. 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 17

  17. 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 18

  18. 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 19

  19. 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 20

  20. Trademark Assistance Center Monday-Friday 8:30 am-5 pm ET Phone: 1-800-786-9199 Email: Web: 21

  21. Thank you! Molly Kocialski USPTO Rocky Mountain Regional Director 303-297-4600

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