IP Guidepost Blog

United States Patent and Trademark Office Celebrates One-Millionth Electronically Filed Trademark Application

2007-01-14T18:11:00.000-08:00

The Department of Commerce’s United States Patent and Trademark Office (USPTO) marked an important milestone in its history on Wednesday — the one-millionth Web-based trademark application using the Trademark Electronic Application System (TEAS). This achievement was commemorated on Wednesday at a 5 p.m. (ET) ceremony at the USPTO headquarters in Alexandria, VA.
Donald Junck, an entrepreneur from Sioux Falls, SD, filed the one-millionth electronic trademark application in November 2006 to protect his trademark, Bait Craft, which is used for fishing tackle boxes. As many small business owners have done, he filed the application himself, demonstrating how easy and convenient TEAS is to use--regardless of the applicant's location or resources. Mr. Junck joined the most active corporate and law firm users of TEAS—Mattel, Inc., and the New York City-based law firm Fross Zelnick Lehrman & Zissu, P.C.—in being recognized in Wednesday’s ceremony.
“As Donald Junck’s story so perfectly illustrates, TEAS is designed to make the trademark application system easy and accessible, no matter how large or small the business or where it is located,” said Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “We are gratified that TEAS has reached this important milestone, and are proud that today 94% of all new trademark applications are filed electronically.”
“TEAS proved to be an important and effective tool in protecting my brand,” said Mr. Junck. “I would encourage other entrepreneurs to use this system as well, as it saved me both time and money.”
TEAS launched as a pilot program in November 1997. It allows anyone in the world with Internet access to file applications electronically 24 hours a day, 365 days a year. Developed with the goal of increasing participation in the trademark registration process, TEAS also has enhanced the quality of initial trademark applications and improved the speed and accuracy of their processing.
The USPTO has received numerous awards and recognitions for TEAS. These include: the Excellence.gov competition (2005 winner), the eGovernment Fellows Program (2004), the Government Technology Leadership Award (2000), the Innovations in American Government Award (2000 semi-finalist), and the Rochester Institute of Technology/USA Today Quality Cup Competition (2000 finalist).
For more information on TEAS, visit www.uspto.gov/teas/

Fiscal Year 2006: A Record-Breaking Year for the USPTO

2007-01-14T18:10:00.000-08:00

In Fiscal Year 2006, the Department of Commerce’s United States Patent and Trademark Office (USPTO) set new Agency records in goals related to quality, production, electronic filing, telework, electronic processing and hiring.
“The USPTO has spent the last four years concentrating on meeting or exceeding objective measures, as required by the Government Performance and Results Act of 1993 (“The Results Act”), continuing to make system-wide process improvements, and using related metrics and measures for gauging progress,” noted Under Secretary of Commerce for Intellectual Property Jon Dudas. “I am proud that fiscal year 2006 was a record-breaking year for the USPTO. “These records reflect the hard work and sound decisions of more than 8,000 USPTO employees. Over the past four years, we have focused internally -- shining a bright light on our organization, raising the bar on our metrics and measures, and making system-wide improvements. We are now seeing the results of those efforts.”
Quality and Production – High quality and timely examination of applications advances science and technology and creates the certainty innovators need in capital driven markets. Patents: Patent examiners completed 332,000 patent applications in 2006, the largest number ever, while achieving the lowest patent allowance error rate -- 3.5% -- in over 20 years. At 54%, the patent allowance rate was also the lowest on record. Patent allowance rate is the percentage of applications reviewed by examiners that are approved.Trademarks: The agency also processed a record number of trademark applications in 2006. USPTO trademark examining attorneys took final action on 378,111 trademark applications, a 36% increase over the previous year, and achieved a record low final action error rate, with mistakes found in only 3.6% of the trademark applications reviewed in FY 2006.
Hiring and Training – Hiring top-notch scientists, engineers, and lawyers -- and properly training them in patent and trademark law -- are the foundation of a strong intellectual property system. Patents: The USPTO received in excess of 440,000 patent applications in 2006, a record number. To help meet the demand, the agency hired a record 1,218 patent examiners, exceeding its goal by more than 200 people. To support this dramatic hiring increase, the USPTO replaced its one-on-one training model with a university approach for new hires. This allowed the agency to deliver comprehensive training to new examiners, while more experienced examiners and supervisors focused on quality examination. The agency will continue to hire over 1,000 patent examiners each year for the next five years. Even so, the volume of applications will continue to outpace the agency’s capacity to examine them. USPTO continues to look for ways, beyond hiring, to reduce the backlog, while maintaining examination quality.Trademarks: In 2006, the USPTO received 354,775 trademark applications, a 9.7% increase over the previous year. To keep pace and reduce backlogs, the agency hired a record 87 new trademark examining attorneys, bringing the total to 413 -- the most in agency history.
Electronic Filing and Processing – User-friendly patent and trademark processing systems are key to quality examination.Patents: The USPTO implemented the Electronic Filing System-Web (EFS-Web), a user-friendly, Internet-based patent application and document submission solution. This system dramatically increased the electronic filing of patent applications from 1.5 percent per month to 33 percent per month. Trademarks: Since 1998, the USPTO has seen a steady increase in the number of trademark applications filed electronically. In 2006, a record high 94 percent of all trademark applications were filed electronically, compared with 88 percent last year. Telework - Giving employees the opportunity to do their jobs at alternative work sites is family friendly, raises morale, helps the agency attract and retain high quality staff, and reduces commuter traffic.Patents: The first 500 patent examiners began working from home four days a week, using a hoteling program to book office space the one day a week they are in the office. The agency expects that an additional 500 examiners will be added to those already working from home each year for at least the next five years.Trademarks: The work-at-home program for trademark examining attorneys is nearly 10 years old and is well known throughout government. Two hundred and twenty trademark examining attorneys (85% of those eligible) participate in the program. It is considered a model program and over the years has received numerous awards, including in 2006 the “Telework Program with Maximum Impact on Government Award” from the Telework Exchange.
International Relations and Enforcement -- Protecting U.S. intellectual property around the globe is an important element of U.S. economic security. As part of the Bush Administration’s Strategy Targeting Organized Piracy (STOP!), the USPTO worked with other U.S. Government agencies to fight piracy and counterfeiting around the world and continued a communications campaign to educate small businesses about protecting their intellectual property. The USPTO conducted more than 200 intellectual property rights training and outreach activities in over 100 countries. In addition, USPTO placed intellectual property experts in Brazil, China, Egypt, India and Thailand to advocate improved IP protection for American businesses and to coordinate training to help stop piracy and counterfeiting abroad.
Charts detailing goals met, patent quality results, and the patent allowance rate can be found below. Full results of the agency’s progress can be found in USPTO’s FY 2006 Performance and Accountability Report at http://www.uspto.gov/web/offices/com/annual/2006/2006annualreport.pdf. [download PDF viewer]

(22DEC2006)

U.S. and India Sign Historic Memorandum of Understanding on Bilateral Cooperation on Intellectual Property

2007-01-14T18:08:00.002-08:00

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced that Jon Dudas, under secretary of commerce for intellectual property, and Ajay Dua, secretary of the Indian Ministry of Commerce and Industry (IMCI), recently signed an historic Memorandum of Understanding (MOU) on Bilateral Cooperation between the United States and India on intellectual property issues.
“This MOU is a first between the United States and India on intellectual property issues, and it will open the door for an unprecedented level of cooperation and sharing of best practices,” said Under Secretary Dudas.
“The MOU advances the objective established by President Bush and Prime Minister Singh in March for the United States and India to work together to promote innovation, creativity and technological advancement by providing a vibrant intellectual property rights regime,” added Dudas. Under the terms of the MOU, which builds upon the work of the U.S.-India Trade Policy Forum and other successful bilateral meetings between the United States and India, the USPTO and the IMCI’s Office of the Controller General will cooperate on capacity building, human resource development and public awareness of intellectual property. Among the activities designed to strengthen the work of both offices, the USPTO will help train Indian patent and trademark examiners, develop education material for the examiners and produce a manual on patent practice for use by Indian examiners and the public. This work will be carried forward with action plans that will establish specific areas for cooperation over a renewable two-year period of time.

Procedures for Submitting Amendments/Corrections to Trademark Applications After Publication

2006-11-23T10:23:00.000-08:00

To improve the tracking and disposition of amendments and requests for corrections to trademark applications submitted after publication, the Office is providing the following recommended procedures. Once an application has been “approved for publication” by the examining attorney, all amendments and requests for corrections are processed as amendments/corrections after publication. You can determine the status of your application and whether or not it has been “approved for publication” or “published for Opposition” by entering the serial number in the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ .
Applicants are strongly encouraged to review the information concerning their application in the TARR database and as published in the Official Gazette at
http://www.uspto.gov/web/trademarks/tmog/ . Upon review of the information concerning your application, any requests for an amendment/correction should be faxed to Post Publication Amendments/Corrections at 571-270-9007 to ensure that they become part of the record for the relevant application. Requests to correct minor typographical errors entered by the USPTO, inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a post-publication amendment can be e-mailed to TM Post Pub Query@uspto.gov.
All post-publications amendments/corrections should be submitted no later than 6 weeks after the publication date to insure that the amendment/correction can be considered prior to the issuance of the notice of allowance or registration certificate. The TM Photocomp mailbox is no longer available for submission of amendments or requests for corrections after publication. The procedure has been changed to ensure that the requested amendment is matched with the proper application, uploaded into the database, and reviewed in a timely manner.

USPTO to Eliminate the Disclosure Document Program

2006-11-23T10:21:00.000-08:00

Washington, D.C. – The Department of Commerce's United States Patent and Trademark Office (USPTO) will eliminate its Disclosure Document Program on February 1, 2007. The USPTO implemented the Disclosure Document Program in 1969 to provide inventors not ready to file for a patent with an alternative method of establishing the date of conception of an invention. In the United States, priority for a patent goes to the person who is first to invent rather than to the person who is first to file a patent application. The date of conception is important in establishing who the first inventor is in the event another inventor applies for a patent for the same invention.

Under the Disclosure Document Program, the USPTO accepts, dates and retains for two years documents from inventors describing their inventions as evidence of the date the inventions were conceived. Very few inventors have used the Disclosure Document Program as part of the patent process, and some inventors who do use it erroneously believe that they are filing an application for a patent. In the over 3 million patents issued since 1976, only 1,330 (or 0.04%) reference a disclosure document.

Since 1995, inventors not ready to file a full patent application have been able to file a provisional patent application with the USPTO. A provisional application provides more benefits and protections to inventors than the disclosure document. A provisional patent application establishes a filing date and allows the term “patent pending” to be applied to the invention. A provisional application must contain a full disclosure of the invention, including drawings where necessary, and a cover sheet identifying the inventor(s). To maintain the priority date, a formal patent application for the invention must be filed with the USPTO within one year. A disclosure document is not an application for a patent and does not provide any benefits beyond establishing a conception date.

For more information, see the Federal Register notice: http://www.uspto.gov/web/offices/com/sol/notices/71fr64636.pdf[PDF Viewer].

USPTO and the European Patent Office To Launch Electronic Priority Document Exchange

2006-11-23T10:14:00.000-08:00

The Department of Commerce’s United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) announced on Thursday that they are preparing to launch a new service that will allow patent application priority documents to be exchanged between the two offices electronically. Priority documents have to be filed when applicants wish to claim an earlier application filing date in one patent office based on a prior filing in another. Claiming priority is a valuable tool for businesses wanting to pursue patent rights globally. The new service, which will be free of charge to applicants, is the result of a 2005 agreement between the USPTO and the EPO and will pave the way for faster and more efficient processing in each office.

Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining the benefit of the first application’s filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. Paris Convention filings are a critical component in many applicants’ global business and patenting strategies and represent a substantial portion of worldwide patent activity. In order to obtain the benefit of an earlier filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense. The new service will allow the USPTO and the EPO to obtain, with appropriate permissions, electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant.

“Electronic priority document exchange is a big win for both applicants and our offices,” said Under Secretary of Commerce and USPTO Director Jon Dudas. “By leveraging our electronic file management systems, we can streamline our internal processing while providing our applicants with the substantial benefits of reduced expenses and paperwork.”

“The realization of the electronic priority document exchange is a major step towards a user-oriented, efficient patent system and a good example of the excellent cooperation between the EPO and the USPTO,” added EPO President Alain Pompidou. “It sets the standards for providing added value services in the future.”

Testing of the new service will be complete in early December, and full production is expected to begin in January 2007. Further details will be made available by each office prior to full production

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2006-11-13T21:16:00.003-08:00

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