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Noteworthy News from the U.S. Patent Trademark Office


2012 has been a busy year in the patent and trademark world and, in particular, at the United States Patent and Trademark Office (the "USPTO"). The following is a brief discussion of some of the highlights of 2012 (so far):

• On April 11, 2012, the United States Commerce Department, in conjunction with the USPTO, released a comprehensive report entitled "Intellectual Property and the U.S. Economy: Industries in Focus", which found that intellectual property (IP)-intensive industries supported at least 40 million jobs and contributed more than $5 trillion to (or 34.8 percent of) U.S. gross domestic product. The report identified the 75 industries that use patent, copyright, or trademark protections most extensively. Included in these "IP-intensive industries" are computer and peripheral equipment, audio and video equipment manufacturing, newspaper and book publishers, pharmaceutical and medicines, semiconductor and other electronic components, and medical equipment space, to name just a few. The report also noted that between 2010 and 2011, the economic recovery led to a 1.6 percent increase in direct employment in IP-intensive industries, faster than the 1.0 percent growth in non-IP-intensive industries. 

• The USPTO is proposing to amend its patent rules of practice in order to implement two provisions of the Leahy-Smith America Invents Act (AIA), which was signed into office by President Obama on September 8, 2011. Specifically:

 - On July 26, 2012, the USPTO published a proposed amendment to its patent rules of practice to implement a "first-inventor-to-file" provision of the AIA. The United States is currently the only country in the world operating under a "first to invent" patent system. In a "first to invent" system, when an inventor conceives an invention and diligently reduces such invention to practice (by filing a patent application, practicing the invention, building a prototype, etc.), the inventor’s date of invention will be the date of conception. Thus, so long as an inventor takes these steps, it will have priority in its invention, even if somebody files a patent application for the same invention before the inventor is able to file an application. 

In contrast, the "first inventor to file" provision in the AIA, which is set to take effect March 16, 2013, converts the United States patent system to one that awards priority in a patent and underlying invention to the first person/entity to file a patent application for a particular invention, regardless of when such invention was conceived and reduced to practice. 

- Citing greater accessibility for small inventors and acceleration of the United States economic growth, the USPTO is also proposing to amend its patent rules of practice to implement the "micro entity" provision of the AIA. Under this provision, which takes effect once the USPTO has exercised its fee setting authority granted under the AIA, applicants that qualify as a micro entity are eligible to pay reduced patent fees. The reduced fees would equal 75% of the fees set or adjusted for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. 

"Micro entity" status refers to an applicant that certifies that it (a) qualifies as a small entity (which generally includes independent inventors, small businesses with 500 or fewer employees, and certain non-profit organizations that have not assigned, conveyed or transferred, or are not obligated to assign, convey or transfer, any rights in the underlying invention), (b) has not been named an inventor on more than four (4) previously filed patent applications in the United States, (c) did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding three (3) times the median household income (2011 inflation-adjusted median household income of $51,314, according to USA Today), and (d) has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding three (3) times the median household income. 

• In May 2012, the USPTO announced that it will be revising certain trademark rules to require trademark owners to submit additional materials as a part of their registration and maintenance activities. In the future, the USPTO may require applicants and registrants to submit additional specimens, information, exhibits, affidavits, and declarations to substantiate claims made in their filings. These revisions are aimed at ensuring the public’s ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods and/or services identified in the registration.

As always, please contact any member of the Koley Jessen Intellectual Property Practice Group in the event that you would like to discuss any of the information above.

by Roberta L. Christensen and David A. Goeschel 

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