September 23, 2011

Maury M. Tepper, IIITepper & Eyster, PLLC

© Tepper & Eyster 2011

How’s the PTO Doing Overall?Just Fine, Thanks!

Trademark Filings Continue to Increase (368,939 in 2010 – 4.8% increase, and 2011 is on track for a 6.1% increase)

Pendency Remains in Range: 2.7 Months in 3Q 2011 (Target is 2.5 to 3.5)

Disposal Pendency is at 12.1 Months (Target was 15)

Examiner Production is 6.5% above plan

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PTO Funding and User FeesHR1249 “The Leahy-Smith America Invents Act

of 2011”Establishes a Patent & Trademark Reserve Fund

for deposit of any amounts received by USPTO above appropriated budget, to be used only for USPTO

The “Fence” swings both ways now

Director is given fee-setting authorityDirector must first notify the Advisory CommitteeAdvisory Committee to publish the proposal

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What’s New in IT?Trademarks Next Generation (TMNG)

Original Objective and Timeline On Aug. 14, 2009, Director instructed OCIO to

separate TM infrastructure and to begin replacing it with a new IT infrastructure to accommodate end-to-end electronic processing (to be implemented by Feb., 2011)

Where we Are Today (Still Planning)

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What’s New in IT?SOME Accomplishments

Improvements in Assignments Documents can now be Viewed Online Email Notification on the way!

TDR 2.0

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What’s New in IT?Universal Laptops (ULPs)

Rollout is succeeding throughout the Office 3,435 deployed as of August 5

Just NOT in Trademarks! 5 deployed, and none working!

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What’s New in IT?

Improved Email Communication with Examining Attorneys

REMEMBER – It’s part of the record! USPTO is working to add up to 4 Courtesy

Email Addresses on Copy (to fix the “Drop Box Delay”)

What’s New in IT?

Trademarks “Dashboard”

Introduced May, 2011

Visual Depiction of Multiple Performance Measures

Up to Date Information

What’s New in IT?“Wiki” Version of TMEP

Section 1200 is available for comment (went live 1/12/11)

IdeaScale Program to be expanded to all of TMEP

Public Comments will be considered and incorporated into next release of TMEP (1Q 2012)

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New Quality MeasureTrademarks is piloting a new comprehensive

excellence measure that, among other things, encourages more phone actions and looks at every aspect of correspondence from the EA

The new measure will be for the “comprehensive excellence” of the office action.

Expansion of Work At HomeTelework Negotiations successfully concluded

Pilot Program to Eliminate the 90-mile limitationReduced Office RequirementLimits on travel the PTO can require of Examiners

What This Means for You – MORE Phone Calls

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Fraud after BoseThe CAFC rejected the “fraud “ test proposed

in Medinol and asserted a much tougher test for fraud.

Deception must be willful - a deliberate attempt to mislead.

“should have known” about the falsity with subjective intent = simple negligence standard

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Bose--continuedMere negligence is not fraud.

Intent to deceive is stricter standard than negligence or gross negligence—look to patent inequitable conduct.

Fraud means applicant or registrant knowingly makes a false, material representation with the intent to deceive the USPTO.

PTO Response to BoseApril, 2009 – PTO and George Washington

Univ. Law School Roundtable on “The Future of Use-Based Registration”

June, 2009 – PTO publishes Request for Comments to Improve Accuracy of IDs

July 12, 2011 – RFC on Change to Post-Registration Examination Rules (Comment Period Closes TODAY!)

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What’s Changing With Disclaimers? NOT MUCH!

In Response to changes in several other common law countries, PTO hosted a Roundtable on June 21, 2011Is Disclaimer Requirement Useful?Is it Too Expensive?

User Feedback Supports Continuing Disclaimer Practice

New PTO Goal

Promote “End-to-End” Electronic Processing

Currently 98% of Applications are filed electronically

Less than 70% of Applications stay “electronic”

PTO held a Roundtable on June 23, 2011 with practitioners who file electronically but do not authorize email communication to learn WHY?

How’s the TTAB Doing?Pendency is Climbing (Total Ave. Pendency

for Appeals is 48 weeks, Inter Partes is 270 weeks)

Precedential Decisions are Declining Cases Awaiting Decision have More Than

Doubled since 2009

What’s New at the TTAB?Revised TBMP (3d Edition) issued in May2 New Judges AppointedChief Judge NamedNOI issued April, 2011 on Board Participation

in Settlement DiscussionsRoundtable Upcoming (Nov. 1) on MetricsACR Proposals Published (there’s still room

for more!)

Questions?