The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010 (Pub. Law No. 111-146, 124 Stat. 66 (2010)). In addition to making small technical and conforming corrections in Sections 7, 15 and 21 of the Lanham Act, 15 U.S.C. §§ 1057, 1065 and 1071, the legislation makes more significant changes to Sections 8 and 71, 15 U.S.C. §§1058 and 1141k, regarding filing affidavits of continued use or excusable nonuse to maintain a registration. With respect to all post registration maintenance filings required under the Lanham Act, owners may correct deficiencies in such submissions outside of the statutory period for filing, upon payment of a deficiency surcharge. Such deficiencies now specifically include when the affidavit was not filed in the name of the owner of the registration. In addition, owners of U.S. registrations under the Madrid Protocol now have the benefit of six-month grace periods immediately following the statutory time periods. Previously, no grace period existed at the end of the six-year period following the date of registration in the U.S. and only a three-month grace period existed following the expiration of each successive 10-year period following registration. The newly enacted grace periods match those given to other trademark registrants..
For answers to frequently asked questions regarding declarations of continued use or excusable nonuse, please see the Trademark Processes section of the USPTO’s Web site, “Maintain/Renew a Registration.” The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010 (Pub. Law No. 111-146, 124 Stat. 66 (2010)). In addition to making small technical and conforming corrections in Sections 7, 15 and 21 of the Lanham Act, 15 U.S.C. §§ 1057, 1065 and 1071, the legislation makes more significant changes to Sections 8 and 71, 15 U.S.C. §§1058 and 1141k, regarding filing affidavits of continued use or excusable nonuse to maintain a registration. With respect to all post registration maintenance filings required under the Lanham Act, owners may correct deficiencies in such submissions outside of the statutory period for filing, upon payment of a deficiency surcharge. Such deficiencies now specifically include when the affidavit was not filed in the name of the owner of the registration. In addition, owners of U.S. registrations under the Madrid Protocol now have the benefit of six-month grace periods immediately following the statutory time periods. Previously, no grace period existed at the end of the six-year period following the date of registration in the U.S. and only a three-month grace period existed following the expiration of each successive 10-year period following registration. The newly enacted grace periods match those given to other trademark registrants. For answers to frequently asked questions regarding declarations of continued use or excusable nonuse, please see the Trademark Processes section of the USPTO’s Web site, “Maintain/Renew a Registration.” www.uspto.gov/trademarks/process/maintain/prfaq.jsp.
Wednesday, April 7, 2010
Changes to Trademark Law
Communication received from a representative of the USPTO:
Tuesday, April 6, 2010
Proposal to Extend Provisional Application Period
[Federal Register: April 2, 2010 (Volume 75, Number 63)][Notices]
[Page 16750-16752]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr02ap10-50]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2010-0029]
Request for Comments on Proposed Change To Missing Parts Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
To view the complete text of this comment request see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2010_register&docid=fr02ap10-50
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SUMMARY: The United States Patent and Trademark Office (USPTO), in response to a number of requests to reduce the costs due one year after filing a provisional application, is considering a change that would effectively provide a 12-month extension to the 12-month provisional application period (creating a net 24-month period). This change would be implemented through the missing parts practice in nonprovisional applications. Currently the missing parts practice permits an applicant on payment of a surcharge to pay the up-front filing fees and submit an executed oath or declaration after the filing of a nonprovisional application within a two-month time period set by the USPTO that is extendable on payment of extension of time fees for an additional five months. Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination and any excess claim fees due within that 12-month period. The proposal would benefit applicants by permitting additional time to determine if patent protection should be sought at a relatively low cost and by permitting applicants to focus efforts on commercialization during this period. The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which the applicants have decided not to pursue examination. Importantly, the extended missing parts period would not affect the 12-month priority period provided by the Paris Convention for the Protection of Industrial Property and, thus, any foreign filings would still need to be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign-filed application.
Comment Deadline Date: To be ensured of consideration, written comments must be received on or before June 1, 2010.
ADDRESSES: Written comments should be sent by electronic mail message over the Internet addressed to extended_missing_parts@uspto.gov.
Comments may also be submitted by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Eugenia A. Jones. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet.
The written comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, 22314, and will be available via the USPTO Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy, by telephone at (571) 272-7727, or by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Eugenia A. Jones.
[Page 16750-16752]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr02ap10-50]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2010-0029]
Request for Comments on Proposed Change To Missing Parts Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
To view the complete text of this comment request see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2010_register&docid=fr02ap10-50
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO), in response to a number of requests to reduce the costs due one year after filing a provisional application, is considering a change that would effectively provide a 12-month extension to the 12-month provisional application period (creating a net 24-month period). This change would be implemented through the missing parts practice in nonprovisional applications. Currently the missing parts practice permits an applicant on payment of a surcharge to pay the up-front filing fees and submit an executed oath or declaration after the filing of a nonprovisional application within a two-month time period set by the USPTO that is extendable on payment of extension of time fees for an additional five months. Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination and any excess claim fees due within that 12-month period. The proposal would benefit applicants by permitting additional time to determine if patent protection should be sought at a relatively low cost and by permitting applicants to focus efforts on commercialization during this period. The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which the applicants have decided not to pursue examination. Importantly, the extended missing parts period would not affect the 12-month priority period provided by the Paris Convention for the Protection of Industrial Property and, thus, any foreign filings would still need to be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign-filed application.
Comment Deadline Date: To be ensured of consideration, written comments must be received on or before June 1, 2010.
ADDRESSES: Written comments should be sent by electronic mail message over the Internet addressed to extended_missing_parts@uspto.gov.
Comments may also be submitted by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Eugenia A. Jones. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet.
The written comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, 22314, and will be available via the USPTO Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy, by telephone at (571) 272-7727, or by mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Eugenia A. Jones.
Friday, April 2, 2010
Streamlined Procedure for Patent Appeal Brief Review
Federal Register: March 30, 2010 (Volume 75, Number 60)]
[Notices][Page 15689-15690]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr30mr10-50]
To view the complete text of this notice see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2010_register&docid=fr30mr10-50
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0026]
Streamlined Procedure for Appeal Brief Review
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is streamlining the procedure for the review of appeal briefs to increase the efficiency of the appeal process and reduce pendency of appeals. The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively, ``Chief Judge''), will have the sole responsibility for determining whether appeal briefs filed in patent applications comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The Patent Appeal Center and the examiner will no longer review appeal briefs for compliance with the applicable regulations. The USPTO expects to achieve a reduction in appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner, Patent Appeal Center, and the BPAI. We are expecting further reduction in pendency because the streamlined procedure will increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs.
DATES: Effective Date: The procedure set forth in this notice is effective on March 30, 2010.
Applicability Date: The procedure set forth in this notice is applicable to appeal briefs filed in patent applications on or after March 30, 2010.
FOR FURTHER INFORMATION CONTACT: Krista Zele, Case Management Administrator, Board of Patent Appeals and Interferences, by telephone sat (571) 272-9797 or by electronic mail at BPAI.Review@uspto.gov.
[Notices][Page 15689-15690]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr30mr10-50]
To view the complete text of this notice see:
http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2010_register&docid=fr30mr10-50
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0026]
Streamlined Procedure for Appeal Brief Review
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO) is streamlining the procedure for the review of appeal briefs to increase the efficiency of the appeal process and reduce pendency of appeals. The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively, ``Chief Judge''), will have the sole responsibility for determining whether appeal briefs filed in patent applications comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The Patent Appeal Center and the examiner will no longer review appeal briefs for compliance with the applicable regulations. The USPTO expects to achieve a reduction in appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner, Patent Appeal Center, and the BPAI. We are expecting further reduction in pendency because the streamlined procedure will increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs.
DATES: Effective Date: The procedure set forth in this notice is effective on March 30, 2010.
Applicability Date: The procedure set forth in this notice is applicable to appeal briefs filed in patent applications on or after March 30, 2010.
FOR FURTHER INFORMATION CONTACT: Krista Zele, Case Management Administrator, Board of Patent Appeals and Interferences, by telephone sat (571) 272-9797 or by electronic mail at BPAI.Review@uspto.gov.
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