In Jan. 2012,  the United States Patent and Trademark Office (USPTO) published proposed multiple sets of rules aimed at implementing the America Invents Act (AIA), which was enacted on September 16, 2011.  The publication is the first in a series of Notices of Proposed Rulemaking in the Federal Register related to proposed rules implementing various provisions of the AIA.  The proposed new rules address five provisions of the new law.

Specifically, the newly-published proposed rules focus on the following AIA provisions:

•  Inventor’s oath and declaration – Revises and clarifies the rules of practice relating to the inventor’s oath or declaration, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors.  Namely, the new rules allow an application to be filed by a person to whom the inventor has assigned, or is under an obligation to assign, the invention or by a person who otherwise shows sufficient proprietary interest.  Moreover, the new rules authorize an individual who is under an obligation of assignment to include certain required statements in an executed assignment in lieu of filing these statements in a separate oath or declaration.  Furthermore, identification of each applicant’s citizenship would no longer be required by statute.  Lastly, the requirement of without deceptive intention has been deleted from all related sections.  As proposed, these rules would apply to any patent application that is filed on or after Sept. 16, 2012.

• Third party submission of prior art in a patent application – Allows third parties to submit printed publications of potential relevance to examination and requires a concise explanation of the asserted relevance of each document submitted, to pay the associated fees, and to include a statement by the submitting third party that the submission is being made in compliance with new 35 U.S.C. 122(e).  The new rule further requires that such a submission be made before the earlier of:

1. the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or
2. the later of:
   1. six months after date on which the application is first published under 35 U.S.C. 122, or
   2. the date of first rejection under 35 U.S.C. 132 of any claim in the application.

As proposed, these rules would apply, effective Sept. 16, 2012, to any pending patent application.

• Citation of prior art in a patent file – Expands the scope of information that any party may cite in a patent file, to include written statements made by a patent owner before a Federal court or the USPTO regarding the scope of any claim of the patent, but limits the use of such written statements to determining the meaning of a patent claim in ex parte reexamination proceedings that have already been ordered and in inter partes review and post grant review proceedings that have been instituted.  As proposed, this provision would become effective on Sept. 16, 2012.

• OED Statute of Limitations – Requires that disciplinary proceedings be commenced not later than the earlier of the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the USPTO, and specifies when the one-year statute of limitations commences depending on the type of complaint that initiated the disciplinary proceeding.  As proposed, this provision would become effective on Sept. 16, 2012.

• Supplemental Examination/Ex Parte Re-Exam – Sets forth how the supplemental examination process will work. Specifically, the rules note that only the patent owner can request supplemental examination and each supplemental examination request may only identify up to ten items to be considered, reconsidered or corrected. If a patent owner has more than ten items, the patent owner will need to submit multiple requests, which can be filed simultaneously. At the time of filing, the patent owner will need to pay $5,180 for the request and $16,120 for the ex parte re-examination fee. While both are required at the time of filing, the re-examination fee will be refunded if a re-examination is not ordered. Not only are the filing fees high, there are additional fees for documents over 20 pages in length and fees for petitions filed in connection with the proceeding. The rules define the  requirements that must be met to file the request – a cover sheet, identifying the patent to be examined, a list of the items to be considered, identifying any other prior or concurrent post patent USPTO proceeding involving the patent to be examined, identification of each issue raised by each item of information, a separate/detailed explanation of the issues, explanation of the relevancy of the identified information, a copy of each identified information, and a summary of any submitted document over 50 pages in length.  In addition, these set of rules provide that the ex parte re-examination fee will be increased from $2,520 to $17,750. As noted in Ice Miller’s original summary of the America Invents Act, it is not surprising to see high fees associated with the new supplemental examination process and fee increases for the ex parte re-examination procedures in view of the new responsibilities of the USPTO. 

Publication of these proposed rules officially opens a 60-day public comment period for each rule package.  The USPTO has encouraged the patent community to provide feedback on the proposals, as is the intent of the sixty-day comment period.  Once the comment period ends, the USPTO will draft final rules, which are targeted to be published by the end of July 2012.

In the coming weeks, the USPTO will publish additional AIA-related proposed rules in the Federal Register for public comment.  The soon-to-come proposed rule publications cover supplemental examination, post-grant review, inter partes review, transitional program for covered business methods, and derivation proceedings.  Stay tuned to The Ice Loop and the Ice Miller Web site for additional information on those proposed rules as they are published. 

Full text of the current proposed rules can be found at:

http://www.gpo.gov/fdsys/pkg/FR-2012-01-05/pdf/2011-33811.pdf

http://www.gpo.gov/fdsys/pkg/FR-2012-01-05/pdf/2011-33813.pdf

http://www.gpo.gov/fdsys/pkg/FR-2012-01-06/pdf/2011-33815.pdf

 http://www.uspto.gov/aia_implementation/77fr3666.pdf

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.

Although the intent of the .XXX top-level domain is for it to be used in the adult context, brands not in this space may wish to protect their image by proactively registering a .XXX domain containing their registered trademarks. The new top-level domain .XXX will become available to the adult community starting on November 8th, 2011 and then open to the general public on December 6, 2011.  The ICM Registry, sponsor of the .XXX top-level domain, is giving registered trademark owners a special window of time (open now until October 28, 2011) to reserve domains ending in .XXX which contain their registered trademark.  Such special registration will protect registered .XXX domains from falling into the hands of a third party.

An applicant wishing to protect its rights in this reserved window must submit a reservation request with ICM corresponding to its trademark before October 28, 2011.  Registration through GoDaddy costs approximately $200 and requires a trademark owner to apply for registration by filling out a form online.  Only registered trademarks having registration dates before September 1, 2011 and still in full force and effect qualify for this special domain registration.  Further, the trademark registration must be issued as a national registration in a respective country, not simply a pending national trademark application or a State trademark registration. For example, an applicant with a United States trademark registration issued before September 1, 2011 that is still in full force and effect may seek protection under this reserved window.

After December 6, 2011, any registered .XXX domain through this early registration process will resolve to a standard informational page reflecting the status of the domain as reserved.

If trademark owners do not register a .XXX domain in this special window of time, any available .XXX domain will be allocated to members of the adult community submitting a request.  Then, starting on December 6, 2011, registration opens to the general public and anyone, whether in the adult community or otherwise, may register these domains.  Although trademark owners may be able to obtain domains registered using their trademark after this special registration window, it may be a more involved path than taking advantage of this reservation process prior to October 28, 2011.

For more information about protecting your brand on the Internet, please contact info@theiceloop.com.

Despite its recent defeat in the “jail-breaking” ruling issued by the Library of Congress, Apple, Inc. continues to seek protection for its technological developments.  According to a July 28, 2010 article in Bloomberg Businessweek, Apple Inc. has filed a lawsuit against companies it alleges are selling unauthorized accessories for Apple electronic products like iPhones, iPods and iPads.  According to the article, Apple’s complaint alleges that many of the accessories are “of inferior quality and reliability, raising significant concerns over compatibility with and damage to Apple’s products.” 

Bloomberg Businessweek’s article explains that Apple maintains a program called “Made for iPod” which allows manufacturers to obtain licenses for Apple devises.  The Businessweek article cites Shaw Wu, an analyst with Kaufman Brothers LP, who has stated that Apple gets a 20-25 percent royalty on each sale of a licensed accessory. 

Apple filed the lawsuit, Apple Inc. v. eForCity Corp., in the U.S. District Court for the Northern District of California on July 22, 2010.  So far, Apple has identified six sellers in California and Washington, and could identify up to twenty additional companies it believes are selling unauthorized products.

For more information on how Ice Miller can help your company protect and take advantage of its intellectual property rights, contact theiceloop@icemiller.com.

Over the last couple weeks, YouTube has been blocking popular spoof videos of the bunker scene from one of its German films, Der Untergang (The Downfall), at the request of the copyright owner, Constantin Film. In the film (which is in German, with English subtitles), there is a scene in which the actor portraying Adolf Hitler angrily reacts to the news that Germany is about to lose World War II. Hundreds of spoof videos have been created over the last few years in which satirical subtitles are inserted in place of the actual subtitles, so that it appears that Hitler is reacting to a different, much more humorous topic – for example, “Hitler Reacts to Taylor Swift Being Upstaged by Kanye West at MTV’s Video Music Awards,” “Hitler Reacts to the Twilight Movie” and “Hitler Discusses the New Hannah Montana Album.” (For more background, see the articles written on the topic by MSNBC (Hitler Parodies Booted Off YouTube) and CNN (Hitler Parody Videos Latest Copyright Fight).  More…

The Canadian Intellectual Property Office (CIPO) recently announced a series of updates for visitors and users of its Web site:

1. The Trade-marks Opposition Board (TMOB) has a new “Decisions” page that provides hyperlinks to final decisions reached in section 45 proceedings along with a new schedule of upcoming hearings (available HERE).

2. A series of new Web pages for intellectual property professionals, including an Industrial Designs Professional page (available HERE), a Trade-marks Professional page (available HERE), and a Patents Professional page (available HERE).

3. As noted by the CIPO (link HERE, under March 30, 2010), its Web site “has added an improved bilingual search capability to help you to conduct searches in both English and French on the Basic Search pages of the Canadian Patents Database, the Canadian Trade-Marks Database and the Canadian Industrial Designs Database. This feature will help to ensure that your search query includes more terms; thereby you should have an increased results list.”

On April 1, 2010, a series of patent practice changes at the European Patent Office (EPO) took effect, including new search and examination rules, as well as new timelines for filing divisional applications. As noted in a recent summary announcement (available HERE), the EPO notes that the changes “relate to the filing of divisional applications, pre-search communication between examiner and applicant, obligatory response to the search opinion prior to entry into substantive examination, a requirement for applicants to identify and indicate the basis for amendments and a clearer restriction of examination only to the subject matter searched.” A summary entitled “Realigning the European patent grant procedure” (available HERE) is also provided by the EPO, as is a Web page with links to each rule change (available HERE) and a Web page entitled “New edition of the EPO Guidelines for Examination” (available HERE) with several embedded links. I personally have received a number of notices from my European agents advising me of these changes. If you manage an international portfolio with pending European applications and have not been advised by your respective agents, consider reaching out to them so that they can advise as to any deadlines or practice changes that may impact your pending portfolio.

The U.S. Patent and Trademark Office (USPTO) recently announced that it has initiated the Trademark Information Network (TMIN) to provide information to first-time trademark applicants. The TMIN (USPTO Web site link HERE), currently offers the first of a series of videos relating to trademarks (called “Newsflash: Before You File”), as well as a timeline of trademark processing activities, a transcript of the video, and a list of topics from the video itself. Future “Newsflash” videos will be available on other trademark preparation and prosecution topics, including “Searching,” “Applicant Information,” “Drawing Issues,” “Goods and Services Issues,” “Basis Information,” “Specimen Issues,” “After You File,” and “Post-Registration Issues.” The TMIN Web site also provides a series of useful trademark links, including “Trademark Basics,” “Search Marks,” and View Documents,” to name a few. The first video is available HERE (in .wmv format), with a transcript available HERE (in .doc format).

On Tuesday, April 6th, the USPTO announced that is has launched a new Ombudsman Program “designed to provide patent applicants with more assistance in handling application-processing problems if the normal channels have not been successful.” This announcement (link HERE) identifies this new one-year pilot program as being “intended to provide applicants with additional resources to ensure application-processing problems are handled in a more efficient way, thereby saving applicants and the Agency both time and resources and improving patent quality,” whereby “applicants, attorneys or agents who have application-processing concerns, and haven’t been able to get the assistance they need through normal channels in the Technology Center (TC), can contact the ombudsman representative for the TC through the USPTO Web site.” After contacting an ombudsman representative, the applicant (or his/her agent) will receive a call within one business day to discuss the specifics, whereby the representative will work with TC staff to address the applicant’s concerns “and try to get the application back on track.” Additional information is available at the announcement link above.

In a recent Law.com article (link HERE), Facebook, Inc. was identified again as being a potential active defendant in an infringement lawsuit initiated by Cross Atlantic Capital Partners (XACP), who claims to own the rights to a patent for an Internet-based “community for users with common interests to interact in” invented a decade ago. In 2007, XACP filed suit against Facebook regarding U.S. Patent No. 6,519,629 (entitled “System for creating a community of users with common interests to interact in,” available HERE), which lead to an inter partes reexamination of the patent. According to the Law.com article, “the [U.S. Patent and Trademark Office] examiners issued a decision that reaffirmed the validity of XACP’s patent. And in late March 2010, the examiners issued a right of appeal notice, effectively finalizing their decision and clearing the way for Facebook to challenge the decision before the Patent Office Board of Patent Appeals.” The patent at issue was filed in February 2000, issued three years later on February 11, 2003, and contains 32 system and method claims. As invalidity defenses are now off the table (according to the article referenced above), counsel for XACP is considering a request to lift the stay and allow the case to proceed to trial, presumably should no settlement be reached between the parties before then. The docket for the 2007 case, including over 175 docket entries, is available HERE via Justia.com.

By James Pinyerd, Ice Miller LLP

According to a CNET news report on Monday, April 5, 2010, EMG Technology (EMG) added the iPad to its list of infringing products, joining the iPhone (link here).  EMG is asserting that the iPhone and iPad infringe its U.S. Patent No. 7,441,196, which relates to “an apparatus and method of manipulating a region on a wireless device screen for viewing, zooming and scrolling internet content.”  As noted in the CNET news report, the iPhone and iPad are also under fire from Elan Microelectronics.  Elan recently asserted patent infringement by the iPhone and iPad based upon its U.S. Patent No. 5,825,352, which relates to a “contact sensing method for emulating mouse buttons and mouse operations on a touch sensor pad.”  Further information on the Elan case can be found here.

USA Today reports over 300,000 iPads were sold on their first day on the market (link here) and reports show that the iPhone continues to be a popular seller (for example, link here). It will be interesting to see whether Apple Inc. decides to take a license and settle the lawsuits or fight to protect its valuable iPhone and iPad products.