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Discuss the MPEP

Recently, the Patent Office provided an online forum to discuss the Manual of Patent Examining Procedure (MPEP). The MPEP is the key reference manual issued by the Patent Office that provides examining guidelines, practices, and procedures. So far, most of the comments are thoughtful. Here is a sampling of comments relaing to disclosure of prior art:

Submission of videos

“As new forms of prior art proliferate, we have to develop some way to submit them to the PTO. For example – web video clips. It seems reasonable that EFS should be enhanced to accept this kind of submission for an IDS. Do people have ideas on this concept? What other types of media have people come across as prior art? This comment is intended as a discussion starter.”

“Dateless” prior art references

“What can an examiner do with a publication with no date?”

Web Site Printouts

“Please offer some examples on proper ways to [cite non-patent literature] printed from websites.”

To read or add your own comments about the MPEP, go to this web site.

Motorola Sued for Trademark Infringement Over Use of “Xoom” Tablet

On the eve of launching its new Xoom tablet computer, Motorola was hit with a trademark infringement lawsuit by Xoom Corporation, a San Francisco-based global money transfer company. Xoom is not a particularly large company and it appears that it will be hurt financially by use of the the Xoom mark by Motorola. For  example, as the complaint notes, when the term “Xoom” is put in the Google search engine, most of the search results come back for the Motorola tablet, not Xoom’s money transfer, as was the case before Motorola named their tablet the Xoom. That said, trademark infringement will be difficult to prove in this case. Is a tablet computer and a money transfer service both with the same name confusingly similar to the relevant buying public? That is the issue to be decided by the court.

Xoom v Motorola – Complaint

European Patent Office Reports Filings Up 11%

According to statistics released by the European Patent Office (EPO), patent filings in the EPO have markedly increased since 2009. Last year, the EPO received about 235,000 patent applicaions, up 11% from 2009, making it the the highest number in the EPO’s history. About 40% of the filings came from member states, with Germany leading with 14% of the applications filed.

Of the top 50 applicants, 21 were from Europe. In terms of applications filed, the top 10 companies were:

1.  Siemens (2,135)

2.  Philips (1,765)

3.  BASF (1,707)

4.  Samsung (1,691)

5.  Qualcomm (1,682)

6.  Panasonic (1,400)

7.  Robert Bosch (1,400)

8.  SONY (1,286)

9.  LG (1,263)

10.  Bayer (1,123)

Among non-European countries, the US (26%) and Japan (18%) led in number of filings. South Korea accounted for 5%. The fastest growth in applications came from South Korea (+21%) and China (+54%).

Miscelaneous IP Nuggets #4

A few items of interest to the IP community.

1. As everyone knows by now… the federal government (and the US Patent and Trademark Office) did not shut down. Everyone is breathing a sigh of relief. And the cherry blossom festival went on as planned.

 2. As reported in today’s Patently-O blog, appropriation for the Patent Office until the end of the fiscal year (September 30,2011) will be cut by $100 million. According to an internal memo from Director Kappos, overtime will not be allowed for examiners and a hiring freeze will be put in place. Moreover, the Detroit Patent Office satellite office is indefinitely postponed.

3. There is some interesting commentary (from the examiner point of view) over on the Just-n-Examiner blog about the Clearing the Oldest Patent Applications (COPA) program which has as its goal that all applications filed before June 7, 2009 be given a first action before end of the fiscal year. The main concern voiced is in regard to some of the applications being examined by examiners in unrelated art groups to reduce the backlog.

What about trade dress?

Apple iPhone

Samsung Galaxy

Samsung’s Galaxy smart phone sure looks a lot like the Apple iPhone. But can the way a product looks be legally protected?  The answer is that in many cases, it can. This week, Apple filed suit against Samsung for a variety of alleged intellectual property infringements.  While the media largely focused on the patent dispute, scant attention was paid to the fact that Apple also sued Samsung for trade dress infringement. In this post we look at the concept of trade dress.

Under the Lanham Act (the same legislation protecting trademarks), a product’s trade dress can be legally protected. Trade dress refers to the visual appearance of products and packaging. For example, the shape, color, or materials used for a product. Other examples include the design of a magazine cover or a greeting card.

Even the way in which a service is provided may be protectable under trade dress.  For example, in the Two Pesos (112 US 2753) case, the US Supreme Court ruled that the decor of a Mexican restaurant could be protected. In its trade dress registration, the restaurant described the decor as follows: “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.”

In its complaint, Apple claimes that Samsung infringed on the following elements of the Apple iPhone trade dress:

a rectangular product shape with all four corners uniformly rounded;

the front surface of the product dominated by a screen surface with black borders;

substantial black borders above and below the screen having roughly equal width and narrower black borders on either side of the screen having roughly equal width;

a metallic surround framing the perimeter of the top surface;

a display of a grid of colorful square icons with uniformly rounded corners; and

a bottom row of square icons (the “Springboard”) set off from the other icons and that do not change as the other pages of the user interface are viewed.

The lawsuit cited several of Apple’s trade dress registrations (U.S. Registration Nos. 3,470,983, 3,457,218, 3,475,327).

For entrepreneurs, the takeaway is to make sure that you consider trade dress protection for the various products and services you offer.

USPTO Prepares for Possible Government Shutdown

What does the National Cherry Blossom Festival and the U.S. Patent and Trademark Office have in common?

Answer: They both would be affected by the federal government shutting down.

However, both would be partly operational. As reported here, the Cherry Blossom Festival parade would go ahead as scheduled but would avoid federal property (not easy to do in Washington DC). Meanwhile, the Patent Office has issued the following press release, noting that it would be open as usual for six business days, then non-essential employees would be sent home. According to the press release, the Electronic Filing System (EFS) would be operation during a shut down.

In the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual for a period of six business days – through Monday, April 18, 2011 — because the USPTO has enough available reserves, not linked to the current fiscal year, to remain in operation until then. Should a shutdown occur and continue longer than the six-day period, we anticipate that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.  More information will be posted on this website as it becomes available. Thank you.

Google Bids $900 million for Nortel Patent Portfolio

In a press release published on Monday, Google has stated that it has put in a $900 million bid for Nortel’s patent portfolio in the company’s bankruptcy auction. This would be the first bid in the case. The interesting thing is that Google claims that it wishes to acquire Nortel’s patents for defensive purposes, so as to avoid litigation and be able to freely develop new products and services.  Google has  been openly critical of the quality of patents for some time.  In the press release, for instance, Google chastizes the Patent Office for issuing “low-quality software patents… which threaten innovation”.  We will assume that the Nortel patents Google wishes to acquire do not fall into this category.. though we are not quite sure about Google’s recently issued patent for the “Google Doodle” disscusssed here previously.

Patent Office to Launch “Fast Track” Examinations

As many inventors realize, the Patent Office takes its time when examining patent applications. In fact, it is downright SLOW. Usually it takes at least two years for the first office action to be mailed. Then another year or two until final disposition of the case.

However, starting on May 4th, the Patent Office will offer “fast track” examination.  You guessed it, for an additional fee. According to the press release, for  $4,000, the Patent Office will agree to process an application within 12 months. What this means is that the application will be either allowed, abandoned, or finally rejected within the 12 months. A finally rejected application can be appealed. The fast track program will be limited to 10,000 applications per year.

What has been the reaction? So far, from those who I’ve contacted, the main concern has been over the hefty fee. However, the Patent Office says it is working to get the fee reduced by 50% for small entities. This would make it a lot more attractive.