In a win for brand owners, last week the U.S. Supreme Court ruled that potential trademark infringers are not automatically shielded from liability for infringement by simply claiming that their use of another party’s registered mark includes a comical message.
My colleagues Patricia Flanagan and Camilia Chediak recently published an article describing the details of the Court’s decision, as well as how the decision will affect trademark owners. The full article is available at this link.
Each year, IP Spotlight updates our readers who often ask: how long does it take for a patent or trademark registration to grant? In previous years, we’ve done that by reviewing the USPTO’s annual Performance and Accountability Report. In 2022 the USPTO discontinued that report. Instead, the USPTO now publishes up-to-date pendency information on its Data Visualization Center. The Data Visualization Center includes several dashboards with detailed information about allowance rates, average pendency, and other statistics about patent and trademark proceedings.
Patents: In 2022, the USPTO’s average time to first action remained steady at 16.9 months. The average total pendency — that is, the time from filing to either grant or abandonment — was 25.7 months, an increase of 2.4 months compared to 2021 data.
The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:
The average time from the day that an applicant filed an amendment to the date of the next USPTO action was 58 days.
The allowance rate for all utility, plant, and reissue applications that the USPTO disposed of in the past year was 59%.
The USPTO offers a “Track One” examination program in which the USPTO will advance a new patent application to the front of the queue if the applicant pays an additional fee. (The fee is $4000 for a large entity, or $2000 for a small entity.) Track One examination ensures a final disposition within 12 months. In practice, the process is typically faster. In 2022, the average time from Track One petition grant to first action was 1.8 monhts, and the average time from petition grant to final disposition was 4.5 months. While the Track One program ensures speed, it does not ensure allowance; the allowance rate for Track One applications was 57% in 2022.
The summary above uses USPTO patents dashboard information through November 30, 2022:
Trademarks: The average time from filing to first Office Action in a trademark application continued to increase in 2022. The typical wait time is now 8.3 months to first action. This represents a two-month increase compared to 2021 data and five-month increase compared to 2020 data. Average total pendency is 13.8 months for applications that are not opposed or suspended during prosecution.
For the first time in 3 years, total number trademark filings decreased in 2022. (The percent decrease was 16.5%.) This should help reduce trademark application wait times in the upcoming year.
The summary above uses USPTO trademarks dashboard information for Q4 2022.
Posted in Patents, Trademarks and Brands, Uncategorized
Tagged patents, trademarks, USPTO
The European Unitary Patent system is expected to (finally) take effect in late 2022 or early 2023. The system will include two elements: (1) a Unitary Patent Right (UPR), which is a single registration that will apply in multiple countries with no separate validation requirement; and (2) the Unified Patent Court (UPC), in which a patent holder may enforce a patent in multiple European countries in a single proceeding.
My partner Kari Barnes and I recently wrote an article describing what clients need to know to prepare for the European Unitary Patent system. For full details and our client alert on the topic, see the article that is available at this link.
The Russian government has issued a decree that has the potential to render Russian patents worthless for many applicants from outside of Russia.
The decree, issued March 5, 2022, states that for Russian patents owned by entities from the U.S., the European Union, and other “unfriendly countries”, the patent holder will be entitled to “0%” compensation in situations where the Russian government compels the patent holder to license the patent. While the Russian government has used compulsory licensing only on rare occastions to date, there is no assurance that this will be the case in the future.
In addition, a law passed in Russia on March 8, 2022 gives the Russian government authority to suspend all IP rights during the year 2022 for specifically listed goods. As of the date of this writing, it is not clear whether the Russian government has named any goods to such a list.
Finally, Russia’s Ministry of Economic Development is reported to be considering lifting restrictions on unauthorized use of non-Russian-owned copyrights and trademarks for certain goods, such as software.
The list of 48 “unfriendly countries” includes Albania, Andorra, Anguilla, Australia, British Virgin Islands, Canada, European Union member states, Gibraltar, Great Britain, Iceland, Japan, Liechtenstein, Micronesia, Monaco, Montenegro, New Zealand, North Macedonia, Norway, San Marino, Singapore, South Korea, Switzerland, Taiwan, Ukraine, and the United States.
[NOTE: This post has been updated to correct the description of Russian decree No. 299.]
As part of its plan to modernize the U.S. intellectual property registration system, the U.S. Patent and Trademark Office (USPTO) plans to stop issuing patent and trademark certificates in hard copy format. In a recent blog post, USPTO Director Drew Hirshfeld announced that the USPTO will soon publish a proposed rule to eliminate the USPTO’s regulatory obligation to mail a paper copy of the patent to the correspondence address of record.
The USPTO expects the new rule to speed up patent grants by reducing the time required for publication. Under the new rule, patents will issue electronically within one week after the patent number is assigned.
The USPTO’s trademark regulations do not require the USPTO to mail trademark registrations in hard copy form. Nonetheless, the USPTO plans to issue a notice and seek public comment on this procedural change before applying it to trademarks, too.
When the new rule takes effect, patent applicants who plan to file a continuation application before a patent grants will need to take extra care, as less time will be available between the issue fee payment date and the patent grant date. As a best practice, applicants should try to file the continuation before they pay the issue fee, as they will lose the opportunity to file a continuation when the patent grants.
The USPTO’s announcement indicated that hard copies of patents and trademarks, with an embossed gold seal and the Director’s signature, will still available to registrants who request them and pay an extra fee.
The USPTO recently released its FY 2021 Performance and Accountability Report, which contains detailed information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this Report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant? To answer that question:
Patents: In Fiscal Year (FY) 2021, for the first time in nine years, the USPTO’s average time to first action increased, to 16.9 months in FY 2021 (compared to 14.8 months in FY 2020). The average total pendency — that is, the time from filing to either grant or abandonment — remained steady at 23.3 months.
The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:
The total number of nonprovisional patent applications remained flat at approximately 651,000 in FY 2021. The number of provisional patent applications dropped by 9.2% to a five-year low of 158,334, which may signal that a decrease in nonprovisional patent application filings will occur next year.
374,000 patents issued in FY 2021, which is a decrease from the 2020 number bit similar to the 2019 number. The overall allowance rate for patent applications remained steady at 61.8%.
Trademarks: In FY 2021 the average time from filing to first Office Action in a trademark application more than doubled from the previous year, with the average wait time now 6.3 months to first action. Average total pendency was 11.2 months for applications that were not opposed or suspended during prosecution. which is an increase of nearly 3 months compared to FY 2020 numbers.
The longer wait time can be attributed to an unprecedented increase in new trademark application filings. Specifically, in FY 2021 the total number of trademark applications was 943,928, which is a nearly 28% increase compared to the FY 2020 statistic, and a 40% increase when compared to the number of filings made in FY 2019. The USPTO plans to address this by better leveraging artificial intelligence and automation in the examination process, which the USPTO expects will increase examination efficiency.
For the first time since 2020, the Federal Circuit issued an opinion finding claims of a computer-related invention to be eligible. Although designated as non-precedential, the case may signal a key claim feature that the court will look for in future Section 101 cases involving computer-related inventions.
In Mentone Solutions LLC v. Digi International Inc. (Nov. 15, 2021), the court reversed the District Court of Delaware’s finding that the claims of U.S. Patent 6,952,413 are invalid. The court focused on claim 5 of the patent, which is directed to a “multiple access communication method in a mobile station”. The claim requires the steps of:
The district court noted that claim 5 does not recite “when, how, or why one would . . . shift the USF or how a shifted USF would specifically improve the functioning of a prior art system.” On this basis, the district court found the claim to be ineligible.
On appeal, the Federal Circuit reversed, finding that “claim 5 is directed to a patent-eligible improvement to computer functionality, namely permitting additional multislot configurations for certain classes of mobile stations using extended bandwidth allocation.”
Notably, quoting its April 2020 Uniloc USA Inc. v. LG Electronics USA, Inc. decision, the Federal Circuit stated: “To the extent either the Appellees or the district court believe claim 5 must expressly mention the additional timeslots available or enabled by this achievement, they are mistaken. ‘Claims need not articulate the advantages of the claimed combinations to be eligible.’”
The Federal Circuit also contrasted the claims of this patent with those that it held ineligible in a previous case (Two-Way Media Ltd. v. Comcast Cable Communications), noting that in the past case “[w]e held the claims ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,” “monitoring,” and “accumulating records”) using ‘result-based functional language’ without the means for achieving any purported technological improvement. … Here, there is no functional claiming, nor are there abstract steps.’”
The court’s quote from its Uniloc decision may signal that that in future cases, the court (or at least the judges on this panel) will more closely assess whether claims merely cite a result or a technical means of achieving the result, and the Uniloc decision (which is precedential) may become prominent in future cases.
Tech companies and other employers note: H1-B cap registration opens March 9, 2021.
Full details are available at this blog post by my partner Catherine Wadhwani, published on Fox Rothschild’s Immigration View .
Posted in Uncategorized
The USPTO recently released its FY2020 Performance and Accountability Report, with contains helpful 
information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant? To answer that question:
Patents: In 2020 the USPTO’s eight-year trend of reducing patent application pendency continued to trend downward. The average time from filing to first action was 14.7 months. The average total pendency — that is, the time from filing to either grant or abandonment — was 23.3 months. Both of these numbers were slightly below last year’s averages. The numbers also exceeded the USPTO’s goals.
The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:
The total number of nonprovisional patent applications filed dropped by about 2%, to 653,311 in 2020. However, the number of provisional patent applications increased by about 3% to an all-time high of 174,464.
399,055 patents issued in FY 2020, also an all-time high of 665,231. The allowance rate increased to 61.7%.
Trademarks: In FY 2020 the average time from filing to first Office Action in a trademark application was 3 months. Average total pendency was 9.5 months for applications that were not opposed or suspended during prosecution.
Notably, despite the year’s pandemic, during which many brand holders consolidated or dropped brands, the total number of trademark applications filed increased by nearly 10% to 738,112. The number of active certificates of trademark registration increased by 5.7% to over 2.6 million.
Posted in Patents, Trademarks and Brands
On Nov 5, 2020 at 9 am EST / 3 pm CEST / 4 pm IDT, global innovation platform Axis Innovation will host a webinar titled Cyber Security in a Post-Corona World: Startup Opportunities & Challenges. This webinar will share actionable insights for companies (especially early stage companies) who seek to address global cybersecurity needs.
The speakers and topics include:
Developing Effective Cybertech Patent Strategies – with me, Jim Singer, Intellectual Property Department Chair of Fox Rothschild.
Cyber During Covid-19 – Going global by cooperating with leading international cyber leader Kaspersky – Vitaly Mzokov, Head of Kaspersky iHub.
Effective Fund Raising for your startup – with leading UK Venture Capitalist, Endre Sagi of Skylake Capital.
The webinar is free of charge, with more information and registration details available here.
Update: a recording of the event is available at this link.
IP Spotlight 