Posts Tagged ‘patently-o’

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 4 Comments

By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office.  Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on.  I could not figure it out.  I know that my digital certificate is up to date and I know that I had the right password.  What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome.  My paralegal that does most of the filing uses Internet Explorer.  That had to be the problem, right?  Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft!  So, I open up IE and try to log on.  Guess what?  Authentication error again.  Now the mild cursing begins (if you know me, you know that this is when spectators start giggling).  I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one.  You guessed it – that didn’t work either.  How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO.  After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone.  I explain the problem to her and her first reaction was the following: “Did you update Java?”  Well, not intentionally.  I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates.  That’s when it must have happened.  To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java.  Really?  The United States Patent Office?  The forefront of technology was not ready for the?

Here’s my single biggest gripe.  I receive an update from the PTO every couple of days via email.  It is some sort of breaking news, or some story about happenings within the PTO.  Would it have killed you to let me know about this problem that way?  How hard would it have been to send a quick email blast to every patent practioner out there about this issue?  I was humored when the technician told me that about 80% of the calls she received lately were for this very issue.  By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick.  I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it.  I haven’t even told you the good part yet.  Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.”  What the heck kind of government operation was this?  When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.”  Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue.  A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

 

 

My Thoughts On the Relation Between the I4I/Microsoft Supreme Court Decision and The Budget Decisions by Congress

Saturday, 11 June, 2011 12:26 Written by Mark Malek 2 Comments

By: Mark R. Malek

This past week, the United States Supreme Court issued its decision in the I4I/Microsoft case.  Scott Nyman provided a good summary of the case.  In short, the Supreme Court unanimously held that the clear and convincing standard to invalidate a patent stands.  The real issue in that case, however, is the $250Million check that Microsoft is now going to be forced to write.  I would say “OUCH,” but this is chump change to the software giant.

While I was chatting with Scott Nyman about the case, I noted that the Supreme Court pretty much just affirmed the power of the Patent Examiner. Nothing has really changed.  The Court has left the standard alone and has stuck it to Microsoft.  We then started chatting about whether or not a memo would be sent to Examiners regarding the case and, of course, started coming up with our own versions of such a memo.

The one that we thought is most likely is “Attention Examiners – The Supreme Court has affirmed that the patents you issue are very strong and difficult to invalidate.  Accordingly, please do a good job at allowing quality patents.  Also, please don’t forget that we are trying to decrease the backlog, and Congress has taken money that we generate away from us, so we need you to work harder, faster and for less money!”

Does anyone else find this offensive?  I thought so.  That is exactly what’s going on here.  The PTO management has done a pretty good job at setting up various programs in order to decrease the backlog while simultaneously increasing the quality of patents.  This is not an overnight process and I realize that there are many critics out there, but any patent practitioner would probably agree that things are better today than they were two years ago in the Patent Office, right?  We have more tools (check out some of them here, here, and here), we have new programs (check out some of them here and here), and Director Kappos seems to have a solid understanding of what the PTO needs to succeed.

Now if we can just get Congress out of the way, things can possibly move forward at a more rapid case.  Imagine my surprise this morning when I read the post on Patently-O indicating that the House Appropriations Committee Doesn’t Think the USPTO Should Keep Fees.  The post went on to note that “The House Appropriations Committee strongly opposes the USPTO to keep funds that it makes.  The committee argues allowing the USPTO to keep all their fees would make it financially independent of the budget process and therefore essentially free from congressional oversight.”

Where are the cameras?  Is this a joke?  The reality of the situation is that they are financially independent and are being punished for it.  Hey Director Kappos – I have an idea.  Why not run the PTO like every other inefficient Governmental Entity?  Just hire as many examiners as you want, spend as much as you want, spiral the PTO into debt.  That seems to be the norm.  After you do that, the PTO will look to somewhere else to skim off the top and subsidize you.

Yes, I’m kidding.  I just don’t get it.  Why should I be surprised.  This is the way the government has always run.  It is ok for you to spend more than you make (United States Post Office) because we will just go to those that make money and operate in the black, tax them, and give the money to you so that you can continue to operate in a deficit.  Sounds ugly when I simplify it, doesn’t it?

To the House Appropriations Committee I say “stick it!”  The last thing we need is more government oversight of a group that is doing great.  Bang up job you have been doing so far Congress.  It just kills you that some area of the government is efficient.  For consistency’s sake, you’re trying to screw that one up to.

James D. Smith Named New Chief Patent Judge

Wednesday, 04 May, 2011 08:36 Written by Mark Malek 0 Comments

By: Mark R. Malek

Director Kappos has announced that James D. Smith will take over as Chief Patent Judge of the Board of Patent Appeals and Interferences (BPAI).  Smith is expected to take the post as early as May 8.  Smith leaves his position as Chief IP Counsel for Baxter International to take the position.

This is a trend that I believe I like seeing.  First, Director Kappos (former Chief Patent Counsel at IBM) takes the helm at the PTO and now the Chief IP Counsel from Baxter takes the helm at the BPAI.  I think it is a good thing to fill these positions with patent professionals, instead of following the tradition of making these political appointments.  Although, I do not believe that the BPAI Judges have been political appointments per se, there is some hint of politics that is always involved in making these sorts of appointments.

As reported by Professor Crouch on Patently-O, Chief Judge Smith is stepping up to a very heavy burden.  The BPAI has been overloaded with patent appeals and Professor Crouch provides a very interesting graphic indicating the rise in patent appeals over the years.  For those that do not follow the inner workings of the PTO, the BPAI is, as it sounds, an administrative court that is positioned to hear cases for appeal and interference proceedings.  For example, the BPAI, hears the appeals of inventors whose patent applications have been rejected by the Examiner (after a final rejection).  The BPAI also hears cases relating to reexaminations, i.e., a third party has discovered some prior art that was not examined during the patent prosecution process and has asked the PTO to reopen examination of the patent after it has issued to examine the newly discovered prior art.  The BPAI also hears cases relating to interferences.  An interference is a proceeding within the PTO that is used to determine who the rightful inventor is with respect to a patent application.  This comes up mostly when two parties simultaneously invent the same thing.

Anyway, with all of the work that has landed at the BPAI, Chief Judge Smith is going to have his hands full decreasing the backlog.  Just imagine if the brilliant folks up in DC hadn’t skimmed money away from the PTO….again!  Here is an article by Aaron Thanlwitzer about how the PTO proposed improvements will have to wait because of the budget cuts.  Maybe we could have provided the BPAI with the resources to decrease the backlog at the BPAI or, and I know this is nuts, maybe we could have done something about the patent application backlog.

Way to go Congress – Last Week’s Stunt = Cut in USPTO Funding

Wednesday, 13 April, 2011 13:14 Written by Mark Malek 1 Comment

By: Mark R. Malek

As you may have read in my last post, I am just slightly ticked off at Congress for screwing around last week and just about shutting down the government.  The good news is that they figured out how to get over their petty differences and get our government back in operation.  The bad news is that it is, as usual, at the expense of innovation, the economy, and the American public (Ok – that’s a little extreme).

According to a recent post on Patently-O, the cuts include a $100 Million cut from the PTO.  So I guess that we were lied to when we were told that there would not be any fee diversion from the PTO.  Unbelievable!

It is actually entertaining to me that one of the first places that money is taken from (notice I say taken) is the USPTO.  This is the very lifeblood, in my egotistical and arrogant opinion, of the US Economy.  Here’s the way I see it – there is a bunch of money sitting on the sidelines waiting to be invested.  It is not as though Wall Street has really instilled confidence in the American public, so who the heck wants to put their money in the stock market?  Why not invest in new technologies?  I’ll tell you why – because the patent that would protect that new technology is held up in a lengthy patent examination process at the USPTO.  Director Kappos, however, had a great idea.  How about we let the USPTO keep the money that it collects?  In other words, the USPTO is a self sufficient organization.  It is not as though the tax payers are paying money to keep the USPTO afloat.  The answer of our Government is to punish an industry that has done well in the past?  What kind of example is this?  If you make money or are self sufficient, we will take money away from you to subsidize those who do not make money?  Just me talking, but I don’t get it!

The Chippendale Cuffs and Bowtie are not Inherently Distinctive???

Tuesday, 05 October, 2010 08:42 Written by Mark Malek 3 Comments

Gravatar Iconby Mark Malek

Imagine my surprise when I received my daily IP update from Patently-O and read an article noting that the Chippendale Cuffs and Bowtie were not worthy of incontestable trade dress status.  (Incidentally, Professor Dennis Crouch writes the Patently-O blog and I find it to be a very informative intellectual property blogs.  Another recommendation is IPWatchdog written by Gene Quinn.) 

Back to the matter at hand - a link to the opinion from the Federal Circuit can be found here.  This matter arose because Chippendales sought registration of the “Cuffs and Collar” costume as trade dress that is “inherently distinctive.”  In 2003, however, the Examining Attorney at the Trademark Office found that the “Cuffs and Collar” outfit was only entitled to registration because of the mark’s acquired distinctiveness, not because the mark was inherently distinctive.  The real issue, however, revolves around whether or not the mark could be considered incontestable.  A mark can be considered incontestable if it is continuously registered on the Principle Register at the Trademark Office for five years.  Finding that the mark had acquired distinctiveness, instead of being inherently distinctive, essentially adds five years to the clock for Chippendales (a mark can acquire distinctiveness by being registered for five years and, therefore, it would take another five years for the mark to become incontestable). 

As indicated by the Federal Circuit, an incontestable trademark is treated as conclusive evidence of the validity of the trademark, as well as its registration, ownership, and the exclusive right of the owner to use the mark in commerce.  This was very important for Chippendales as they were about to get involved in a trademark infringement action.  When getting into a trademark infringement suit, it is preferable for that the trademark in question have incontestable status.  Although this is, by no means, a requirement, it essentially eliminates one of the steps in litigation.  For example, if you are a trademark owner and you file a trademark infringement suit, you can be sure that one of the first things coming back your way will be a counterclaim requesting that the court invalidate your trademark for any number of reasons.  With incontestable status, however, most of the bullets will be taken out of that gun. 

I found this case to be a bit entertaining and thought that many of our readers – especially you females out there, would enjoy it.  One of the key points that I would like to make with this brief article, however, is that incontestable status is not automatically granted.  It is something that you must request the Trademark Office to issue.  If you are a trademark owner, and your trademark has been issued on the Principle Register for more than five years, please look into whether or not you have requested incontestable status for your trademark.  This can only enhance your protection, especially if you are put in the situation where you will have to litigate to enforce your trademark rights.

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