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Delhi High Court Orders Creation of Code of Conduct for Patent and Trademark Agents In a significant development aimed at enhancing the professionalism and accountability of patent and trademark agents, the Delhi High Court has directed the Controller General of Patents, Designs, and Trade Marks (CGPDTM) to draft and publish a Code of Conduct for Patent and Trademark Agents within two months. This move is intended to allow for stakeholder comments before the final version is announced by December 31, 2024. "A draft Code of Conduct to regulate Patent and Trademark Agents be prepared and put up by the CGPDTM on its website within two months for stakeholder consultation," noted Justice Prathiba M Singh. Following this consultation period, the Code of Conduct will be finalized and implemented by the end of the year. The court's directive came in response to an appeal by Saurav Chaudhary, who contested the rejection of his patent application for a "Blind-Stitch Sewing Machine and Method of Blind Stitching." Chaudhary argued that his application had been unfairly abandoned and requested its reinstatement. In a ruling favourable to Chaudhary, the Court overturned the decision to abandon his patent application and ordered the CGPDTM to update their website with the new information within a fortnight. The Patent Office was directed to proceed with the application by the law, permitting Chaudhary to file a response to the First Examination Report (FER) within four weeks of the website update. The Court found that Chaudhary's Patent Agent had exhibited deliberate carelessness and professional misconduct by failing to inform him about the FER reply. "This is a clear act of misconduct as the Petitioner, with utmost trust, had relied upon the Patent Agent to fulfill his duties and obligations towards the Petitioner," the Court remarked. So, the CGPDTM has been told to inquire into the Patent Agent's conduct and take appropriate action within four months. Additionally, the Court mandated the establishment of an ad hoc committee within two months to handle complaints against patent and trademark agents until the new Code of Conduct is in place. This landmark decision underscores the importance of accountability and transparency in the practices of patent and trademark agents, ensuring that the interests of inventors and applicants are safeguarded. #giip #giipindia #news #ipnews #patentagent #trademarkagent #dhc #delhihighcourt #CodeofConduct #intellectualproperty #controllergeneral #patentoffice #firstexaminationreport #FER

One of the small joys of working before the U.S. Patent and Trademark Office (USPTO) is this: the forms aren't required. You read that right: in almost all cases, you don't have to present information on a USPTO-supplied form. Even when a form is "required," the USPTO will let you provide the information in an alternate format, so long as the requirements of the relevant rule(s) are satisfied. This can be a really powerful tool -- if you're in a jam and unsure of which form(s) might apply to your situation, you can sit down and write a letter with all the applicable information and some thoughtful soul at the USPTO will help you. This policy is great for applicants, and although it may place a little more burden on the USPTO, the USPTO has long-since decided that the burden is worth it in order to help the public. I only wish the patent examiners knew that. I recently filed a request to expedite a design patent application. Doing that is a process, and it costs $$$ -- you've got to do a patentability search, tell the USPTO that you did a search, tell them where you searched, give them copies of what you found, and pay a fee. Shortly after I filed, I got an initial decision "dismissing" (i.e., denying) my request because I had failed to include a Form PTO/SB/27. Now, I've filed lots of these requests, and I've never had one denied on those grounds. Honestly, I hadn't even heard of Form 27. When I wrote the request, I re-read 37 C.F.R. § 1.155 and wrote a letter that had each of the things that rule called for in order. Problem: the dismissal was totally improper. There's no reference to any form being required in the rule, and when I turned to the Manual of Patent Examining Procedure (MPEP), which is the USPTO's published guidance on patent law and rules, I found in §1504.30 that the form was "strongly encouraged." However, "strongly encouraged" does not mean mandatory! In fact, the MPEP went on to explain what to do if you didn't want to use the form, but even that guidance wasn't mandatory. "Applicants should..." it said. "Should" and "must" are two entirely different things! I got on the phone with the supervisory patent examiner who decided my request, and we had a really long chat. He said that he'd reviewed 27,000 of these requests, and I was the first one to bring to his attention the fact that the form was not required. To his credit, he was one of the nicest people I've talked to in quite a while. We ended up having something of a professional therapy session on the law, the rules, and stupid stuff that happens on both sides. I told him that he could have his form, but that I'd have to do a write-up explaining that his action was improper. Although I felt good about the result, my client is going to have to pay a little more because the USPTO didn't understand its own rule.

HC: DIRECTS FORMATION OF CODE OF CONDUCT FOR REGULATING PATENT AND TRADEMARK AGENTS Delhi HC, in a writ petition filed by an individual (Petitioner) challenging the abandonment of its patent application titled as “Blind-Stitch Sewing Machine and Method of Blind Stitching” due to negligence by a Patent agent, sets aside the abandonment order, and issues certain directions to the Office of the Controller General of Patents, Designs & Trademarks (CGPDTM) on the creation of a Code of Conduct for regulating Patent and Trademark Agents; The Petitioner’s case was that the law firm which filed its patent application did not show diligence in communicating the issuance of the First Examination Report (FER) to the Petitioner and despite various follow ups by the Petitioner to its Patent Agent, received no reply, subsequently, the Petitioner discovered the abandonment of its application due to non-filing of the FER; Court notes that there being nothing on record to show the Petitioner’s Patent Agent having informed it of issuance of the FER, leads to an adverse inference against the Patent Agent and accordingly remarks that “…the Patent Agent cannot escape responsibility by simply stating that he had discussed it in a telephonic conversation or has informed the Petitioner over a telephonic call…Patent Agents are now the only persons who can prosecute patents before the patent office and have enormous responsibility on their shoulders to ensure that valuable innovations are properly protected as per the procedures prescribed in law.”; Relying on the settled principle that parties should not suffer for their legal professionals’ faults, Court allows Petitioner’s revival application and sets aside the Patent Office’s abandonment order, further noting similar instances of Patent Agents’ lack of diligence leading to abandonment, Court quips “Considering the expanse of the duties and functions of Patent Agents, any carelessness, professional negligence or misconduct, unless accidental or inadvertent, deserves to be dealt with in a stringent manner.”, thus, opines that a framework, including a Disciplinary Committee and a definition of “misconduct” for regulating Patent Agents’ conduct is required:HC DEL The judgement was delivered by Justice Prathiba M. Singh.

this is very bad - especially for university clients. Many groundbreaking inventions already have lost a lot of patent term due to prolonged prosecution - terminal disclaimers not only further decrease patent term BUT you may never get a patent IF you are required to terminally disclaim to a patent having a different applicant (i.e., first patent in name of University 1; second patent now includes University 2 either due to collaboration OR movement of one inventor to different university). The proposed rules KILLS PATENTS THAT ARE NOT EVEN BEING LITIGATED EVEN IF DISTINCT SUBJECT MATTER! Proposed changes to terminal disclaimer practice to promote innovation and competition May 9, 2024 The United States Patent and Trademark Office (USPTO) has issued a notice of proposed rulemaking (NPRM) to add a new requirement for terminal disclaimers filed to obviate (overcome) nonstatutory double patenting.  Under U.S. law, an inventor, patent owner or joint researchers may obtain more than one patent with claims that vary in only minor (patentably indistinct) ways from each other. The USPTO will reject such claims under “obviousness-type double patenting” (also known as “nonstatutory double patenting”) and will allow claims to issue only as long as the practice of obtaining similar claims across patents isn’t used to extend the patent exclusivity term or allow multiple parties to harass an alleged infringer. Both conditions aim to strike a balance between incentivizing innovation in the first instance while providing more certainty to competitors and the public.  The proposed rule responds to public feedback and proposes to add a third condition that would further promote innovation and competition by reducing the cost of separately challenging each patent in a group of multiple patents directed to indistinct variations of a single invention. Under the proposed rule, to overcome double patenting the patentee would need to agree that the patent with the terminal disclaimer will be enforceable only if the patent is not tied and has never been tied through one or more terminal disclaimers to a patent in which any claim has been finally held unpatentable or invalid over prior art. In addition to reducing costs, the proposed rule is expected to streamline and expedite patent disputes, narrow validity issues, and provide greater certainty to competitors and to the public. The proposed rule is prospective in nature and would apply to terminal disclaimers filed on or after the effective date of any final rule. The full text of the notice is available at the Federal Register and on the USPTO’s Patent Related Notices webpage. You must submit comments on the NPRM by July 9, through the Federal eRulemaking Portal, to ensure consideration.

🚀 A Fundamental Change to Design Patent Law After 40 Years 🚀 On May 21, 2024, the Federal Circuit made a landmark decision by overruling the Rosen-Durling test for design patents, replacing it with the more flexible four-factor Graham test. This change came after LKQ's challenge to GM's design patent, asserting it was invalid as obvious under 35 U.S.C. § 103. The en banc court unanimously found Rosen-Durling too rigid, aligning design patent invalidity analysis with the Graham factors used for utility patents. This shift is expected to result in more design patent rejections at the USPTO and could lead to longer trials with a higher success rate for defendants. https://lnkd.in/g_6AccQT #IntellectualProperty #PatentLaw #DesignPatents 

🚀 As a registered patent attorney dedicated to helping inventors and companies protect their inventions, I'm happy to share insights into the financial aspects of the patent registration process: https://lnkd.in/g2kSngXi When you embark on securing a patent, you'll generally encounter several types of costs: 1️⃣ USPTO Fees: These are mandatory fees paid to the United States Patent and Trademark Office and cover filing, processing, and maintaining your patent. 2️⃣ Legal Fees: These are fees you pay for the expertise of a patent attorney to guide you through the patent process, ensuring your application is thorough and capable of securing the protection your invention needs. 3️⃣ Maintenance Fees: Necessary to keep your patent active, these fees are paid after your patent is granted and throughout its lifetime to maintain its enforceability. 4️⃣ Miscellaneous Costs: This category includes expenses for patent searches, professional drawings, and additional administrative filings. Understanding these costs is crucial for any inventor looking to start the patent process effectively - Innovent Law - Patents, Trademarks, and Copyrights #patentprocess #usptofees #patentattorneys #patents #womanpatentattorney

In our latest article, "Brazil’s New Appellate Stage Guidelines: Strategies for Efficient Patent Prosecution", Author Pedro Altoe writes: In an ongoing effort to reduce the backlog of patent applications, Brazil has introduced new appellate stage guidelines that significantly impact how applicants should respond to office actions and file appeals. These changes emphasize thorough and strategic responses to ensure all objections are properly addressed, paving the way for a more efficient patent granting process. The motives behind the appellate stage guidelines can be traced back to around 2018, when the Brazilian Patent and Trademark Office (BPTO) began publishing new rules aimed at streamlining and expediting the examination and reducing the pendency time of patent applications, for example, of so called “preliminary office actions”.

CAFC Clarifies Trademark Functionality: Material Benefits Not Explicitly Required in Claims The Court of Appeals for the Federal Circuit (CAFC) recently issued a significant decision regarding trademark functionality. In this case, the court clarified that patent claims need not explicitly disclose material benefits to trigger the trademark functionality doctrine. Key Takeaways: Functionality Doctrine: This doctrine prevents trademarks from monopolizing features that are essential to the use or purpose of the underlying product. CAFC's Ruling: The court held that a product feature can be considered functional, even if the patent claims do not explicitly state the material benefits of that feature. Focus on Objective Evidence: The court emphasized the importance of considering objective evidence, such as industry practice, prior art, and expert testimony, to determine whether a feature is truly functional. Implications: This decision may have significant implications for patent litigation, particularly in cases involving design patents and products with aesthetic features. It underscores the importance of thoroughly investigating and presenting evidence of functionality, regardless of whether the patent claims explicitly mention material benefits. Disclaimer: This post is for informational purposes only and does not constitute legal advice. #Trademark #Functionality #PatentLitigation #CAFC #IntellectualProperty

Damages are owed if patent would be infringed in Germany and promotion leads to actual foreign sales and production: Federal Court of Justice This is a *landmark* damages ruling with two key implications: the mere offering of a product that *would* infringe German patent rights can give rise to damages based on foreign sales (including foreign manufacturing) that don't infringe any rights, not even a foreign counterpart of the patent-in-suit. And: even if there's no established licensing practice in a given industry, reasonable royalties remain available as one of three alternative damages theories a patentee can choose. The decision was made by a five-judge panel (10th Senate) of the Bundesgerichtshof (note that in Germany, judges cannot write a dissent, so you never know who voted in favor): Presiding Judge Dr. Bacher, Judge Fabian Hoffmann, Judge Dr. Marx, Judge Dr. Rombach (also sitting on the second panel of the Unified Patent Court's Court of Appeal) and Judge Dr. von Pueckler ("Pückler" in German). The plaintiff EnerDry A/S was represented by HEUKING lawyers Dr. Anton Horn, Birthe S., Dr. Sabine Dethof, and law student Kelly Sue Lankowski. For the proceedings in the Federal Court of Justice, they instructed Dr. Reiner Hall. They cooperated with the following patent attorneys: Budde Schou A/S's Jan Sørensen and Hendrik Sten Nielsen, and COHAUSZ & FLORACK's Andreas Thielmann and Jan Ackermann. https://lnkd.in/d2r_5iG8

For the patent attorney/agent seeking crowd sourced guidance on reddit about USPTO's first action final practice: Here's a link to DAVID GASS of Marshall, Gerstein & Borun LLP and my article, one of the most read guest articles in IP LAW360 in 2020. In a nutshell, in 2020, the USPTO quietly changed it's after final practice to permit first action final rejections following a CON or RCE filed with amended claims. Is this sort of policy change proper? Reddit post: "Final Rejection - Continuation Application Just received a final rejection for a continuation application that had claims with narrower scope than the awarded claims of the parent application. Pretty confused by this…and would appreciate some help in thinking it through before contacting the examiner. After a first office action against claims that were initially broader than the parent claims, we amended without prejudice to include additional features and narrow scope to be similar and narrower than already awarded parent claims. We drafted a few more independent claims as well, all with narrower scope than the awarded parent claims. A TD was filed. The examiner is now using a total of 4 prior patents to reject the continuation claims. The main rejection is based on a combination of 2 patents that were already considered by the same examiner in the parent application prior and not found to anticipate the awarded claims. The remaining 2 patents (never cited before) are then being used to reject the additional features recited in the dependent claims, newly drafted independent claims, etc. My first question — Is it proper for the examiner to reject a continuation claim that is narrower in scope than an awarded parent claim using prior art that was already considered in the parent application? Doesn’t this basically invalidate the parent claim? Second question — Is it proper to issue a final rejection in such an instance, especially given the use of 2 previously never cited references?" link to reddit post: https://lnkd.in/gQUTqZ-f https://lnkd.in/gr2tGtAM