News & Analysis as of

Filing Requirements United States Patent and Trademark Office

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Key Considerations When Using AI Tools to Draft and File Documents with the USPTO

The use of Artificial Intelligence (AI) tools in practice before the United States Patent and Trademark Office (USPTO) is changing how practitioners prepare and submit documents. The USPTO’s recent Guidance on Use of...more

Rothwell, Figg, Ernst & Manbeck, P.C.

USPTO Fees Are Rising Drastically in 2025: What to Do Now to Save Thousands of Dollars

Heading into 2025, patent applicants should prepare for significant fee increases at the United States Patent and Trademark Office (USPTO). These fee increases can significantly impact patent applicant behavior, leading...more

McDonnell Boehnen Hulbert & Berghoff LLP

The USPTO's Guidance on Use of AI-based Tools in Practice

Since President Biden issued his Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, the U.S. Patent and Trademark Office has been investigating the potential pitfalls of...more

Womble Bond Dickinson

Patent Practitioners Take Note: (Even) if You Use AI, Read Before You File

Womble Bond Dickinson on

On February 6, 2024, the USPTO weighed in with guidance for practitioners using—or considering using—AI in preparing submissions to the USPTO. In essence, Director Kathi Vidal has reminded practitioners that they must sign...more

AEON Law

Patent Poetry: USPTO Issues New Guide on Trademark Filing Scams

AEON Law on

On August 30, the United States Patent and Trademark Office (USPTO) issued new examination procedures for reviewing domicile addresses for trademark applicants. This step is intended to help combat widespread fraud (and...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Delays Transition to DOCX (Again)

On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application...more

Womble Bond Dickinson

UPDATE: USPTO Non-DOCX Surcharge Now Set to Roll-Out on April 3, 2023

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) will begin applying a surcharge to all applications filed in non-DOCX form on April 3, 2023. The USPTO originally had announced the surcharge would take effect on Jan. 1,...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Bradley Arant Boult Cummings LLP

Overcoming TM Maintenance Filing Hurdles Amid Pandemic

As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create new obstacles for registrants. To maintain a federal trademark registration, registrants must periodically file an...more

Bradley Arant Boult Cummings LLP

As Pandemic Drags On, Trademark Registrants May Face Maintenance Filing Hurdles

Despite the black humor that March 2020 has never actually ended, time does keep marching on and presenting new challenges. As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create...more

Gibney Anthony & Flaherty, LLP

Securing Your Trademark in the U.S: Best Practices for Foreign Brand Owners

When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your...more

Moritt Hock & Hamroff LLP

United States Patent & Trademark Office Announces Fee Increase For 2021

The United States Patent and Trademark Office (“USPTO”) has announced that, effective January 2, 2021, it is increasing certain fees it charges to file trademark applications, maintain trademark registrations, petition the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - October 2020

The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: When to Obtain Foreign Filing and Export Licenses

Two important, but sometimes overlooked issues in patent prosecution, particularly for companies with worldwide patent portfolios, are: 1) when a foreign filing license must be obtained; and 2) how to determine when an export...more

Perkins Coie

USPTO Announces COVID-19 Prioritized Examination Pilot Program for Small Entity and Micro Entity Applicants

Perkins Coie on

On May 8, the United States Patent and Trademark Office (USPTO) announced a new COVID-19 Prioritized Examination Pilot Program (CPEPP). This pilot program grants prioritized examination to applicants qualifying for small or...more

McDonnell Boehnen Hulbert & Berghoff LLP

Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 2 UPDATE

On March 11, World Health Organization Director-General Tedros Adhanom declared that the COVID-19 outbreak "can be characterized as a pandemic," cautioning that the WHO has "rung the alarm bell loud and clear." At the time...more

Sheppard Mullin Richter & Hampton LLP

USPTO Permitting Patent Applicants to Extend Certain Deadlines Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting patent applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing...more

Roetzel & Andress

U.S. Patent And Trademark Office Temporarily Extends Filing Deadlines

Roetzel & Andress on

Businesses – currently facing immediate crises arising from the COVID-19 pandemic – may be temporarily distracted from issues that, in more ordinary times, would be important to them, such as protecting and maintaining their...more

Bradley Arant Boult Cummings LLP

Patent and Trademark Offices Provide Some Relief from Coronavirus, But Try to Meet Deadlines If Possible

Patent and trademark offices around the world have not been insulated from the effects of the global coronavirus pandemic. Many offices have directed their employees to transition to telework, and several have extended...more

Lathrop GPM

New USPTO Requirements Mandate a Valid Direct Owner Email Address; Privacy Concerns Raised

Lathrop GPM on

The U.S. Patent and Trademark Office (USPTO) has released Trademark Examination Guide 1-20, which goes into effect on February 15. The Exam Guide implements the Office’s final rule, published July 31, 2019, concerning...more

Hogan Lovells

USPTO's guidelines for electronic filing: applicant/ registrant/party email addresses required

Hogan Lovells on

Of particular interest, to receive a filing date after February 15, 2020, all new applications must include an email address for each applicant, even if represented by an attorney.  In addition, all applicants, registrants,...more

Haug Partners LLP

USPTO Issues Guidelines Regarding February 15, 2020, Trademark Rule Changes

Haug Partners LLP on

Beginning on February 15, 2020, with very few exceptions, submissions before the US trademark office will be required to be filed digitally. Also included in the rule changes and among the most significant change,...more

King & Spalding

The USPTO Shutdown: Causes and Implications

King & Spalding on

How a USPTO Shutdown Will Affect PTAB Litigation and Prosecution Matters & Strategies - The government shutdown began December 22, 2018, but the United States Patent and Trademark Office (USPTO) and district and appeals...more

Coblentz Patch Duffy & Bass

USPTO's New Trademark Trial and Appeal Board Rules Take Effect Soon

Next month, the procedural rules governing trademark registration disputes are changing. They present new strategic considerations for brand owners protecting their trademark rights. The Trademark Trial and Appeal Board...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Rules That “Same-Day Continuations” Are Proper

The Federal Circuit yesterday issued a decision that will make many patent owners and IP practitioners breathe easier. In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation...more

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