News & Analysis as of

United States Patent and Trademark Office New Rules

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Sunstein LLP

USPTO Proposes New Rules on Terminal Disclaimers: A Potential Setback for Patentees

Sunstein LLP on

The United States Patent and Trademark Office (USPTO) recently proposed a significant change to the rules governing terminal disclaimers. The USPTO says that the rule change would “promote innovation and competition,” but is...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Proposed Rule Change to Terminal Disclaimer Practice

On May 10, 2024, the U.S. Patent and Trademark Office announced a proposed rule change to terminal disclaimer practice.Unfortunately, the proposed change appears to further weaken issued patents in which terminal disclaimers...more

Womble Bond Dickinson

USPTO: E-Signatures Soon May be Used for Patent Correspondence

Womble Bond Dickinson on

Starting March 22, 2024, patent correspondence may be electronically signing using DocuSign®, Acrobat® Sign, and similar third-party e-signature software. The new rule from the U.S. Patent and Trademark Office is aimed at...more

Quarles & Brady LLP

New USPTO Design Patent “Bar” to be Created in 2024

Quarles & Brady LLP on

The United States Patent and Trademark Office (“USPTO”) is amending the rules of practice in patent cases by creating a separate space for individuals with educational backgrounds in design-related disciplines to qualify to...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

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

MarkIt to Market® - August 2023

Thank you for reading the August 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we conclude our series that explores ways to lose trademark rights with an examination of naked licensing, discuss a...more

Buckingham, Doolittle & Burroughs, LLC

If a Good is not a Good, then a Trademark is not a Trademark

The Trademark Trial and Appeal Board (TTAB) adopted a new rule for evaluating whether non-syndicated news columns are “goods in trade” under the Lanham Act in In re The New York Times Company, a precedential opinion issued on...more

Bodman

Patent & Trademark Office to Begin Issuing Electronic Patent Grants

Bodman on

The U.S. Patent & Trademark Office (USPTO) announced that it will no longer issue patents in a printed “ribbon copy” form as of April 18, 2023. Instead, patents will now only be issued electronically in a digital form. This...more

Ladas & Parry LLP

USPTO Goes Green With Electronic Patent Grants

Ladas & Parry LLP on

Why is the USPTO moving to electronic Grant (eGrant)? The United States Patent and Trademark Office (USPTO) is implementing electronic patent issuance to reduce pendency of patent applications, foster a green economy by...more

McDermott Will & Emery

2023 IP Outlook: Developments in Trademark and Copyright Process and Procedure

McDermott Will & Emery on

Throughout 2022, the procedural rules of the US Patent and Trademark Office (PTO) and the newly formed Copyright Claims Board (CCB) underwent several developments. The PTO outlined a new administrative process for addressing...more

Ladas & Parry LLP

USPTO To Put Into Action The Final Rule Of The TM Modernization Act (TMA)

Ladas & Parry LLP on

A new rule has been published by The United States Patent and Trademark Office (USPTO) in the Federal Register to put into action the particulars of the Trademark Modernization Act (TMA) of 2020...more

Tarter Krinsky & Drogin LLP

U.S. Patent And Trademark Office Changes The New Email Address Rule

In this Alert, we reported on the new email address rule. The U.S. Patent and Trademark Office (USPTO), based on objections from trademark attorneys throughout the U.S., has now modified the new email address rule to permit...more

Jones Day

E-File or You'll Have to Refile: Trademark Filings Gone Digital - New USPTO rules make electronic filing mandatory and update...

Jones Day on

Statistics from 2018 reveal that .03% of trademark applications were paper filed. As such, effective February 15, 2020, paper trademark filings are no longer an option. The United States Patent and Trademark Office ("USPTO")...more

Morrison & Foerster LLP

New USPTO Rule Likely To Increase Spam

The United States Patent and Trademark Office (USPTO) just issued new rules that directly affect trademark owners. Going forward, trademark applicants, registrants, and parties to a proceeding before the Trademark Trial and...more

McDonnell Boehnen Hulbert & Berghoff LLP

New Trademark Exam Guide Effective February 15, 2020 Regarding Mandatory Electronic Filing, Owner Email Addresses, and Specimen...

On February 7, 2020, the U.S. Trademark Office issued long-anticipated guidelines governing electronic filing and electronic communications with attorneys and trademark owners. Effective February 15, 2020, these new rules...more

Smart & Biggar

File wrapper estoppel in Canada

Smart & Biggar on

The Canadian Patent Act was amended last year to include a new provision which allows prosecution histories into evidence in patent proceedings to rebut representations made by the patentee regarding claims construction. ...more

Eversheds Sutherland (US) LLP

US Trademark Office addresses false or inaccurate filings

According to the USPTO Commissioner of Trademarks, the United States Patent and Trademark Office (USPTO) has seen a significant increase in the number of applicants who are not fulfilling their legal and ethical obligations...more

International Lawyers Network

United States Licensed Attorney Required for Foreign-Domiciled U.S. Trademarks

Since August 3, 2019, all foreign-domiciled U.S. trademark applicants, registrants and parties to proceedings before the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board must be represented...more

Spilman Thomas & Battle, PLLC

New Rules (for Electronic Trademark Filings)

On July 31, 2019, the United States Patent and Trademark Office ("USPTO") published final rules changes that mandate electronic filing. This new rule becomes effective on October 5, 2019. There are limited exceptions, so it...more

Lowndes

New Rule Requires U.S. Licensed Attorney for Foreign-domiciled Trademark Applicants and Registrants

Lowndes on

Effective on August 3, 2019, the United States Patent and Trademark Office (USPTO) will require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be...more

Womble Bond Dickinson

USPTO to Require US-Licensed Counsel for All Foreign-Domiciled Trademark Filers; New Rule Takes Effect Aug. 3

Womble Bond Dickinson on

The US Patent and Trademark Office recently announced that starting on August 3, 2019, all foreign-domiciled trademark applicants, registrants and participants in USPTO trademark proceedings must be represented by US counsel....more

Hahn Loeser & Parks LLP

USPTO Requires U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants

Earlier in July 2019, the United States Patent and Trademark Office (USPTO) issued a final rule amending the Rules of Practice in Trademark Cases, the Rules of Practice in Filings Pursuant to the Protocol Relating to the...more

Jaburg Wilk

New Rule Requires Foreign Companies and Persons to Be Represented by a U.S. Licensed Attorney in All Trademark Matters

Jaburg Wilk on

The United States Patent and Trademark Office USPTO recently announced a significant rule change. Effective August 3, 2019, all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal...more

Dorsey & Whitney LLP

USPTO Announces Rule Requiring Foreign Trademark Owners to Obtain U.S. Counsel

Dorsey & Whitney LLP on

Earlier this year the United States Patent and Trademark Office proposed a rule requiring foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board Proceedings to be represented by...more

Carlton Fields

New U.S. Patent and Trademark Office Rule Concerning Legal Representation for Foreign Trademark Applicants, Registrants, and...

Carlton Fields on

On July 2, 2019, the U.S. Patent and Trademark Office (USPTO) published a rule that will have a major impact on foreign (non-U.S. domiciled) trademark applicants, registrants, and parties in inter partes proceedings in the...more

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