All posts by Everest Agency

Featured in the Rotary Club of Durham Program: Arles Taylor – Intellectual Property Law

Got the Next Great Invention? Don’t Talk It Up Quite Yet

Memo to the city’s start-ups, entrepreneurs and inventors:

If you have created the next game-changing product, widget or unique new stuff, then zip your lips tightly shut. Get a patent attorney and file for patent protection and begin the process of application and review.

Arles Taylor, a veteran patent attorney, took a full house to law school during a detailed presentation outlining the state of intellectual property laws nationally and internationally.

The subject is particularly important in Durham and the Research Triangle, respective homes to start-ups and research organizations at the major universities and commercial businesses.

Read the full article on durhamrotaryclub.org

2015 TM5 Annual Meeting at USPTO headquarters

On December 1-2, 2015 the TM5 (USPTO, JPO, KIPO, OHIM and SAIC) met at the USPTP headquarter to cooperate on common processes and to exchange best practices. The TM5 aim to improve users’ interactions with national trademark offices and the World Intellectual Property Organization (WIPO) through projects and activities that aim to minimize bad faith filings, TMview, common status descriptions and ID List, and comparison of examination results and Madrid Protocol procedure.

Minimizing Bad Faith Filings

TM5 partners aim to reduce bad faith trademark filings globally and provide more transparent information to users by exchanging best practices and summarizing them in a report. The next seminar for the TM5 partners will be held in Tokyo, on March 1, 2016.

TMview

The TM5 partners submit their trademark data for the project “User Friendly Access to Trademark Information” which is managed by the designated project leader OHIM. This project, also known as “TMview,” allows a user to access databases from 43 trademark offices (including OHIM, WIPO, USPTO, JPO, and KIPO) with a single search.

Common Status Descriptors and ID List

The TM5 partners, led by the USPTO, are developing “common status descriptors,” or uniform terms and icons that can be used to signify the status of a trademark registration or application. The aim of this project is to make TMview easier to understand for users. The USPTO also leads the project “TM5 ID List” which aims to develop a harmonized global “pick list” of preapproved and pre-classified identifications (IDs) of goods or services and their translations. The ID List is now available online and is fully searchable.

Comparison of Examination Results and Madrid Protocol Procedure

In order to gain a better understanding of the partners’ practices and policies, the TM5 partners are comparing examination results for applications filed using the Madrid Protocol before each of the partners’ offices. The analysis could be useful for users and partner offices in registering applied-for marks. Additionally, a JPO led project aims to standardize information about practices and procedures related to designations under the Madrid System.

2015 ip year in review

2015 IP Year in Review

As the Holidays approach and 2015 comes to a close, we’d like to take a moment to reflect on the changes 2015 has brought both for our firm and the IP industry as a whole.

JWTH 2015 Overview

JWTH is proud of the accomplishments of our own Jeff Wilson. This February, he earned the 2015 Client Choice Award for his excellent client service, and in September was named Corporate LiveWire’s “Most Outstanding Patent & Trademark Lawyer” in North Carolina.

Additionally, our attorneys completed and published a thorough review and analysis of the effects resulting from the America Invents Act.

We were also pleased to welcome a new addition to the firm, Matt Browning.

We were able to sponsor and participate in a number of conventions and events this year, including a “Ask a Venture Capitalist Triangle” Tech Breakfast, the 2015 AUTM Eastern Regions Meeting, and the 2015 BIO IPCC Conference.

2015 Changes for the US Patent System

This year saw many new initiatives and programs from the USPTO. Some of these programs were announced at SXSW in Austin, Texas this past March by Michelle Lee and Penny Pritzker.

The Expedited Patent Appeal Pilot Program, Patent work sharing between Brazil and the US, and the launch of Dossier Access are just a small sampling of these initiatives. We are optimistic that 2016 will see continued efforts from the USPTO to mold the patent system into a clearer and fairer system for both the public and the IP industry at large.

As always, JWTH is committed to staying at the forefront of these changes to continue serving our clients in the most efficient and effective manner possible.

Dossier Access Launched for Global Dossier Initiative

On November 23, 2015, as part of the Global Dossier Initiative, the USPTO launched the Global Dossier Access — a  distinctly user-friendly online interface for patent applicants.

The Global Dossier aims to allow users to quickly and easily research IP protection globally by providing access to the dossiers of applications filed at the five participating offices:

  1. United States Patent & Trademark Office
  2. European Patent Office
  3. Japan Patent Office
  4. Korean Intellectual Property Office
  5. State Intellectual Property Office of China

This project was initially proposed in 2011, and we are hopeful regarding its benefits to innovation around the globe.

As with many of the beneficial changes coming from the USPTO, this initiative aims to be user-friendly for the public to use. To help further this, the USPTO has opened the floor to ideas and feedback regarding Dossier Access.

Whats next for the enhanced patent quality initiative in 2016?

Enhanced Patent Quality Initiative in 2016 – What’s Next?

Image from uspto.gov

Director of the USPTO, Michelle K. Lee recently released a statement discussing the future of the Enhanced Patent Quality Initiative in 2016. We look forward to the continuing improvements to the United States patent system, and wish to draw attention to key points from Ms. Lee’s statements:

Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. …such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement…Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality. 

It is in the best interest of all parties, save perhaps patent trolls, to reduce the level of costly patent disputes resulting from unclear or low-quality patents.  It seems promising that 2016 will bring more concrete suggestions and guidelines on how to best pursue this goal.

Ms. Lee goes on to highlight two new initiatives for the EPQI:

Clarity of the Record Pilot

Aims to better examiner and applicant practices for enhancing Clarity of the Record. It will require examiners to provide “definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims.”

Transforming Review Data Capture Process 

Ms. Lee revealed that the USPTO plans to vastly increase the amount of data they gather from review processes, stating:

“We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public. “

The goal for the additional data is to grant the ability to use big data analytic techniques to gather more detailed trends and metrics across a wider variety of sectors. It will also allow for pinpointing examiner error and the reasoning behind various examiner actions.

We look forward to seeing positive results from the USPTO’s EPQI and will continue updating with the most current developments.

enhanced patent quality initiative webinar

Last Enhanced Patent Quality Initiative Webinar for 2015

The United States Patent and Trademark Office (USPTO) has been steadily promoting its Enhanced Patent Quality Initiative (EPQI), with major efforts through mid and late 2015.

One of those efforts has been the monthly webinar on the state of patent quality, with its first chat having debuted in June of 2015. This regular webinar gives the public a chance to stay updated, give feedback, and bring their concerns regarding the EPQI.

November’s upcoming webinar will be the last for the year, hosted by Deputy Commissioner for Patent Quality Valencia Wallace and Senior Advisor Sandie Spyrou.

Topics for the November Enhanced Patent Quality Initiative Webinar

Join in on the last webinar of the year and give your feedback on how the USPTO is doing.

 

Patent quality discussion series at NCCU School of Law

Patent Quality Discussion in Durham

This November, the USPTO will be holding an event in our own backyard of Durham, North Carolina.

Building on the changes set forth by the America Invents Act (AIA), the USPTO has created several initiatives aimed at reducing the patent backlog and waiting times.

The Patent Quality Discussion Series is part of one such initiative, the Enhanced Patent Quality Initiative aimed at building more public trust and confidence in the patent system, in part by making the system understandable and usable by all prospective inventors.

This event is open to the general public in addition to bar members and the local patent community. Attendees of all backgrounds are encouraged to come learn and share their experiences and ideas regarding the patent process.

See the official event page for a detailed schedule.

Patent Quality Discussion Series – Durham

Proudly Sponsoring the 2015 BIO IPCC Conference

JWTH is proud to sponsor the upcoming Fall-2015 BIO Intellectual Property Counsels Committee (IPCC) Conference in Raleigh / Cary.

The aim of the BIO IPCC Conference is to offer biotech professionals educational sessions on the latest issues in the biotech IP sector with practical information that can be put into practice the next day.  In between, there are informal networking events designed to promote discussion and foster relationships among industry colleagues.

We look forward to meeting with both biotechnology and fellow IP professionals. We hope to have the chance to help inform professionals in the biotech industry how to best protect their hard work.

See more details on the event and how to sign up below:

 

Advancing International Patent Protection

Director of the USPTO, Michelle Lee, who recently signed 3 MoU to advance international patent protection.

USPTO Director & Under Secretary of Commerce for Intellectual Property, Michelle Lee.

A USPTO delegation led by Michelle Lee – Director of the USPTO – convened in Geneva, Switzerland last week at an annual governance meeting of the World Intellectual Property Organization.

While there, Ms. Lee signed three separate Memorandums of Understanding with the:

  1. European Patent Office (EPO)
  2. Intellectual Property Office of Singapore (IPOS)
  3. Intellectual Property Office of the Philippines (IPOP)

Regarding the agreements, Ms. Lee stated:

“These three Memorandums of Understanding mark a significant milestone of achievement in patent cooperation between our offices. They will promote consistency in practices and spur greater innovation.”

Overall, this is a positive step forward for international patent protection, easing the process of protecting clients’ domestic patents abroad.

For more details on this development, see the full press release from the USPTO.