Richard Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
Home Page: http://www.Neifeld.com

We anticipate that the roundtable discussion will focus on the following issues related to identification and classification of goods and services:

•       The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual):  The USPTO plans to redesign the ID Manual to better meet user needs and we are seeking suggestions regarding desirable features and content for the Manual.  We are also seeking feedback on whether presenting the ID Manual in a hierarchical format using a drop-down list, where identifications are organized by general categories that are then divided into more specific categories, would be useful.

• The USPTO’s practice regarding the level of specificity required in describing goods and services:  The USPTO seeks user feedback on whether modification of current practice is desirable.  For example, rather than requiring a list of individual clothing items, should the USPTO accept a more general description of a category of clothing, such as “casual wear” or “sportswear”?
• Collaboration with industry groups:  The USPTO would like to discuss the possibility of creating ongoing working relationships with key industries to ensure that the USPTO ID Manual is promptly updated with new products and services, and contains comprehensive lists of the most common goods and services in each industry.
• International databases of acceptable identifications of goods and services:  Efforts are underway to develop a harmonized list of identifications that all participating countries or international organizations accept, and also to create a non-harmonized list of identifications with an indication of which countries or international organizations accept each listed item.  The USPTO seeks user input on the potential value of these projects to trademark owners who seek registration in multiple jurisdictions.

PPH will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

“The PPH pilot program is a prominent landmark of the continuous deepening of bilateral patent cooperation between the SIPO and the USPTO,” said Commissioner Tian. “Patent applicants and stakeholders in both countries will benefit from the fast track examination provided by the PPH pilots. These PPH pilots will also effectively improve the capabilities of both offices to handle workloads, thereby promoting technology innovation and economic development in both countries through enhanced patent examination efficiency and quality.”

“These PPH pilots mark a significant milestone of achievement in patent cooperation between our two offices,” said Under Secretary Kappos. “They will promote high quality patents and expedite processing of patent applications in both offices by avoiding duplicative work and will provide greater costs savings to patent applicants, helping to spur greater innovation and generate greater economic growth and job creation in both countries.”

The one year pilot programs will end on November 30, 2012. Both offices may extend the one year trial period upon mutual agreement. The purpose of this trial program is to gauge the interest of applicants and to evaluate the programs for patent quality, efficiency and the reduction of the workload at the USPTO as well as SIPO.

The Director General of the Icelandic Patent Office, Borghildur Erlingsdóttir, stated “we are very pleased with the PPH agreement concluded with the USPTO and look forward to close cooperation in this respect. The PPH program is not only valuable for our customers but also for the office and our role in addressing growing backlogs and the need for increased work-sharing cooperation between offices.”

“We are excited by this new worksharing program and welcome the Icelandic Patent Office to this new cooperative framework,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “This PPH program further expands the PPH network and gives our stakeholders more opportunities to access the benefits of improved timeliness of examination and greater patent quality.”

Under the Patent Prosecution Highway, an applicant receiving a ruling from Icelandic Patent Office that at least one claim in an application is patentable may request that the USPTO fast track the examination of corresponding claims in corresponding applications. Similarly, if the USPTO determines that at least one claim is patentable, the applicant may request accelerated processing of corresponding applications filed at the Icelandic Patent Office. Full requirements for participation in each trial program at the USPTO can be found at http://www.uspto.gov/patents/init_events/pph/index.jsp. Information on the Icelandic Patent Office s program may be found at http://www.els.is/en.

The purpose of this trial program is to gauge the interest of applicants and determine if the program improves quality and efficiency and reduces the workload at the USPTO as well as Icelandic Patent Office. The trial period will start on December 1, 2011, and is set to expire on November 30, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors. The offices will provide notice of any adjustment in the trial period.

“Establishing satellite offices in geographically diverse areas of the country will allow the agency to better recruit and retain talented patent professionals and allow the agency to better interact with the applicant community,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “We are committed to conducting a transparent selection process based on objective criteria, and with input from stakeholders around the country.”

An initial USPTO satellite office is already planned to be established in Detroit, Michigan. The agency plans to open its Detroit facility in the second half of 2012. The Detroit satellite office is expected to create more than 100 high-paying, high-skill jobs in its first year of operation and represents the first phase of the USPTO’s satellite office project, an effort to hire more patent examiners and seek out additional technical expertise in locations across the country.

In choosing Detroit, the USPTO considered multiple cities and sought a location where the agency could best recruit and retain patent examiners and increase applicant outreach. The criteria included, but was not limited to: occupational clusters; number of patent attorneys and agents currently in the region; number of patent applications by state; access to universities with strong engineering programs; public transportation infrastructure and proximate location to a major airport; the ability to share facilities with other established governmental operations; the ability to support departmental objectives, including CommerceConnect, and increase collaborations among Commerce bureaus; and various economic factors, including cost of living and unemployment rates of the city.

Subject to available resources and as provided for in the America Invents Act, the USPTO intends to establish at least two more satellite offices in addition to the one in Detroit in the next three years.

Public comments should be submitted to vog.otpsunull@seciffoetilletas or as otherwise dictated in the Federal Register Notice. Comments should provide information that supports the USPTO’s purposes of establishing satellite offices, including that the location will increase outreach activities to better connect patent filers and innovators with the offices, enhance patent examiner retention, and improve recruitment of patent examiners.

Exercising Ingenuity will highlight well-known trademarks, iconic innovations, and amazing artifacts that have helped change the way Americans have thought about themselves, their weight, and their appearance. Included in the exhibit are trademarks such as Gatorade and Tony Horton’s P90X workout; inventions such as the ThighMaster and the Nike waffle-sole running shoe; and historic items such as The Seat of Health and President Calvin Coolidge’s Electric Horse. Visitors will have the opportunity to use a variety of penny scales and vintage strength testers featured in the Strength Arcade. Together with interviews of patent and trademark examiners, the exhibit presents the history and future of the health and fitness industries.

Notable inductees of the National Inventors Hall of Fame are featured throughout the exhibit, including John Kellog and his creation of flaked breakfast cereal and exercise equipment; Benjamin Rubin and his development of the bifurcated vaccination needle; and Robert Gore and the creation of GORE-TEX® materials.