Donald J. Ersler, S.C.

Current Trends at the USPTO

Patent Office Trends

A new trend that has been appearing in some Patent Office art groups is what could be characterized as "unreasonable literalism." Unreasonable literalism requires that any phrase recited in the claims, must also appear verbatim in the specification. It does not matter that the phrase in the claims is clearly disclosed in the drawings. There is a general Patent Office rule, which requires that whatever is recited in a claim, must also have support in the drawings for apparatus claims. The case of Vas-Cath Inc. v. Mahurkar, (Vas-Cath) 935 F. 2d 1555, Court of Appeals, Federal Circuit, 1991 states, "drawings are sufficient to provide a written description of the invention." According to Vas-Cath, if one of the drawing figures in a patent application shows that element A is adjacent to element B, you are able to recite in the claims that element A is adjacent to element B. Vas-Cath provides support for amending the specification to add the phrase, "element A is adjacent to element B." However, with "unreasonable literalism," if you amend the specification, the examiner will assert a 35 USC 112(a) rejection in the next office action, stating that you are entering new matter into the specification. Vas-Cath does not require the applicant to file a continuation application, if the limitation is supported in the drawings. The only way to enter new matter into a specification is by filing the contination application. The examiner compares the claims of a patent to prior art found during a search and provides their opinion as whether the claims are allowed, objected to, or rejected. Office actions are discussed in more detail in "Insights For Responding to Office Actions, on www.itspatentable.com. Fighting "unreasonable literalism" in the office action requires the patent attorney to call the Ombudsman’s office, a detailee or appeal the rejection to the Patent Trial And Appeal Board (PTAB). The purpose of the Ombudsman’s office is to act as an intermediary between the USPTO and the patent attorney. A detailee is someone from the Commissioner's office who will look into a matter (upon verbal request by the patent attorney) where the patent attorney believes that the examiner and the supervisor are not examining a patent application according to the Manual of Patent Examining Procedure (MPEP), rules and statutes. The Ombudsman’s office, or the detailee will try to settle matters, between the examiner, supervisor, and patent attorney. Otherwise, the only recourse is filing an appeal with the PTAB or filing a continuing application.

Trademark Office Trends

A new trend at the trademark office, which has been going on for about a year is to reject all specimens that even remotely resemble photoshops. Photoshops are graphically generated representations of a product using some type of graphic software program. Specimens are required to show that a trademark is being used on or in connection with a product. The specimen is a photograph of a trademark affixed to the product itself or the product packaging. Having the trademark on the product itself is preferred. However, if it is not feasible to have the trademark on the product itself, then the trademark may be affixed to the product packaging. I have personally dealt with trademark examiners who will reject photos that are clearly not photoshops. The rejections are very frustrating and costly to the client. However, there are a number of ways to fight back against the Trademark Office's new requirements. When you take a photograph of the product or packaging, take the least professional looking photographs. Use poor lighting, bad camera angles and low resolution in the photographs. Make sure your backgrounds look awful, such as messy work desk or table that has not been cleaned after eating. Other out of the ordinary backgrounds could also be used. This way, it will be harder for the trademark examiner and their supervisor to accuse you of providing a photoshop for the specimen.

A second new trend that has started recently is "stale" specimens. It used to be that the specimen originally filed with the trademark application could be used for filing a mandatory section 8 and 15 affidavits (statement of use and incontestability) or 10-year renewals; assuming that the product appearance or product packaging did not change. No longer, you have to get a new photograph ("fresh" specimen) when filing the section 8 and 15 affidavits and 10-year renewals. The trademark clerk will look at the file properties of the specimen file to determine the date when the photograph was taken. If the clerk thinks the specimen is too old, they will send an office action back stating that the specimen is "stale" and you must provide a fresh specimen.