Question from Reader: Restriction Requirements

I received the following from a law student:

Do you know of any patent files to which you could refer me where restriction requirements have been successfully overcome by petition?  If so, could you please provide me with the serial numbers?  I am researching a reliable rumor that petitions to overcome restriction requirements have been much more successful recently than ever before, however, I am having a hard time finding even one example.

If anyone knows of a file number off the top of their head (so to speak)…I’ll open the comments.

Related Posts:

• Accelerated Examination Webinar…my notes
• Patent Examiner Training
• Everything you wanted to know about EFS-Web (new electronic filing system), but didn’t know who to ask

Other blogs I’m involved with..

I, believe it or not, blog at about a dozen different blogs.  It recently dawned on me that I should do a better job of cross posting links to posts which my readers might find of interest.  To wit:

Rethink(IP) Blog

• Memorial Day Edition of Blawg Review Available
• How Long Before Law Firms do this With Associates?
• USPTO explains the AWOL Anderson Declaration
• Dominant Design and Lost Profits in Creative Labs v Apple Computer
• NPT alleging that the USPTO engaged in improper communications with third party in Blackberry case
• Pressuring clients for more work…good idea?
• … and tell us how you really feel. (about patent trolls)

Rethink(IP) RSS Mojo Blog

• Listings of recently filed IP Lawsuits
• Trademark Lawsuit Filing Update (through May 27, 2006)
• Patent Lawsuit Filing Update (through May 27, 2006)
• Copyright Lawsuit Filing Update (through May 27, 2006)
• USPTO Notices:
• Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office (signed 22May2006)
• Notice of Collection of Practitioners’ E-mail Addresses
• Commerce Deputy Under Secretary to Address Midwest Businesses On U.S. Government Efforts to Combat Counterfeiting and Piracy in China
• USPTO Exam Guide for Geographical Indications Used on Wines and Spirits
• Request for Comments on Patents Search Templates (16May2006)
• Commerce Deputy Secretary to Speak at USPTO’s Community Day
• U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM TO OHIO

Related Posts:

• Recent Posts on Rethink(IP)’s RSSMojo
• Got IP Lawsuit Mojo?
• USPTO Notice re Pre-First Office Action Interviews

Blawg Review…dood!

Kevin Heller hosts this week’s Blawg Review (#58)…and it is COOL. I don’t typically read Blawg Review….honestly, the splog format you typically see from week to week is a bit boring (we (Rethink(IP)) complained about it in Blawg Review #48).

Kevin created a Blawg Review format that I would read. Short, simple, sweet, to the point, organized…it rocks. If you haven’t read a Blawg Review in a while…this would be a good one. Seriously. Go check it out NOW.

Next week…Blawg Review hosts Blawg Review. Rumor has it that it will be a big-un!

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• Cue Willard Scott…someone’s 100!
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Dilbert roasts patent litigators

Scott Adams on patent litigators in today’s Dilbert:

http://dilbert.com/comics/dilbert/archive/images/dilbert2006052442720.gif

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Trademark Application Rejections

I stumbled onto a USPTO page earlier that warns applicants that if they file a trademark, it “may” be rejected:

The USPTO may refuse to register your mark on numerous grounds. The most common are:

Likelihood of Confusion

The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks do not have to be identical or the goods and services the same; instead, it is sufficient if the marks are similar and the goods and or services related. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.

When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.

Merely Descriptive and Deceptively Misdescriptive

The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive

The examining attorney will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the mark identifies the geographic origin of the goods or services.

A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.

Primarily Merely a Surname

The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.

Ornamentation

In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the “dress” of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant’s goods from those of others.

NOTE: For a complete list of the substantive grounds of refusal and a detailed explanation of each, see Chapter 1200, Trademark Manual of Examining Procedure (TMEP). The USPTO cannot provide preliminary legal advice as to whether we will register a particular mark; filing an application is the only way to obtain a decision on whether the USPTO will refuse registration.

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Ebay decided, kiss automatic injunctive relief good-bye

Injunctive relief as a matter of right gets tossed out window (Supreme Court just released opinion in eBay v. MercExchange).  Scratch that off your list of big patent reform issues.  According to Yahoo/Reuters:

The justices unanimously set aside the decision by a U.S. appeals court in finding that a permanent injunction barring use of a technology must generally be issued once infringement of a valid patent has been determined. 

Update:  More at PromoteTheProgress.com

Update #2:  NEW YORK TIMES:  Justices Order Rethinking of eBay Case.

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NAPP opposes new patent rules

The National Association of Patent Practitioners has posted their oppostion to the USPTO’s proposed rules “concerning (1) limiting the number of continuations and divisions, and (2) selecting few claims or issuing patentability reports.”  Copies [PDF] of their reasons for opposing the proposed rule changes can be found here:

• Regarding continuation restrictions
• Regarding claim restrictions  

See also Promote The Progress® on:

• should you worry about the continuation rule?
• Wondering about the effect of the proposed ten claim limit rule?

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• Additional information on the new claims/continuation rules
• File Lots of Continuing Applications? Those days are soon over…

Father of the LCD wins MIT-Lemelson prize

Independent inventors:
“get the short end of the stick when dealing with large corporations.”

Engadget reporting that James Fergason, the inventor of the LCD, was recently awarded the $500K MIT-Lemelson prize and plans on donating his prize money to independent inventors who (as Engadget puts it) “…get the short end of the stick when dealing with large corporations.”  [Via Ed.]

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S-Signatures (/John Doe/) and the USPTO

I swear someone recently told me that you couldn’t use a s-signature with USPTO correspondence.  So much for that theory.  According to Joy Bryant at the NAPP, 37 CFR 1.4(d) was amended to allow for s-signature use [PDF].  See:  37 CFR 1.4(d) which says that:

(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and

(ii) A registered practitioner, signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number, either as part of the S-signature, or immediately below or adjacent the S-signature. The number (#) character may only be used as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.

(iii) The signer’s name must be:

(A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and

(B) Reasonably specific enough so that the identity of the signer can be readily recognized.

So…now you know.

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Patents v. Trademarks v. Copyrights…which is most valuable?

Patent attorneys (being the self centered snobs we are) like to say “patents are the broadest protection you can have, then trademarks…and copyrights are really narrow.”

How does that crude logic stack up when you look at what they are worth–dollar value?

James E. Hawes has analyzed that question…and has some interesting results: IPThoughts–Values of IP

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