Mr. Konieczny has a Bachelor of Science in Chemistry from Penn State, a Ph.D. in Chemistry from Temple University, and a Juris Doctor from Boston College Law School. He is a member of the Massachusetts Bar and is registered to practice before the U.S. Patent and Trademark Office.
We are happy to have the benefit of Mr. Konieczny’s prior work experience, educational background, and professionalism.
The controversial rules would have limited applicants to 2 continuation applications and 1 RCE (the 2+1 Rule) and would have limited the number of claims to 5 independent claims and 25 total claims (the 5/25 Rule).
In determining that the rules were an unlawful extension of the USPTO’s rulemaking authority, the Court stated that the USPTO’s rulemaking authority does not extend to substantive rules, and because the rules are substantive in nature, that such rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.”
The rules were originally scheduled to go into effect on November 1, 2007, but were blocked shortly before the effective date by a temporary injunction issued by the court pending this latest decision.
By: Kenneth W. Fields
Prior to entering the patent profession, Ms. Arroyo worked as a systems engineer in metropolitan Washington, D.C. and served in the U.S. Army.
Ms. Arroyo has a Bachelor of Science in Electrical Engineering and a Juris Doctor. She is a member of the Maryland Bar and is registered to practice before the U.S. Patent Office.
We are happy to have the benefit of Ms. Arroyo’s prior work experience, educational background, and professionalism.
Under its administrative rulemaking authority, the United States Patent and Trademark Office (USPTO) recently proposed two revisions and an amendment to the Trademark Rules of Practice (i.e., 37 CFR, Part 2). The proposed rules would require a mark description for all non-standard character applications. The stated reasons for the proposal are that the new rules would allow for more accurate and efficient processes of selecting design codes (i.e., a six digit numerical code assigned to a particular design element) and pseudo-marks (e.g., the literal equivalent of a particular design element). The USPTO has taken the position that the proposed rules would ultimately result in better internal (e.g., Examining Attorneys) and external (i.e., the public) searches of its mark database for likelihood of confusion purposes.
The following is a summary of the current and proposed rules:
(i) As currently written, 37 CFR 2.32 does not require a description for any mark (standard or non-standard characters), in order for an application to be deemed complete. The proposal is to amend the afore-mentioned rule so to add subsection (a)(8). Under the amended rule, a non-standard character application that does not describe the mark would be declared incomplete;
(ii) As currently written, 37 CFR 2.37 generally grants applicants the option of not submitting a description for any mark (standard or non-standard characters), except when the Examining Attorney issues a requirement. The revised version of the afore-mentioned rule would expressly mandate the inclusion of a mark description in all non-standard character applications. Regarding applications for standard character marks, the current rule would remain in force; hence, applicants would still have the choice of not describing the mark, unless required to do so by the Examining Attorney; and
(iii) As currently written, 37 CFR 2.52(b)(5) requires a description of non-standard character marks only when the “. . . drawing cannot adequately depict all significant features of the mark.” The revised version of the afore-mentioned rule would also expressly mandate the inclusion of a mark description in all non-standard character applications.
In closing, if the proposed rules go into effect, we would advise that all non-standard character applications contain a mark description at the time of filing, so to avoid the refusal. If you have any questions, please feel free to contact us. We will be sure to keep you informed on the status of these proposed rules.
On Wednesday, October 31, a Federal District Court granted a preliminary injunction preventing the USPTO’s entire new patent rules package from taking effect as planned on November 1, 2007. More specifically, the preliminary injunction prevents the USPTO from implementing the current rules package as planned, and also prohibits the USPTO from issuing any "new regulations restricting the number of continuing applications, the number of requests for continued examination, and the number of claims that may be filed with the USPTO." Please note that this order is only temporary, and will expire upon the entry of a final judgement in the ongoing lawsuit filed by GlaxoSmithKline against the USPTO, which might take several months.
We will, of course, continue to keep you advised of any further developments in this matter.
Jay F. Williams, an associate at Wenderoth, Lind & Ponack, L.L.P., gave a presentation to the Intellectual Property Practice in Japan Committee Meeting at the AIPLA Annual Meeting in October. The topic of discussion was USPTO Examiniation Guidelines on Non-Obviousness Post-KSR.
To view a PDF version of the slideshow presentation given by Mr. Williams, please visit this link: USPTO Examination Guidelines on Non-obviousness Post-KSR
Please visit the link below for more detailed infomration regarding the clarification and limited waiver of the new rules below, along with recommended actions and practice tips.
http://www.wenderoth.com/newsletter/Bulletin2.htm
http://www.wenderoth.com/newsletter/BulletinNewUSPTORulesSept07.htm
