United States Patent and Trademark Office

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The United States Patent and Trademark Office (PTO or USPTO) is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.

The USPTO is currently based in Alexandria, Virginia, after a 2006 move from the Crystal City area of Arlington, Virginia. A few offices remain in the Potomac Gateway complex at the southern end of Crystal City; these offices will move to Randolph Square, a brand new building in Shirlington Village, in 2009. Since 1991, the office has been fully funded by fees charged for processing patents and trademarks. The current head of the USPTO is Under Secretary of Commerce for Intellectual Property Jon W. Dudas, who was nominated to the position by President George W. Bush in March 2004 and was then appointed on July 30, 2004.

The USPTO cooperates with the European Patent Office (EPO) and the Japan Patent Office (JPO) as one of the Trilateral Patent Offices. The USPTO is also a Receiving Office, an International Searching Authority and an International Preliminary Examination Authority for international patent applications filed in accordance with the Patent Cooperation Treaty.

[edit] Mission

The mission of the PTO is to promote "industrial and technological progress in the United States and strengthen the national economy" by:

• administering the laws relating to patents and trademarks;
• advising the Secretary of Commerce, the President of the United States, and the administration on patent, trademark, and copyright protection; and
• providing advice on the trade-related aspects of intellectual property.

[edit] Structure

As of September 30, 2007, the end of the U.S. government's fiscal year, the PTO had 8,913 employees, nearly all of whom are based at its huge five-building headquarters complex in Alexandria. Of those, 5,477 were patent examiners and 404 were trademark examiners; the rest are support staff.[1] The total employee count has risen from 8,189 at the end of fiscal year 2006; at the same time, there were 4,883 patent examiners and 413 trademark examiners. [2] Patent examiners are generally scientists and engineers who do not necessarily hold law degrees, while all trademark examiners must be licensed attorneys. All examiners work under a strict quota system.

In recent years, the USPTO has seen increasing delays between when a patent application is filed and when it issues. To address its workload challenges, the USPTO has undertaken an aggressive program of hiring and recruitment. In Fiscal Year 2006 (year ending September 30, 2006), the USPTO hired 1,193 new patent examiners,[3] and 1,215 new examiners were hired in fiscal 2007.[1] The USPTO expects to continue hiring patent examiners at a rate of approximately 1,200 per year from 2008 through 2012.

In 2006, USPTO also instituted a new training program for patent examiners called the "Patent Examiner Training Academy." It is an eight-month program designed to teach new patent examiners the fundamentals of patent law, practice and examination procedure in a college-style environment.[4].

[edit] Fee diversion

Each year, Congress "diverts" about 10% of the fees that the USPTO has collected into the general treasury of the United States. In effect, this takes money collected from the patent system to use for the general budget. This fee diversion is generally opposed by patent practitioners (e.g patent attorneys and patent agents), inventors, and the USPTO.[5] These stakeholders would rather use the funds to improve the patent office and patent system, such as by implementing the USPTO's 21st Century Strategic Plan.[6]

[edit] Patents

• Each year, the PTO issues over 150,000 patents to companies and individuals worldwide. As of February 2008, the PTO has granted over 7,950,000 patents.

• The X-Patents (the first 10,280 issued between 1790 and 1836) were destroyed by a fire; fewer than 3,000 of those have been recovered and re-issued with numbers that include an "X". The X generally appears at the end of the numbers hand-written on full-page patent images; however, in patent collections and for search purposes, the X is considered to be the patent type -- analogous to the "D" of design patents -- and appears at the beginning of the number. The X distinguishes the patents from those issued after the fire, which began again with patent number 1.

• On July 31, 1790, the USPTO awarded its first patent to Samuel Hopkins for an improvement "in the making of Pot ash and Pearl ash by a new Apparatus and Process." This patent was signed by then president George Washington.

[edit] Trademarks

The USPTO examines applications for trademark registration. If approved, the trademarks are registered on either the Principal Register or the Supplemental Register, depending upon whether the mark meets the appropriate distinctiveness criteria. However, this function is declining in popularity as trademark applicants move to cheaper, more straightforward state-by-state registrations. [7] [8]

[edit] Representation

The PTO only allows certain qualified persons to practice before the PTO. Practice includes filing of patent applications on behalf of inventors, prosecuting patent applications on behalf of inventors, and participating in administrative appeals and other proceedings before the PTO examiners and boards. The PTO sets its own standards for who may practice and requires that any person who practices become registered. A USPTO-registered non-attorney professional is called a patent agent and a USPTO-registered attorney is called a patent attorney.

In order to become registered to practice before the USPTO, an applicant must demonstrate to the USPTO's satisfaction certain scientific and technical competencies (such as having a science or engineering degree) and then pass a difficult USPTO-administered patent bar exam called the USPTO registration examination. This bar exam covers the voluminous regulations and procedures that govern USPTO practice. The registration process is managed by the USPTO's Office of Enrollment & Discipline (OED).[9]

Individual inventors may file and prosecute patent applications by themselves by a process of pro se patent filing. The inventor is not required to be represented by a registered patent attorney or patent agent. If it appears to a patent examiner that an inventor filing a pro se application is not familiar with the proper procedures of the patent office, the examiner may suggest that it would be desirable for the inventor to obtain representation by a licensed patent attorney or agent. [10] The patent examiner cannot recommend a patent attorney or agent, but the patent office does post a list of registered attorneys or agents. [11]

It is not uncommon for individual inventors to file their own patents to potentially save thousands of dollars in agent/attorneys fees, since legal fees for the preparation and filing of a US patent application can total many thousands of dollars. While an inventor of a relatively simple-to-describe invention may well be able to produce an adequate specification and accompanying drawings for a utility application, the complexity lies in what is claimed, either in the particular claim language of a utility application, or in the manner in which drawings are presented in a design application. Moreover, failure to adequately respond to an office action from the USPTO can endanger the inventor's rights, and may lead to abandonment of the application.

Patent agents can only act in a representative capacity in patent matters at the USPTO, and cannot represent an applicant for a trademark. Trademark applicants may be represented by any state bar licensed attorney sufficiently capable of handling trademark matters, governed by the rules of professional responsibility. There is no analogous "trademark agent" exam.

[edit] Electronic filing system

The USPTO will accept patent applications filed in electronic form. As of March 2006, inventors or their patent agents/attorneys can file applications as Adobe PDF documents. The web page for submitting applications is https://sportal.uspto.gov/secure/portal/efs-unregistered. Filing fees can be paid by credit card or by a USPTO “deposit account”.

[edit] Electronic retrieval system

The USPTO Web site provides free electronic copies of issued patents and patent applications as single-page TIFF documents. The site also provides Boolean search and analysis tools.

The USPTO's free distribution service only distributes the patent documents as a set of single page files (see http://www.uspto.gov/patft/help/images.htm). Numerous free and commercial services provide patent documents in other formats, such as Adobe PDF and CPC.

[edit] Criticisms

The USPTO been criticized for granting patents for impossible or absurd, already known, or arguably obvious inventions.[12]

[edit] Controversial patents

• U.S. Patent 5,443,036 , "Method of exercising a cat", covers having a cat chase the beam from a laser pointer. The patent has been criticised as being obvious.[13][14]
• U.S. Patent 6,004,596 , "Sealed crustless sandwich", issued in 1999, covers the design of a sandwich with crimped edges.[13][15]
• U.S. Patent 6,025,810 , "Hyper-light-speed antenna", an antenna that sends signals faster than the speed of light. [12] According to the description in the patent, "The present invention takes a transmission of energy, and instead of sending it through normal time and space, it pokes a small hole into another dimension, thus, sending the energy through a place which allows transmission of energy to exceed the speed of light." [16]
• U.S. Patent 6,368,227 , "Method of swinging on a swing", issued April 9, 2002 [17] by patent examiner Kien T. Nguyen,[18] was granted to a seven-year old boy, whose father, a patent attorney, wanted to demonstrate how the patent system worked to his son (aged 5 at the time of the application). The PTO initially rejected it due to prior art, but eventually issued the patent.[17] However, all claims of the patent were subsequently canceled by the PTO upon reexamination.[19]
• U.S. Patent 6,960,975 , "Space vehicle propelled by the pressure of inflationary vacuum state", describes an anti-gravity device. In November 2005, the USPTO was criticized by physicists for granting it. The journal Nature first highlighted this patent issued for a device that presumably amounts to a perpetual motion machine, defying the laws of physics.[20][21][22][23] The device comprises a particular electrically superconducting shield and elecromagnetic generating device. The examiner allowed the claims because the design of the shield and device was novel and not obvious.[24] In situations such as this where a substantial question of patentability is raised after a patent issues, the Commissioner of the Patent Office can order a reexamination of the patent.

[edit] Controversial trademarks

• U.S. Trademark 77,139,082, "Cloud Computing" for Dell, covering "custom manufacture of computer hardware for use in data centers and mega-scale computing environments for others", was allowed by a trademark attorney on July 8, 2008. Cloud computing is a generic term that could define technology infrastructure for years to come, which had been in general use at the time of the application.[25] The application was rejected on 12 August 2008 as descriptive and generic.[citation needed]

[edit] Slow patent examination

The USPTO has been criticized for taking an inordinate amount of time in examining patent applications. This is particularly true in the fast growing area of business method patents. As of 2005, patent examiners in the business method area were still examining patent applications filed in 2001.

The delay has been attributed by spokesmen for the Patent Office to a combination of a sudden increase in business method patent filings after the 1998 State Street Bank decision, the unfamiliarity of patent examiners with the business and financial arts (e.g. banking, insurance, stock trading etc.), and the issuance of a number of controversial patents (e.g. U.S. Patent 5,960,411 "Amazon one click patent") in the business method area.

Effective in August 2006, the USPTO introduced an accelerated patent examination procedure in an effort to allow inventors a speedy evaluation of an application with a final disposition within 12 months. The procedure requires additional information to be submitted with the application and also includes an interview with the examiner.[26] The first accelerated patent was granted on March 15, 2007 with a 6 month issuance time.[27]

[edit] See also

• United States patent law
• History of United States patent law
• Board of Patent Appeals and Interferences (BPAI)
• Confederate Patent Office
• Ex Parte Quayle
• Invention Secrecy Act
• John Ruggles
• Old Patent Office Building
• Patent office
• Patent Office Professional Association (POPA)
• Term of patent in the United States
• Trademark Trial and Appeal Board (TTAB)
• Trilateral Patent Offices

References and notes

1. ^ a b USPTO Performance and Accountability Report Fiscal Year 2007

2. ^ USPTO Performance and Accountability Report Fiscal Year 2006

3. ^ USPTO Annual Report 2006, Patent Performance

4. ^ USPTO Annual Report 2006, The Nature of the Training Provided to USPTO Examiners

5. ^ United States Patent and Trademark Office (February 2, 2004). "President's proposed budget ends USPTO fee diversion in FY 2005". Press release. Retrieved on 2006-11-24.

6. ^ "Strategic Plan for the 21st Century". United States Patent and Trademark Office (February 24, 2006). Retrieved on 2006-11-24.

7. ^ "State Trademark Information". FindLaw For Small Business (February 11, 2008). Retrieved on 2008-02-11.

8. ^ "Trademark Electronic Search System (TESS)". United States Patent and Trademark Office (February 11, 2008). Retrieved on 2008-02-11. Note: click on "Trademarks" then click on "TESS" tab.

9. ^ "OED Mission". United States Patent and Trademark Office (June 21, 2006). Retrieved on 2006-11-24. Note: the original link location appears to no longer be available.

10. ^ Manual of Patent Examining Procedure, Chapter 400

11. ^ List of registered attorneys or agents.

12. ^ a b Philip E. Ross, Patently Absurd, Forbes.com, May 29, 2000.

13. ^ a b Hal H. Varian (2004-10-21). "Patent Protection Gone Awry". New York Times.

14. ^ Laura Weinstein (2002-10-21). "Stop the Patent Process Madness". Wired Magazine.

15. ^ Sara Schaefer Muñoz (2005-04-05). "Patent No. 6,004,596: Peanut Butter and Jelly Sandwich". Wall Street Journal.

16. ^ U.S. Patent 6,025,810 , col. 1, lines 30-34.

17. ^ a b Jeff Hecht (2002-04-17). "Boy takes swing at US patents". New Scientist.

18. ^ Teresa Riordan (2002-05-13). "Patents; The Patent Office faces huge backlogs, extremely technical inventions, and absurd ones.". New York Times.

19. ^ Reexamination certificate no. US 6,368,227 C1, July 1, 2003, retrieved from USPTO Public Patent Application Information Retrieval (PAIR), August 22, 2008

20. ^ Ball, Philip (November 10, 2005). "Antigravity craft slips past patent officers". Nature 438 (7065): 139. doi:10.1038/438139a. PMID 16280998.

21. ^ United Press International. "Patent issued for anti-gravity device", Phyorg.com. Retrieved on 2006-11-24.

22. ^ Brian Handwerk (November 11, 2005). "Antigravity Machine Patent Draws Physicists' Ire", National Geographic News. Retrieved on 2006-11-24.

23. ^ An untraceable link was also included here as an additional reference.

24. ^ Ramon M Barrera (examiner) (June 7, 2005). "Notice of Allowance and Fees Due (PTOL-85)" (PDF). 11/079,670 Space Vehicle Propelled by the Pressure of Inflationary Vacuum State 2. United States Patent and Trademark Office. Retrieved on 2006-11-24. Note: Navigate to the 'Image File Wrapper' to find the file; download and open with a PDF reader. The specific passage from the document follows: "The following is an examiner's statement of reasons for allowance: None of the prior art of record taught or disclosed the claimed superconducting shield and electromagnetic field generating means structure."

25. ^ Dell Tries to Trademark 'cloud Computing'

26. ^ USPTO Accelerated Patent Examination

27. ^ Press Release: USPTO GRANTS FIRST PATENT UNDER NEW ACCELERATED REVIEW OPTION