Starting a new nonprofit organization is exciting. It can also be daunting, as you may wonder where to begin and how to find the right resources. It is important to set up your nonprofit organization correctly from the start, so you can avoid unnecessary delays and extra paperwork.
Here are key steps for starting your organization off on the right foot.
Step #1 Choose a name for your nonprofit.
At the very start, choose a name for your organization that reflects the intent and aspirations of your new nonprofit. Have an attorney verify that your name is available for you to adopt and use. You do not want to have to change your name because you find out later that someone else is already using it.
Step #2 Incorporate your organization.
In order to create your nonprofit as an entity, you need to incorporate it. This is accomplished by filing Articles of Incorporation with your state.
Many states provide an online option for incorporating your organization, and it can be tempting to use this option for its apparent efficiency. However, typical online forms do not include the required language for a nonprofit to qualify as a tax-exempt organization under Section 501(c)(3) of the Internal Revenue Code. Therefore, it is best to not use the online form, but instead seek an attorney who specializes in nonprofit organizations to help you.
The information you will need for incorporation includes:
There is a nominal filing fee charged by the state to record your Articles of Incorporation.
Step #3 Obtain an Employer Identification Number (EIN).
Your organization’s EIN is its social security number – it is the number that identifies your organization for all government filings. You obtain your EIN through the IRS website:
The form must be completed by a person who controls, manages or directs the organization (i.e., the president). Upon completing the online form, you receive your EIN immediately. There is no charge for obtaining an EIN.
Step #4 Open a bank account in the name of your charitable organization.
Once you have your EIN, you should open a bank account in the name of your charitable organization. Keep records of the seed money used to open the account; if this is a loan to the organization, you will need to keep track of that fact and when it is repaid. If the seed money is composed of donations, track the source of those donations.
Step #5 File Form 1023-EZ, “Streamlined Application for Recognition of Exemption Under Section 501(c)(3) of the Internal Revenue Code.”
Have an attorney help you fill out the 1023-EZ, which is the application for recognition of exemption under 501(c)(3). This form is submitted online directly to the IRS and requires a $275 filing fee.
If approved, the IRS will send you a Determination Letter with important information for your organization. Typically, you receive your Determination Letter within 2-4 weeks. The Determination Letter is a critical document for your organization – keep it with your core documents, as donors may ask to see a copy of it.
Step #6 Draft Bylaws.
Bylaws are an internal document that sets out the day-to-day operation of your organization. You can begin with simple bylaws that specify key facets of your organization, such as:
Your bylaws are not recorded with the state, but you should keep them with the other key organizational documents for your nonprofit.
Step #7 Apply for Charitable Organization credentials with any state(s) within which you solicit donations.
Each state regulates charities that solicit donations within their borders, and each state sets its own threshold for registering. The trigger here is where your donations originate. For example, if you have donors in Minnesota and Wisconsin, you will likely have to register in both states. Keep good records, and register in the required states.
The filing fee for state registration is typically nominal.
Step #8 Create an internal calendar system to track annual filing requirements with the IRS and state(s).
Congratulations! After completing the above steps, your organization is recognized at the federal and state levels as a nonprofit, charitable organization. Each of these registrations will have ongoing, annual filing requirements in order to keep your registration. It is critical that you create an internal calendar system to track these requirements.
The IRS has many helpful tools at: https://www.irs.gov/charities-and-nonprofits
Your registration states will also have useful resources at their respective website.
2 Optional Steps…
Customize your listing on GuideStar.
Once you receive 501(c)(3) status, you will be automatically included in an online listing of over 2.7 million nonprofit organizations, run by GuideStar: https://www.guidestar.org/
GuideStar provides an online presence for your organization, and as much information as you would like to share on the platform. It also provides certification levels, as an indication of your transparency and is a useful marketing and fundraising tool. You can include a link to your website and “donate” button right on the GuideStar listing.
Obtain a Certificate of Exempt Status (CES), which allows you to avoid paying sales tax on purchases for the nonprofit organization.
If you will be making substantial purchases within a particular state, you may want to apply for a CES. You would present the CES to a vendor to avoid paying sales tax on purchases from that vendor. The application for a CES is typically done on the state department of revenue website. There is no filing fee.
These steps can help make the process of creating your nonprofit organization a streamlined, enjoyable process. The key is staying organized and finding the right resources.
Intellectual property (IP) is woven into the fabric of a business. Whether protectable via patent, trademark, trade secret or copyright, this property can be a valuable asset when properly maintained.
IP rights can be created before a business is formed. For example, advances in technology can give rise to patentable inventions, and company names and/or brand names can give rise to trademark rights. As a business develops and grows, these IP rights may grow and develop along with the business.
It is critical to properly identify IP as it is created, and take continuous steps to protect the rights that arise with it. Failure to do so can compromise your rights. Many large companies have mechanisms in place to continuously monitor and secure IP rights. However, for many medium- and small-sized companies, and particularly start-ups, this task can seem daunting.
In my practice, I have often observed companies of various sizes overlook IP ownership records – both for their own intellectual property, and for property they purchase from others. This has the potential to create complications for the IP portfolio, or in the case of trademarks, could even destroy rights.
Here are 5 important steps your company can take today to maintain clear IP ownership records and maximize value:
1. Periodically review your business to identify patent, trademark, know how, and/or copyright that is valuable to your company. Depending upon your business, this review can take place at regular intervals to allow you to identify intellectual property before it becomes public. Decide how you want to protect that IP, keeping in mind that a combination of patent, trademark, copyright and/or trade secret may provide the best protection.
2. Obtain assignments promptly when IP is created. Employment contracts should include a clause obligating the employee to assign any IP created during their employment with the company. Under this umbrella obligation, there are certain triggers that should cause you to review ownership records for innovations:
3. When a business transaction occurs that may impact IP, do your due diligence to identify all IP impacted in the transaction. Take stock of all IP, including patents, patent applications, statutory invention registrations, trademarks (or service marks), trademark/service mark applications, copyright, trade secret and know how. Determine the scope of rights to be conveyed in the transaction, in terms of technology, geographic scope, market, and the like. Will this be a license or assignment? It is important to have intellectual property counsel assist you with the IP aspect of larger business transactions; your IP counsel can work with your business attorney so that IP aspects are adequately addressed in your overall agreement.
4. When a business transaction includes IP agreements (such as patent or trademark assignments), include those IP agreements as schedules, and have those IP agreements executed concurrently with the main business transaction. A separate schedule for each IP agreement is ideal, for reasons noted below. Executing all relevant agreements involved in an asset purchase (or other business agreement) at one time makes the entire process much more efficient, since the parties are at the table and executing the overall business transaction. If the IP agreements are put off until later, it may be more difficult to track down the required parties.
5. Record any IP assignments promptly with the relevant IP Offices. It is important to file assignment documents in the USPTO, U.S. Copyright Office, and other IP registries to maintain updated chain of title for all IP assets. The requirements of IP registries for recording assignment documents vary across jurisdictions, so you may need to coordinate with local counsel in each applicable jurisdiction to ensure the assignment documents comply with all formalities. For example, if the IP portfolio includes rights in foreign countries, you may need to engage counsel in each of those countries to assist with recording ownership rights. Once an assignment has been recorded in the USPTO, the records become public. Because of the public nature of assignment recordation, and the requirements unique to patent versus trademark assignments, I prefer to keep each agreement as a separate schedule. Recordation is a simple procedure, and it creates a public record that clarifies chain of title to the property.
Careful monitoring of intellectual property rights and ownership records can help you maximize these important business assets. These 5 steps can be a good start.
When Time is of the Essence: 5 Tools to Accelerate Prosecution of your Patent Application in the U.S. Patent Office
As any inventor knows, obtaining a patent can be a long process.
According to the U.S. Patent Office (USPTO) FY 2018 Performance and Accountability Report, the average time from the date an application is filed until it receives an initial patentability determination from the patent examiner is 15.8 months. On average, it takes almost 2 years (23.8 months) to reach a final disposition of your patent application – either allowance or abandonment. Actual times vary depending upon the art unit to which your application is assigned, and the nature of your technology.
The USPTO continues to have a hefty backlog of unexamined patent applications – 522,149 at the end of FY 2018.
Given this overwhelming caseload within the USPTO, it is understandable that examination can be a lengthy ordeal. However, in some cases, you may want your patent to issue quickly for business reasons.
This article highlights 5 tools you can use to accelerate examination of your patent application. Each tool comes with special considerations.
1. General interview practice
One method I routinely employ to streamline examination is to request interviews with Examiners assigned to my clients’ cases. When I began practice in the 1990s, this interview practice was done in-person or via phone. These days, it is most common to conduct interviews via phone or teleconference.
Oftentimes, speaking with the Examiner to explore their objections can reveal pathways to allowance of a patent. This is the most cost-effective and efficient manner to expedite any patent case. The Patent Office does not charge any fee for interviewing a patent examiner.
2. Patent Prosecution Highway (PPH)
Another cost-effective way to speed up issuance of a patent through the USPTO is to use the Patent Prosecution Highway (PPH). This tool is available if you have corresponding patent applications filed in countries outside the U.S.
Under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the patent owner may request fast track examination of corresponding claims in a corresponding patent application that is pending in a second patent office. In other words, if the European Patent Office allows your application in Europe, you can inform the USPTO about the allowance and ask the Office to fast track your U.S. case in light of the allowed European case.
There is no fee to request participation in the PPH program. At the time of this writing there are well over 30 PPH participating offices, including the EPO, Canada, Australia, China, Germany, Japan, the UK, and New Zealand.
One consideration for this program is that you need to certify that the claims in your U.S. application sufficiently correspond to the patentable/allowable claims from the other patent office. Therefore, you need to be satisfied with the claim scope you obtained in the first patent office. If you want to pursue different claim scope, do not use this option.
3. Track I – Prioritized Examination - $$
Prioritized Examination (PE) is a procedure whereby you pay additional fees to move your case up in line for examination. The USPTO will only grant 10,000 requests for PE within each fiscal year. To find out if this limit has been reached in the current year, and/or to see current program statistics, see the Patents Dashboard.
For your application to be eligible for PE, it must include no more than 4 independent claims, 30 total claims, and no multiple dependent claims. If your case is a national stage entry, you will have to file a by-pass continuation application under 35 U.S.C. 111(a) that claims the benefit of the earlier international application under 35 U.S.C. 365 (national stage filings are not eligible per se).
The Track I filing fees are $4,140, on top of the regular USPTO Patent Application filing fees due (Basic Filing Fee, Search Fee and Examination Fee). Small and micro entity fee reductions are available.
If your application is accepted into the Track I program, the USPTO’s goal is to provide a final disposition within 12 months of prioritized status being granted.
4. Petition for Accelerated Exam – Additional filing requirements
The Accelerated Examination (AE) program also aims to complete examination of an application within 12 months from the filing date of the application. Unlike the Track I option, however, this tool requires significant extra paperwork and case preparation.
The most important feature of this option is the requirement that the patent applicant conduct a preexamination search of U.S. patents and patent application publications, foreign patent documents, and non-patent literature. In addition, you must provide an accelerated examination support document that includes:
There are several additional requirements regarding the documents that must be filed, and the amount and structure of claims for eligible applications.
Thus, while this option does not include the additional filing fees required under Track I, the amount of time you will need to invest to prepare the required filing materials may meet or exceed the Track I filing fees.
5. Petition to Make Special – Circumstances
This tool is available for patent applications within special circumstances, namely:
There is no additional fee for Petitions to Make Special, but you must prove the circumstances that form the basis for the petition. For instance:
These 5 tools may help you advance your patent application more quickly through the Patent Office. If your application is accepted into one of the programs, you may need to meet additional ongoing requirements during prosecution.
The above information is fairly general in nature, and specific additional requirements may apply in your case. Consult with a registered patent attorney for more information about your individual case, and which tool(s) may be best for you.
It is important to thoroughly review the Patent Term Adjustment (PTA) calculation when your U.S. patent issues. This was illustrated in the Federal Circuit Court of Appeals decision yesterday in Supernus Pharmaceuticals, Inc. v. Andrei Iancu (January 23, 2019).
Patent Term Adjustment (“PTA”)
The term of a patent is 20 years from the earliest U.S. filing date. Because the term includes the period during which the application is pending before the PTO, the Patent Office has the authority to adjust the term of a patent by adding days to account for prosecution delays caused by the Office. Such adjustments are favorable to the patentee because they extend the life of the patent. Correspondingly, the PTO can reduce the PTA in order to account for delays caused by the applicant.
Before delving into the details, the basic gist of the Supernus case involved a supplemental filing by a patent applicant, and the impact that filing had on the PTA when the patent ultimately issued. The supplemental filing was made to disclose information from a foreign counterpart application. By its nature, this information was unknown to the patent applicant (and indeed did not even exist) for a significant amount of time during pendency of the U.S. application. When calculating “applicant delays” to reduce PTA for the U.S. patent, the PTO counted the time from the date an RCE was filed by the applicant (which preceded the foreign action by 546 days), to the date the patent applicant disclosed it to the USPTO.
This case discusses some fundamental questions relating to PTA: what counts as delay on the part of applicant, and how does the PTO calculate that delay?
For each patent, the PTA determination is stated on the Issue Notification Letter. It is important to review that determination, and raise any objections, promptly.
Supernus v. Iancu
The case involved U.S. Patent No. 8,747,897, titled “Osmotic Drug Delivery System.” Supernus filed the application on April 27, 2006, followed by lengthy prosecution that included an RCE filed in February 2011, and ended with the ‘897 patent issuing on June 10, 2014.
As is often the case, Supernus had a parallel European patent application pending. In that European case, a third party filed a Notice of Opposition on August 21, 2012. European counsel notified Supernus of the Opposition 21 days later, on September 11, 2012. On November 29, Supernus filed a supplemental Information Disclosure to disclose the Opposition and cited references to the USPTO.
Relevant dates are shown here:
In calculating term adjustment for the patent, the PTO reduced the PTA by 886 days for applicant delay. Supernus objected to 646 days that were assessed for the period between the February 22, 2011 RCE filing and the November 29, 2012 submission of the supplemental IDS. Thus, the entire period between the filing of the RCE and the supplemental IDS was counted as “applicant delay” against the PTA for this patent, despite the fact that the opposition did not even exist until August 2012.
Supernus filed a request for reconsideration of the PTA, which the USPTO rejected. Supernus then appealed to the U.S. District Court for the Eastern District of Virginia, which ruled in favor of the PTO. The case was then appealed to the Federal Circuit.
Supernus argued, and the PTO did not dispute, that Supernus could not have undertaken any efforts to conclude prosecution of the patent application during the 546-day period between the filing of the RCE on February 22, 2011, and the EPO’s notification of the European Opposition on August 21, 2012. The Federal Circuit stated the precise question before it was “whether the USPTO may reduce PTA by a period that exceeds the ‘time during which the applicant failed to engage in reasonable efforts to conclude prosecution.’” The Federal Circuit reversed the district court and agreed with Supernus.
The Federal Circuit held:
“On the basis of the plain language of the statute, we hold that the USPTO may not count as applicant delay a period of time during which there was no action that the applicant could take to conclude prosecution of the patent. Doing so would exceed the time during which the applicant failed to engage in reasonable efforts.”
The Federal Circuit found the PTA statute imposed two limitations on the amount of time that the USPTO can use as “applicant delay” for purposes of reducing PTA:
Thus, the statutory period of PTA reduction must be the same number of days as the period from the beginning to the end of the applicant’s failure to engage in reasonable efforts to conclude prosecution. In the Supernus case, there was no action Supernus could have taken to advance prosecution of the patent during the 546-day period, particularly because the EPO notice of opposition did not yet exist.
When reviewing PTA for your patent, it is important to confirm any reduction to the PTA is in fact equal to any period of time in which applicant has failed to engage in reasonable efforts to conclude prosecution. Particularly when your application involves foreign counterparts, any reduction should correlate to the specific time period during which applicant failed to engage in reasonable efforts to prosecute the application. Finally, although this case involved post-RCE filings, the principles of this case can apply to any supplemental IDS.
Yesterday, the Supreme Court unanimously held that an inventor’s sale of an invention to a third party who is required to keep the invention confidential may place that invention “on sale” under U.S. patent law, thus precluding patent protection of that invention. Helsinn HealthCare S.A. v. Teva Pharmaceuticals USA, Inc., 568 U.S. (2019).
The case involved Helsinn Healthcare S.A., a Swiss pharmaceutical company that produces Aloxi, a drug that treats chemotherapy-induced nausea and vomiting. Helsinn entered into two agreements with MGI Pharma, Inc., a Minnesota pharmaceutical company that markets and distributes drugs in the U.S. The two agreements, executed in April 2001, included a license agreement and a supply and purchase agreement. Both agreements required MGI to keep confidential any proprietary information received under the agreements.
Of note, the existence of the agreements was publicly disclosed, both through press releases and in SEC filings. However, the specific dosage formulations covered by the agreements was not publicly disclosed.
Nearly two years after signing these agreements with MGI, Helsinn filed a provisional patent application covering the active ingredient in Aloxi. Helsinn subsequently filed other patent applications that claimed priority to the 2003 provisional.
The case turned on the question of whether, under the Leahy-Smith America Invents Act (AIA), an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining patentability of the invention. The Supreme Court unequivocally answered “yes.”
The text of the opinion is relatively short. In authoring the opinion, Justice Thomas first noted that every patent statute since 1836 has included an on-sale bar. Justice Thomas then turned to Supreme Court precedent and acknowledged the specific issue had not been addressed:
“Although this Court has never addressed the precise question presented in this case, our precedents suggest that a sale or offer of sale need not make an invention available to the public.”
Justice Thomas looked to Federal Circuit precedent as explicitly recognizing this implicit thread running through Supreme Court jurisprudence:
"The Federal Circuit – which has ‘exclusive jurisdiction’ over patent appeals … has made explicit what was implicit in our precedents. It has long held that ‘secret sales’ can invalidate a patent.”
Interestingly, the two Federal Circuit cases cited here go further than the Helsinn fact pattern, in that they involve sales that were kept completely secret.
After reviewing statutory language and case law, Justice Thomas concluded that Congress did not alter the meaning of “on sale” when it enacted the AIA. Thus, in the Court’s view, this decision is merely following the law as it stands.
Pharmaceutical and biotech companies often face this scenario, where they seek business partnerships to formulate, run clinical trials, and/or produce their products. In light of this decision, it remains critically important that patent applications be filed before such license and/or supply purchase agreements are executed.
Design patents can be valuable tools to prevent your competitors from copying your innovations and producing counterfeit products or knock-offs. As part of your intellectual property strategy, it might be advisable to protect your innovation with both design and utility patents.
What is a design patent?
As a lifelong swimmer, I will use this design patent obtained by Roka Sports, Inc. as an illustration of how to successfully use design and utility patent protection. This design patent issued in January 2018 for “Swimming Goggles with Retroscopic Lens.”
As you can see from the example, the design patent includes one claim: “The ornamental design for swimming goggles with retroscopic lens, as shown and described.” The scope of the patent is defined by the design illustrated in the 7 figures within the patent.
Design patents cover the appearance of an article. This means a design patent can cover the configuration or shape of an article, the surface ornamentation applied to an article, or the combination of configuration and surface ornamentation. To be protectable, the design must be a definite, preconceived thing that is capable of reproduction and not merely the chance result of a method.
As I write this blog, over 2,800 design patents have been granted so far in 2018. Some examples of these design patents include:
toys, lighting fixtures, faucets, golf clubs, automotive components (wheels, headlights, muffler, dashboards, etc.), cameras, display screens, cases for electronic devices (such as cell phones), tires, audio equipment (including microphones and speakers), jewelry, containers (such as bottles for beverages, floral containers, etc.), tools, and shoes.
How is a design patent different from a utility patent?
In contrast to the above, utility patents protect the way an article works.
Keeping with the swimming goggles example, here is a recent Roka Sports utility patent. As you can see, the subject is swimming goggles with a retroscopic lens, but the description is much more detailed regarding how the goggles are made and used, and there are many detailed claims. The scope of patent protection is defined by the 32 claims of the patent.
This Roka Sports example illustrates how you can use both design and utility patents to protect your inventions, so long as your innovation has both functional and ornamental characteristics.
Some other main differences between design and utility patents include:
When considering how to protect your innovations, consider whether a design patent might be useful for you. Design patents can provide significant protection along with utility patents, trademark, copyright and trade secret.
The U.S. Court of Appeals for the 5th Circuit recently considered an entertaining case. Viacom, the owner of the wildly popular “SpongeBob SquarePants” television series, sought to prevent a third party from opening a restaurant under the name “The Krusty Krab.”
Krabby Patties, anyone?
As millions of people know, Viacom launched the “SpongeBob SquarePants” television series in 1999. Since that time, Viacom has expanded the “SpongeBob” concept into two feature films and a wide variety of licensed products. All of these ventures prominently feature The Krusty Krab fast food restaurant.
Notably, prior to the lawsuit in question, Viacom had not sought to register The Krusty Krab as a trademark.
In 2014, IJR Capital Investments decided to open seafood restaurants in California and Texas under the name The Krusty Krab. Subsequently, IJR filed a trademark application in the U.S. Trademark Office for THE KRUSTY KRAB.
Upon learning of IJR’s trademark application and restaurant plans, Viacom sent a cease and desist letter in November 2015. IJR refused to cease use of The Krusty Krab, and Viacom subsequently filed a lawsuit in January 2016.
A central legal question within the case was whether fictional elements of a television show can be protectable trademarks. More specifically, is The Krusty Krab a protectable trademark?
As a threshold issue, an important question in the case was whether specific elements from within a television show - as opposed to the title of the show itself – receive trademark protection. In deciding this issue, the court looked to previous decisions from other courts that found protectable trademark rights in Conan (from “Conan the Barbarian”), the General Lee (from “The Dukes of Hazzard”), and the Daily Planet (from “Superman”).
In line with these prior decisions, the court concluded fictional elements in entertainment entities can be protected as trademarks.
Turning to the Viacom case, the salient question was whether The Krusty Krab mark, as used, will be recognized in itself as an indication of origin for the particular product or service. The mark must create a separate and distinct commercial impression to perform the trademark function of identifying the source.
The court concluded that Viacom uses The Krusty Krab as a source identifier and therefore owns the mark.
In support of its decision, the court reasoned that the Krusty Krab’s central role in the multibillion-dollar SpongeBob franchise, coupled with the consistent use of the mark on licensed products establishes ownership of the mark because of its immediate recognition as an identifier of Viacom as the source for goods and services.
Since filing the lawsuit, Viacom has filed three trademark applications for “KRUSTY KRAB” for some diverse goods/services, such as plastic cake decorations, aquarium ornaments, and providing a website featuring general interest entertainment information related to television programs and cartoons for entertainment purposes.
Effective June 1st, the U.S. Patent Office updated its fee schedule to reflect an increase in the search fee for international patent applications that designate the Japan Patent Office (JPO) as International Searching Authority. The search fee increased from $1,385 to $1,465.
The current fee schedule for all International Searching Authorities is:
For patent applicants, designating the USPTO as ISA provides the opportunity to qualify for reduced fees (small entity or micro entity). However, cost should be just one of the factors considered when deciding which ISA to designate for a patent application.
Many of my clients opt for a foreign patent office as ISA based upon their potential markets. Not only will the search be different in scope, but it may be more relevant if the subject technology primarily resides in a country outside the United States.
The European Patent Office remains the most expensive option for ISA, while Australia, Singapore and Japan remain in an intermediate cluster.
The choice of ISA could impact a patent applicant’s future prosecution, both within the United States and globally. Cost, value, potential markets, and technical relevance are important factors to consider when selecting an International Searching Authority.
This month, Weaver Legal and Consulting is 5 years old!
Weaver Legal was founded in 2013 based upon 16 years of intellectual property (IP) experience in both private and corporate practice.
As a full-service intellectual property firm, Weaver Legal utilizes all areas of IP, including patent, trademark, trade secret and copyright to protect your valuable ideas. Here are some highlights of my practice:
Global legal practice
on 5 continents
Representative patent technologies:
● Medical devices
● Crosslinking agents for coating technologies
● Drug release coatings
● Implantable three-dimensional scaffolds
● Neural transfection technology
● Cell culture devices and coatings
● Scaffolds for electrically excitable cells
● Polymer coating compositions
● Composite technology – fabric &
● Desiccant materials
● Fire suppression compositions
Representative trademark industries:
● Cell culture devices
● Polymer coating compositions
● Medical device coatings
● Chemical reagents
● Bakery services
● Café services
● Retail services
● Composite technologies
● Hormone therapy services
● Fire extinguishing compositions
Included in the 2017 Wisconsin Access to Justice Commission Pro Bono Honor Society.
Pro bono legal work includes:
● New local business start-ups
● New & existing nonprofit organizations
in Wisconsin and Minnesota
These first 5 years have brought much excitement and growth for Weaver Legal, and I can’t wait to see what the next 5 years bring.
How can I help you?
Yesterday, the U.S. Patent and Trademark Office (USPTO) published proposed amendments to the Rules of Practice in Trademark Cases. The proposed changes are significant for anyone who deals with the Trademark Office directly, particularly trademark owners who choose to work with the USPTO without an attorney.
See the Notice of Proposed Rulemaking here.
First, a little background
When I began practicing law in a Minneapolis firm in the 1990s, we were still filing trademark applications and related documents on paper. Early in my career, I remember the USPTO introducing the Trademark Electronic Application System (TEAS), which allowed us to file trademark applications electronically.
This was followed by the Trademark Status and Document Retrieval (TSDR) system, where we could check the status of our trademark cases and view electronic records within the Office. These developments have streamlined the trademark application process and allowed trademark owners to manage their marks efficiently and effectively.
The USPTO continues to strive to make the trademark application, registration, and maintenance process efficient and cost-effective. According to the USPTO, over 99% of applications under §1 and §44 of the Trademark Act are currently filed electronically. However, only about 87% of these applications are processed electronically end-to-end. In a push to convert the entire process to an electronic system, the USPTO has proposed to amend its Rules of Practice to require electronic filing through application prosecution and post-registration.
The USPTO’s proposed Rules would make almost all communication with the Trademark Office electronic. Specifically, the proposed amendments would:
Under these new rules, trademark applicants and registrants would be required to not only file the original application electronically through TEAS, but also submit all future correspondence relating to their applications or registrations through TEAS. Such correspondence includes, for example:
Regarding item #3, the email address you provide to the Office will be the address where the Office sends all correspondence relating to your trademark.
In my practice, I often communicate directly with Trademark Examining Attorneys to resolve minor issues over the phone and/or through email. This practice is highly efficient and allows me to obtain trademark registrations for my clients very quickly. The new Rules would allow trademark owners and attorneys to continue this type of practice.
These proposed Rules are open for comment through July 30, 2018.
Potential Risks of Electronic-Only Processing
The proposed rules introduce risks for trademark owners who handle their applications and registrations themselves. Under the new rules, the USPTO would send all correspondence via email. If an email transmission fails because, for example, the user’s mailbox is full, the user provided an incorrect (or outdated) email address, or the email provider has a service outage, the USPTO will not attempt to contact the correspondent by other means.
This places the burden of keeping on top of trademark status squarely on the trademark owner. If the USPTO sent you an email, but you did not receive it, you are not excused from knowing what was in that communication.
The proposed rules do provide some very limited scenarios under which the Office would consider paper correspondence: specific foreign applicants (designated under a treaty), and specimens for scent, flavor, or other non-traditional trademarks. There is also a procedure to petition the Office to accept paper submissions. However, these exceptions and petition procedures are limited.
In light of these proposed rules, trademark owners should take steps to prepare for the possibility of electronic-only procedures at the Office. Here are 5 tips to consider:
Regarding item #4, the USPTO’s policy has always been that service outages do not necessarily relieve you of your obligation to submit documents on time. So, for example, if you wait until the date a submission is due to the Office, and the electronic service unexpectedly goes out (for example, your Internet, or even the USPTO TEAS system), you are not excused from complying with the deadline.
Many of my clients have heard my cautionary tales of trademark owners who waited until a deadline to provide me with filing documents, only to have either the Internet service or TEAS go down. You can easily avoid unnecessary costs and hassle by filing documents before the deadline.
Is your business ready for electronic filing for all of your trademark matters? You may want to consult a trademark attorney to provide you with guidance. Perhaps it is time to engage an attorney to manage your trademarks for your company. In addition to experience handling matters before the USPTO, attorneys have docketing systems that monitor Trademark Office records and track deadlines.
Your trademarks are valuable assets for your company. Make sure you take steps to protect those assets.