Save the World and Save Some Cash

According to a Federal Register notice of February 8, 2012, the United States Patent and Trademark Office (USPTO) is launching a twelve-month pilot program to incentivize the distribution of patented technologies to address humanitarian needs.  Program judges independent of the USPTO will select award winners from the first 1000 program applications accepted by the USPTO.  Applicants will be assigned to one of four categories: Medical Technology, Food & Nutrition, Clean Technology, and Information Technology.

Awardees will receive a certificate redeemable to accelerate select matters before the USPTO and public recognition for their efforts, including an award ceremony at the USPTO. In the case of prioritized examination of a new patent application, the value of the award will be $4800.00 for a large entity.  In view of the fact that the award is a credit toward future services and is not transferable to others, the program offers the greatest financial incentive to large entities who are active patent filers. 

Applications will be accepted from March 1, 2012, through August 31, 2012. 

More information is available at a website dedicated to this program.

Dot-Anything Domains: good.idea or bad.idea?

Is too much freedom a bad thing?  Established trademark owners may think so, as a result of the relaxation of restrictions for generic top-level domains (gTLDs).  On January 12, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for new gTLDs that are essentially limited only by the imagination of the applicant.  Applicants able to afford the initial $185,000 “evaluation fee” and ongoing maintenance fees will be entitled to coin their own gTLDs to compete with conventional gTLDs such as .com, .net, .org, etc. 

Unfortunately, this expansion of the universe of potential gTLDs places a greater burden on trademark owners to police their marks. ICANN does not accept reservations or pre-registrations based on trademarks, but registries will be required to operate sunrise or intellectual property claims services for the protection of trademarks in the new gTLDs.

While it is possible that wealthy trademark owners will purchase gTLDs identical to their marks (e.g., ".toyota"), it is impractical for trademark owners to purchase rights to their trademarks as second level domains for each of the potentially unlimited number of new gTLDs (e.g., toyota.car, toyota.auto, toyota.suv, etc.).

Hopefully, the high cost of entry will ward off the average cybersquatter and trademark pirate from establishing infringing gTLDs.  Continuous monitoring of developments is recommended nonetheless.

The Leahy-Smith America Invents Act, which was signed into law today by President Obama, constitutes a major overhaul of United States patent law. Changes brought about by the Act will become effective at different times. However, patentees, patent applicants, and patent challengers should immediately reevaluate their business plans and policies in light of these changes. As noted in my firm's "IP Law Alert: Major Overhaul of U.S. Patent Law", issues of initial concern to all businesses (not just technology businesses) include:

• 15 percent surcharge on patent fees effective September 26, 2011.
• "Micro entities" will be entitled to a 75% reduction in patent fees. Small entities other than micro entities continue to be entitled to a 50% reduction in such fees. Micro entities include inventors with incomes less than three times the median household income (i.e., an inventor whose income in 2010 was less than $148,335.00) who have not been named as inventors on more than four previously filed non-provisional U.S. patent applications. Also included within the definition of micro entities are low income organizations assigned rights from such inventors, and institutions of higher education.
• U.S. will move toward a first-to-file system for determining priority of invention.
• New procedures for reviewing and correcting patents will be available starting September 16, 2012.
• Business method patents will be subject to increased scrutiny.
• Patent marking rules have been relaxed.
• The best mode defense to patent infringement charges has been eliminated.

A copy of the Act is posted here.

ARE YOU READY FOR A WALK ON THE WILD SIDE?

Earlier this year, the Internet Corporation for Assigned Names and Numbers (ICANN) approved .XXX as a sponsored top-level domain (sTLD). The .XXX extension is intended for use by the adult entertainment industry.

If you would prefer to keep your trademark out of the virtual red light district of the .XXX domain, the time to act is now. From September 7, 2011 to October 28, 2011, domain registrars will accept applications from trademark owners who want to block the use of their trademarks in the .XXX domain.

You may not want your trademark to take a walk on the wild side, but if you don't act quickly, you may not have any choice.