USPTO Tag

by Kim, Lahey & Killough Law Firm

Alternative Legal Service Providers

headshot of attorney Doug Kim, founder of Kim Lahey & KilloughShould They Be “Alternative?”

by Doug Kim

This article appeared the January 2024 issue of SC Lawyer magazine. Reprinted with permission of the South Carolina Bar. 

For the past several years, the legal profession has been searching for ways to respond to staffing shortages, increased complexity in legal matters, and clients’ demand for cost control and faster response times. The use of Alternative Legal Service Providers (ALSPs) has been one way to meet these challenges. Failing to understand, explore and, when applicable, properly incorporate ALSPs into your legal practice will unnecessarily diminish the value you can provide to clients and companies. This is especially true when the ALSP leverages modern technology for document review and signature, e-discovery and analysis, litigation support, and regulatory and compliance projects. The introduction of artificial intelligence (AI) makes the decision to adopt or ignore ALSP even more timely and relevant to the modern law practice.

ALSPs can be very beneficial when properly implemented, as they provide non-traditional ways, even revolutionary ways, to provide legal services. There is also no question that the industry is growing. An online article by Thomson Reuters in January of 2023 stated that the ALSPs comprise a $20.6 billion portion of the legal market. The article noted that the rapidly increased use of ALSPs is causing a blurring between law firms, legal departments, and technology companies. The offerings for alternative legal services come in many forms: online legal platforms, virtual law firms, and artificial intelligence technologies that can be used for document review and even document drafting. As client demands increase, ALSPs can help firms and companies meet this demand by providing non-traditional and even disruptive solutions. We have all seen the change in the legal industry, especially post COVID, where digital transformation was increased, remote working became the norm, physical documents were the exception, and access to information dramatically increased. Proper use of alternative legal services can assist the law firm or company transition into the digital era.

One simple example is the shift to e-signature. While the algorithm that was generally used to create the first e-signatures was created in 1977, it was not until the Electronic Signatures in Global and National Commerce (ESIGN) Act of 2000 that these signatures were allowed to be legally binding and therefore an option for law firms. E-signatures are also consistent with the move to the paperless office. E-signatures offer fewer signing errors, improved security, increased response time, client convenience, and lower costs. However, adopting e-signatures comes with requirements such as having the client accept doing business electronically, allowing a wet signature option, showing a clear intent to sign, and receiving a copy of the completed, signed document. The point is that even with something as simple as e-signatures, there are practical, operational, and regulatory requirements that must be met to implement this alternative to the traditional signature. ALSPs cannot just be adopted blindly.

ALSPs can also be thought of as “legal outsourcing”, which is the practice of law firms or corporations engaging with third parties that provide legal support. Domestically, this is outsourcing and internationally it is offshoring. In the early 2000s, tasks that were assigned to these third parties included document review, legal research and writing, drafting of pleadings and briefs, and patent services. For example, companies offered to draft patent applications for substantially less than the domestic attorney fees by using offshored authors. These third parties offered substantially reduced costs, improved turnaround and increased resources to those law firms and companies that sought their services. However, this practice was not without risk.

In 2008, the United States Patent and Trademark Office (USPTO) recognized that this offshoring was occurring and issued a notice which stated, “The USPTO has become aware that a number of law firms or service provider companies located in foreign countries are sending solicitations to U.S. registered patent practitioners offering their services in connection with the preparation of patent applications to be filed in the United States.” The USPTO “reminded” inventors and patent attorneys that “the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.” The risk was that using these ALSPs may cause a violation of the Export Administration Regulations governing exports of dual-use commodities, software, and technology, including technical data.

computer software graphicThe lesson here is that while there can be substantial cost savings with an ALSP, a strategy should be put in place to properly manage the ALSP, project, information, data, and regulations.

One lesson can be learned from a now infamous proceeding before the USPTO involving ALSPs Abtach Ltd., 360 Digital Marketing LLC, and RetroCube LLC. These ALSPs purported to assist trademark filers with the federal trademark application process. On November 3, 2021, the USPTO issued a show cause order stating that it had reason to believe that these and related companies were violating the USPTO’s rules of practice, engaging in the unauthorized practice of law, and providing false, fictitious, or fraudulent information in thousands of trademark submissions to the USPTO. Among the violations, the USPTO alleged that the companies failed to follow the rule that all documents submitted to the USPTO in a trademark matter must be personally signed by the named signatory. When the companies did not adequately respond to the USPTO’s show cause order, the USPTO imposed sanctions on the companies, including a bar on further communication with the USPTO, permanent deactivation of their USPTO accounts, and disallowance of any future accounts.  However, this was not the worst of it. The order terminated “all trademark application proceedings involving submissions by Respondents or filed through a USPTO.gov account registered to, associated with, or controlled by Respondents,” leaving thousands of applicants with paid for, but cancelled trademark applications. Several South Carolina applicants were caught in this proceeding. Since federal trademark rights can begin from the filing date, this caused substantial legal damages to thousands of entities. In this case, the use of these ALSPs resulted in substantially more harm than any saving could overcome. The use of an ALSP without the guidance of a practicing trademark attorney was very damaging indeed.

When considering an ALSP, there is always the issue of unauthorized practice of law, as shown in the USPTO proceeding. South Carolina has addressed one business model of an ALSP (Legal Zoom) in a 2012 proceeding and found that “Legal Zoom’s business practices, as reflected in the Settlement Agreement and the Affidavit of Edward Hartman, do not constitute the practice of law.” Nevertheless, each use and implementation is different, and this is an area where the specific ALSP in use will determine the outcome.

Practical and ethical considerations require lawyers and firms to properly investigate and implement ALSPs consistent with the profession’s ethical obligations. Comment 8 to Rule 1.1 of the Rules of Professional Conduct states that a lawyer, to comply with the requirement of competency, should “keep abreast of changes in the law and its practice, including a reasonable understanding of the benefits and risks associated with technology the lawyer uses to provide services to clients or to store or transmit information related to the representation of a client.” Rule 1.4 requires transparent communication so clients can make informed decisions regarding representation. Rule 1.6(a) states, “A lawyer shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation….” Rule 1.6(c) states, “A lawyer shall make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client.” When using an ALSP, even for normal tasks such as document review, e-discovery and data rooms, the law firm has several obligations under the application of Rules 1.1, 1.4 and 1.6. Consider an ALSP that provides e-discovery and document review. First, the lawyer has an obligation to understand the services and operations of the ALSP in sufficient detail to ensure that any information shared remains confidential (Rules 1.1 and 1.6). Second, the lawyer has an obligation to communicate and inform the client that the ALSP is being used and what information is being shared (Rule 1.4). Third, the lawyer has an obligation to stay abreast of the changes in services and operations of the ALSP in the event circumstance’s change. For example, SLPA that are technology-based companies can be subject to mergers, acquisitions, and reorganizations that can impact the ALSP operations. On August 29, 2023, the “legal technology” company Reveal published a press release stating that it acquired two other e-discovery companies, Logikcull and IPRO. Reveal provides the legal industry with tools for document review and other services. The acquisition resulted in over 4,000 customers and employees in more than two dozen countries. Logikcull, initially a United States company, now has its span globally. In the event that a law firm or client used Logikcull for a legal hold, extra steps now have to be taken to be compliant with the International Traffic in Arms Regulations (ITAR), because ITAR covered technical information cannot be transmitted without certain permissions and only to certain counties. Failing to understand the services and operations of the ALSPs of this transaction can result in not only ethical violations, but regulatory ones as well. The example of violating ITAR is the risk that the Rules of Professional Conduct are designed to prevent.

computer circuit mirrored image of businessman's profile headshot ai illustrationThe use of technology, and investigating ALSPs, is not complete without a discussion of artificial intelligence. The risks associated with use of AI can create significant negative impacts on the client so that its use falls under this rule.

First, when we discuss AI, we should classify the type of AI that is being used. Generally, there are three types: analytical, predictive, and generative.

Analytical AI is generally directed to analyzing and interpreting data to provide insights, patterns, and meaningful information. An ALSP using analytical AI may be the easiest to implement since it can streamline document review, reduce errors, and improve efficiency. This is especially true when using AI to scan documents for key terms and flag issues for an attorney to review. Understanding the ALSP using analytical AI (and informing the client) can quickly lead to savings and improved accuracy.

Predictive AI seeks to forecast or predict future events or outcomes based on historical data and patterns. This use may be the riskiest for some firms because of the presence of bias in the very AI model itself, the large quantity of data required, the uncertainty of specific outcomes and assumptions made in the learning model about the subject matter. For example, one AI application, when presented with a potential juror name, searches public data related to the prospective juror, correlates the data with known patterns of human behavior, and provides a detailed profile of the person’s personality type and a summary of their views and biases. This application seeks to provide insight into the juror according to its AI model so that attorneys can use this information to predict biases in a potential juror. However, since AI has to be “taught” how to think, the AI may only be providing an appearance of usefulness, include bias and discrimination concerns, and even may violate the constitutional mandate not to use gender or race when selecting juries. Since the actual operation of the AI model is constantly changing and unknown, there is substantial risk with AI for this predictive application.

Nevertheless, using an ALSP with predictive AI that analyzes data to predict case outcomes and legal trends, combined with a lawyer’s oversight, can be a powerful tool. Using such an ALSP with predictive AI can allow a lawyer to make informed predictions about case success, analyze settlement offers, and develop mediation, settlement, and litigation strategies. Predictive AI can be used to review case facts, prior rulings, and judge behavior, potentially allowing the lawyer to better prepare strategic decisions concerning trial tactics, negotiations, or settlements. Predictive AI has the potential to enhance or even replace the mock jury process. It is important to be aware and understand that every model, technique, and process has its limitations when implementing it.

Generative AI is used to create new content, documents or other material and typically provides newly created content according to patterns and knowledge learned from existing data. Its use can include anything from litigation documents to emails. Again, understanding the process and communicating that it is being used to the client when deploying generative AI is critical to its proper implementation. For example, in patent law, a public disclosure can start a clock running in which the inventor has to file a patent application within twelve months or risk losing the ability to seek patent protection. ChatGPT is a public forum, so using this ALSP to draft a patent application would result in a public disclosure.

Even AI models that claim to keep confidential the information that is provided (e.g., seeking to avoid public disclosure) have issues with their operations. For example, patent drafting AI software states on its website that data is sent to Amazon Web Services (AWS), is encrypted, and the patent documents are not stored except as necessary to provide the services. While this is a good first step, the privacy policy states that the company may share the information collected from you with third-party companies, such as Amazon Web Services, Google, and LinkedIn. One has to wonder how the data remains confidential with these contradictory representations. Understanding these processes and policies is important to being able to communicate to a client when such a service is used.

We also know that there have been missteps with the use of generative AI, including the now well-known fine of $5,000.00 assessed against a lawyer who used ChatGPT to write an affidavit and brief, including six case cites that proved to be nonexistent cases. While it may appear that this is a gross dereliction of duty, the attorney explained that he was unaware that ChatGPT could provide false information (e.g., hallucinations). It is difficult to reconcile this explanation with the requirements of Rule 1.1, comment [8].

When using generative AI for a client, a detailed understanding of the ALSP policies and process is critical to ensure that confidentiality is maintained.
When selecting an ALSP and implementing it in your practice, there are several key points that are needed:

  • Understanding how the ALSP receives, stores, and otherwise manages the data it receives. For example, is the data stored in one location, multiple locations domestically, and/or internationally? Further, the vendors of your vendor can play a role. In one example, a vender was used for data storage and analysis for material that was ITAR controlled. However, a vendor of a vendor was not ITAR compliant creating ethical and regulatory issues.
  • Understanding the ALSP’s policies such as its security policies, disclosure policies, and ability to return or destroy data is important both in operation (and what) as they provide informed consent to the client.
  • Obtaining informed consent from the client can be a requirement in some, if not most, cases. As we see ALSPs continue to invest in technology, the lawyer can capitalize on these new technologies and tools, but not necessarily without the client’s permission.
  • Ensuring confidentiality.
  • Providing oversight so that the lawyer does not blindly rely upon the ALSP since the duty of communications, competence, and confidentiality cannot be delegated. We learned this from the case J-M Mfg. Co. v. McDermott Will & Emery where the client instigated a legal malpractice claim alleging the negligent handling of e-discovery. The client pled that its counsel’s professional duty of care was breached when its counsel failed to supervise its e-discovery vendors and contract lawyers which resulted in the inadvertent production of thousands of non-responsive, privileged documents.

Properly implemented, ALSPs can be used effectively for the benefit of the lawyer and the client, but not without investigations, precautions, and oversight. Unfortunately, there is not a single checklist for this as each ALSP has unique and ever-changing procedures, policies, and processes, especially with the introduction of AI. Nevertheless, cost savings, efficiency, speed, large data access and analysis, and future predictive services can provide the law firm with a competitive advantage without requiring the traditional “team of lawyers.” Planned, controlled and thoughtful implementation of ALSPs is the way of the future. As discovered in the Alternative Legal Services Providers 2023 Report, ALSP use is growing in large part to the ability of the ALSP to provide specialized expertise (e.g., intellectual property portfolio management) and access to technology that is not available within the firm (e.g., artificial intelligence).

Also, AI is not without its entertainment…

Doug: Please write a closing paragraph for an article discussing alternative legal service providers

ChatGPT: In an era marked by rapidly evolving legal demands and the imperative to optimize resources, alternative legal service providers have unquestionably earned their place in the legal landscape. Their innovative approaches, cost-effectiveness, and commitment to efficiency are reshaping the way legal services are delivered and consumed. As clients and law firms alike continue to seek innovative solutions, the rise of ALSPs stands as a testament to the legal industry’s adaptability and responsiveness to change. While traditional law firms remain a cornerstone of the profession, the symbiotic relationship between traditional and alternative legal service providers is fostering a legal ecosystem that not only meets but anticipates the diverse needs of clients in our increasingly complex and dynamic world. The future of the legal industry appears to be one where the combined strengths of both models will continue to drive progress, making legal services more accessible, efficient, and effective for all.

Doug: Now, write it in the voice of a pirate.

ChatGPT: Arrr, me hearties, in this ever-changin’ legal seascape, these here alternative legal service providers be a treasure worth discoverin’! Their swashbucklin’ methods, savvy for savin’ doubloons, and their knack for speedin’ through legal waters be transformin’ the way we handle our legal affairs. As clients and law firms seek new horizons, these ALSPs be showin’ their mettle, provin’ they be a vital part o’ the legal crew. While traditional law firms be anchorin’ the profession, the partnership ‘twixt old salts and these newfangled ALSPs be creatin’ a legal realm that not only meets but anticipates the diverse needs o’ clients in this ever-twistin’ and turnin’ world. The future of the legal sea be one where both models be workin’ in tandem to chart a course towards makin’ legal services more accessible, efficient, and effective for all ye landlubbers!

headshot of Doug Kim, Greenville patent attorneyDoug Kim, a Physics major from Davidson College, began his professional career as a computer programmer and software engineer. His intellectual property career began in 1998 when he combined his business experience with his legal education and was involved with enforcing a client’s patent against multiple infringers. Since then, Doug has created a well-rounded IP practice that provides legal solutions and strategies tailored to each client from multinational corporations to start-ups.

 

 

Endnotes

  1. https://www.thomsonreuters.com/en-us/posts/legal/alsp-report-2023/ (according to the Alternative Legal Services Providers 2023 Report, published in 2023 and conducted June 1 to July
    18, 2022 by the Thomson Reuters Institute, the Center on Ethics and the Legal Profession at Georgetown Law, and the Saïd Business School at the University of Oxford.
  2. 73 CFR 42781
  3. Id.
  4. Id (See MPEP § 140 (8th ed., Rev. 5, Aug. 2006).
  5. 15 CFR Parts 730–774.
  6. https://www.uspto.gov/trademarks/protect/applications-terminated-abtach-360-digital-marketing-retrocube
  7. 37 C.F.R. § 2.193(a); TMEP § 611.01(b).
  8. https://www.uspto.gov/trademarks/protect/applications-terminated-abtach-360-digital-marketing-retrocube
  9. Case No. 2012-208067.
  10. Id.
  11. Rule 1.1 Comment [8].
  12. Rule 1.4 Comment[5].
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Commentary, UncategorizedJanuary 19, 20240 comments
icon for Kim and Lahey law firmby Kim, Lahey & Killough Law Firm

U.S. Patent and Trademark Office releases 2022-2026 Strategic Plan

Plan sets priorities that enable the agency’s new mission and vision

WASHINGTON, DC (June 7, 2023) — The U.S. Patent and Trademark Office (USPTO) today published its 2022-2026 Strategic Plan, completing a planning process that welcomed more than 150 comments on the draft version from the public and USPTO employees.

“We are reimagining the USPTO of the future, an agency that issues, upholds, and protects robust and reliable IP rights that incentivize innovation and bring more ideas to market for and from all,” said Under Secretary of Commerce for Intellectual Property and USPTO Director Kathi Vidal. “Our 2022-2026 Strategic Plan is our path forward for continued success – we thank everyone who provided feedback throughout the planning process to make this plan ambitious, focused, and relevant.”

The new plan outlines the USPTO’s mission-focused strategic goals:
1.    Drive inclusive U.S. innovation and global competitiveness;
2.    Promote the efficient delivery of reliable intellectual property (IP) rights;
3.    Promote the protection of IP against new and persistent threats;
4.    Bring innovation to impact for the public good; and
5.    Generate impactful employee and customer experiences by maximizing agency operations.

The plan directly supports the USPTO’s new mission of driving U.S. innovation, inclusive capitalism, and global competitiveness, and its new vision of unleashing America’s potential, with multiple objectives directly linked to each of these five goals.

For more information on the USPTO 2022-2026 Strategic Plan, visit www.uspto.gov/StrategicPlan.

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UncategorizedJune 8, 20230 comments
icon for Kim and Lahey law firmby Kim, Lahey & Killough Law Firm

European Man Sentenced for Impersonating USPTO

Last week, the United States Department of Justice announced that Viktors Suhorukovs, a citizen of Latvia, was sentenced to more than four years in federal prison and ordered to pay over $4.5 million in restitution after pleading guilty to mail fraud in a multi-million-dollar scheme to defraud owners of U.S. trademark registrations. Suhorukovs established and operated Patent and Trademark Office, LLC, and Patent and Trademark Bureau, LLC. These entities gave the false impression that they were, in fact, the United States Patent and Trademark Office (USPTO), scamming more than 2,900 U.S. trademark registrants out of millions of dollars for inflated, and often fake, renewal fees.  

According to the DOJ, Suhorukovs’ renewal notices misrepresented the trademark registration’s expiration date.  The renewal notices also contained a QR Code which linked the trademark holder directly to the official government USPTO website.  The notices directed the victim to sign and return the notice.  Once the victim signed and returned the renewal notice, Suhorukovs sent the victim an invoice for the renewal service and charged inflated prices for the renewal of the trademark.  Victims would then, unknowingly, send renewal fees to Suhorukovs’ businesses, believing they were dealing with the USPTO.

In the notices and invoices, Suhorukovs represented he would renew the trademark registration, when in fact, he did not or could not renew the registration at the time he represented to the victims that he would because, under applicable law, those trademarks were not yet eligible for renewal.  In addition, under the USPTO’s rules, Suhorukovs could not lawfully file renewal documents on behalf of registrants because he was not a licensed U.S. attorney.

This is one of many schemes that confuse and defraud owners of U.S. registrations with solicitations that are intended to look like official USPTO correspondence. These schemes often falsely promise to take required maintenance actions on behalf of the registration owner, or they scam registrants into paying for services they don’t need.

The USPTO says it works hard to fight these solicitations and assist law enforcement in cases like Suhorukovs’. Learn more about their ongoing efforts to combat scams on the USPTO website, including nine things you can do to protect your trademark application or registration.

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NewsSeptember 20, 20210 comments
icon for Kim and Lahey law firmby Kim, Lahey & Killough Law Firm

Trademark Renewal Scams: A Growing Problem. Don’t be Fooled.

 Anyone who has registered or applied for a trademark knows it eventually must be renewed. Unfortunately, bad actors know this too and are trying to rip you off. According to the US Patent and Trademark Office (USPTO), trademark renewal scams are on the rise. They’re becoming so sophisticated that the USPTO has filed several trademark applications to increase protection for its own brand.

Being on a national trademark register is one of the many benefits of have a federally registered trademark. It allows others to search and find your registration. When other companies are trying to determine if a name is “available,” one of the first places they look is the USPTO database of trademark registrations and pending applications. To keep a trademark registration enforceable, it must be renewed periodically. Generally, the first renewal is five years from registration. The next one in five more years and then every 10 years after that. Unfortunately, bad actors are also looking at the public database. The USPTO says they’re seeing an increasing number of misleading solicitations and trademark filing scams.

The USPTO has also stated that it is “seeing more sophisticated enterprises entering the space” with some scams even impersonating the US Patent and Trademark Office. I know first hand. I received a fraudulent text regarding my trademark just last year. The USPTO has taken steps in the past to curb this misleading and sometimes illegal behavior, including providing scam alerts, working with law enforcement and sanctioning filers who violate the US Patent and Trademark Office rules.

On August 4, 2021, the Department of Commerce (the agency under which the USPTO sits), filed several applications for the federal registration of USPTO marks. The USPTO hopes with a federal registration, it can improve its ability to stop these scams and protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation with the USPTO. In appreciation of the potential conflict of filing an application in its own office (because the application would be examined by the USPTO) the Department of Commerce is the actual applicant.

As we see more and more activity online and with more and more access to information, we can expect these scams to continue. If you receive a notification from a party you do not know (for example, not your law firm) take caution. Some of the known violators call themselves names like:

“Patent and Trademark Office”
“Patent & Trademark Office”
“Patent and Trademark Agency”
“Patent and Trademark Bureau”
“Trademark Compliance Center”
“Trademark Compliance Office”
“Trademark Office LTD”
“United States Trademark Registration Office”

One company in Belize went so far as to attempt to register the mark PATENT & TRADEMARK AGENCY.  In response, the USPTO stated, “Registration is refused because the applied-for mark PATENT & TRADEMARK AGENCY consists of or includes matter which may falsely suggest a connection with a US government agency, specifically, the US Patent and Trademark Office.”

If you have any doubt as to the authenticity, truthfulness or honesty of any communication you receive concerning your trademark registration or application, contact an experienced trademark attorney for assistance.

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UncategorizedAugust 18, 20210 comments
icon for Kim and Lahey law firmby Kim, Lahey & Killough Law Firm

United States Issues Patent Number 11,000,000

USPTO Announces Patent Number 11 Million

WASHINGTON – The United States Patent and Trademark Office (USPTO) today officially issued U.S. patent number 11 million, recognizing an important milestone in American innovation and ingenuity.

“This momentous benchmark is a reminder of the remarkable and enduring tradition of American innovation that has driven our nation forward for generations,” said U.S. Secretary of Commerce Gina Raimondo. “Building our economy back stronger requires new ideas and innovative solutions from every sector. I am proud to recognize patent 11 million, its inventors, and its promise.”

“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone.”

Patent number 11 million, granted to co-inventors Saravana B. Kumar and Jason S. Diedering of 4C Medical Technologies, Inc. in Maple Grove, Minnesota, is for a utility patent that provides a new method for delivering, positioning, and/or repositioning a collapsible and expandable stent frame within a patient’s heart chamber.

“We are incredibly excited and honored to be granted U.S. patent number 11 million for our invention,” said inventor Saravana Kumar. ”The 4C Medical beginning is a true story of American entrepreneurship, where Jason and I worked in a garage many nights and weekends to turn this idea into reality. We could not have gotten here without the support of so many, including my wife Katherine and 4C Medical’s founder, physician Dr. Jeff Chambers. Currently, our team is actively working to demonstrate the benefits of our technology to treat patients with severe mitral regurgitation as part of a U.S. clinical trial.”

“4C Medical’s approach to inventing is simple—we identified a need, created a solution, and demonstrated its benefits. We are a team of highly driven and creative engineers who are committed to bringing lifesaving technologies to people who need it most,” explained inventor Jason Diedering.

Background on the U.S. patent system

Patents predating the Patent Act of 1836 were unnumbered, identifiable only by the name of the patentee and the date of issue. These patents became known as “X-patents” after Patent No. 1 was granted to Senator John Ruggles on July 11, 1836 for a traction wheel for steam locomotives—the first patent issued under the new law, which officially assigned patent numbers. A few months after the Patent Act of 1836 was enacted, a catastrophic fire at the Patent Office destroyed almost all of the records and models related to the X-patents. Efforts to reconstruct the records lost in the fire continue to this day.

Patent 11 million comes three years after the USPTO issued patent number 10 million in 2018. As part of that celebration, the USPTO redesigned the official U.S. patent cover—the seal-and-ribbon document awarded with each patent grant—paying homage to the classic elegance of its predecessors. A list of the patent milestones can be found here.

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NewsMay 12, 20210 comments
icon for Kim and Lahey law firmby Kim, Lahey & Killough Law Firm

New Warning About Trademark Scams Involving Fake Emails & Texts

For years, we’ve been warned not to click links inside emails or text messages, unless we trust the sender. It’s also no secret that scam artists are becoming more refined in their approach, sending emails that look like they’re coming from your bank or credit agency.

Financial institutions aren’t the only ones being spoofed. The United States Patent and Trademark Office is seeing an increase in schemes involving emails and text messages that mimic the USPTO. We know first hand. One of our attorneys received a fraudulent text regarding his trademark just last week.

The USPTO recently issued a warning about emails that appear to originate from its office, but are actually being sent by third parties. Victims of these scams can find themselves out of pocket for large amounts of money or, in some cases, having authorized a third party to take action with respect to the owner’s registrations or pending trademark applications.

Beware of messages that do the following:

  • Spoof the USPTO email address (e.g., noreply@uspto.gov)
  • State that the USPTO has implemented “a new policy” requiring separate registration of clients and that there is a penalty for not complying
  • Provide incorrect USPTO trademark filing information (e.g., incorrect fee information)

What Should You Do?

We strongly advise any client receiving emails that appear to be from the USPTO, not to respond directly about your trademark application or registration. Never pay fees or provide any information to the sender.

Before you take any action, check to see if the communication is legitimate by visiting the USPTO’s Trademark Status & Document Retrieval database. When you enter the trademark application or registration number, it will list all outgoing communications from the USPTO, except for the application filing receipt. If the letter or email you received isn’t listed there, it most likely came from someone else. You can also review examples of misleading notices that are not actually from the USPTO, and a list of known scam artists.

If you think you’ve been targeted by this email scam, you can file a complaint with the Federal Trade Commission. Our team of Intellectual Property attorneys is available to assist you and answer any questions you may have. You can reach us at 864-973-6688.

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News, UncategorizedSeptember 21, 20200 comments
icon for Kim and Lahey law firmby Kim, Lahey & Killough Law Firm

US Patent & Trademark Office Waives Fees in Response to Coronavirus Outbreak

US Patent and Trademark Office waive fees

The United States Patent and Trademark Office (USPTO) issued a notice on March 16th to offer relief for certain inventors and entrepreneurs who were affected by the Coronavirus outbreak. The notice states the USPTO “considers the effects of the Coronavirus outbreak that began in approximately January 2020, to be an extraordinary situation within the meaning of 37 CPR 1.183 and 37 CPR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.”

Patent applicants will be able to file a petition to revive and the PTO will waive the fee for those who were unable to “timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited.”

The petition to revive must include a copy of the notice and a statement that “the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.” The petition must be filed no later than six months after the date the application became abandoned or the reexamination prosecution was terminated or limited in order to be entitled to a waiver of the petition fee under 37 CPR 1. l 7(m).

The USPTO is also waiving fees for trademark applications and registrations that were abandoned or canceled/expired due to inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak, however, the petition must be filed no later than two months of the issue date of the notice of abandonment or cancellation. Download the full notice: coronavirus_relief_ognotice_031620201.

Questions or concerns about your Patents or Trademarks? Call us at 864-973-6688 for a consultation.

 

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NewsMarch 17, 20200 comments