The Head of the United States Patent and Trade Marks Office Michelle Lee Resigns

Michelle Lee resigned from the US Patent and Trade Marks office (USPTO) on June 6, 2017.

The real reason for her sudden resignation as Director of the remains a mystery. Was she asked to resign? Did she volunteer to resign? As someone who has been in the job for barely two years, her departure leaves a lot of questions unanswered. Was there a scandal that has suddenly come to the fore, which made her position untenable?

This was a lady who had made history by becoming the first woman ever to hold the position of Under Secretary and Director of the USPTO, who is a strong advocate for women and minorities, who had presided over a period of fundamental change in the way that invalid patents were challenged, and one who had the support of many of the Tech giants which dominated much of the US Patents & Trade Marks landscape. So her sudden departure, without warning, after what appeared like a confirmation by the Trump administration barely three months ago is somewhat surprising.

Following news of her departure, Commerce Secretary Wilbur Ross was busy praising her in a statement in which he said she had “worked tirelessly to serve our stakeholders and the American public”…

“worked tirelessly to serve our stakeholders and the American public” – Wilbur Ross

the same man who is rumoured to have interviewed at least three potential candidates to replace her in recent months, as such many in the IP community remained rightly puzzled..

Earlier on in her career, she worked for Keker & Van Nest before becoming a partner at Fenwick & West LLP. She also clerked for former Judge of the Federal Circuit, Paul Michel.

Michelle Lee arguably began honing her career as a senior executive in 2003, when she was employed by Google to head their patents and patent strategy section as deputy general counsel. Here among her notable work included advising the tech giant on it’s acquisition of YouTube and participating in Nortel Networks 2009 $4.5 billion Patent auction.

In 2012, she joined the USPTO as director of the agency’s newly opened Silicon Valley office. Lee became deputy director of the USPTO in 2014, and led it as acting director when the director position was vacant. It was in October 2014 that the then President Barack Obama nominated her as Director, with Senate confirming her in 2015.

When Donald Trump became president, more than 60 companies in the Tech sector including the likes of Amazon, Facebook, Google, Samsung and others sent a letter to the new president and Secretary Ross urging them to keep Lee as Director. And when in March the USPTO responded to a freedom of information request by renowned University of Missouri Law professor Denis Crouch, as to who was the director of the USPTO, it was roundly understood within IP circles that Lee would continue serving.

But Michelle Lee has also presided over a troubled tenure as head of the USPTO. Some of her critics have pointed to her implementation of the Patent Trial and Appeal Board (PTAB) trial inter partes review proceedings as favouring infringers and thus unconscionable. Similarly, there have been accusations that her time at Google meant that her approach to certain matters was heavily biased towards a view from behind the lens of a tech giant, as opposed to the viewpoint of SMEs and individual inventors.

Her supporters say the fact that Lee became Director at a time when Patent trolls / NPEs were terrorising the US Patent landscape explains many of Lee’s stringent actions as Director. During this period, too many low-quality patents were being awarded, especially in the software patents space, with many such weak patents then subsequently being used as a basis for litigation costing millions of dollars. As such her supporters say her actions were justified because the US Patent and Trade Marks office needed a strong leader who could challenge and act to remedy the anomalies in the system, or at least begin reversing what had become a notorious trend.

With the troubles that have hounded previous directors of the USPTO in recent years, it will be interesting to see who President Trump nominates as Director to replace Michelle Lee. For now, Joseph Matal, the Associate Solicitor in the USPTO, will act as interim director.

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Russia Joins the Hague System

Russia has now joined the Hague system for international design registration. On April 03, 2017 President Vladimir Putin signed to ratify the Hague agreement, making Russia a member of the Hague system. The law on ratification will come into effect as of October 01, 2017, and it is expected that Russia will be fully included in the Hague design system soon after January 01, 2018.

Under the Hague system for international designs, a single design application can be filed at the World Intellectual Property Organization (WIPO) in Geneva and becomes effective in all designated states.

The international design system is open to UK applicants, and is a cost-effective and convenient way of registering a single design in many territories in a single procedure.

Historically, UK applicants did not make extensive use of the Hague international registered design system due to the selection of relatively commercially unattractive states which were in the system. However, the European Union joined the system in 2008, and Japan and the United States joined the Hague system in 2015, with the result that the three major economic powers of the US, Japan and EU are now all within the Hague system. UK companies are now making much greater use of the international design system. The next economically most important territory not to join the Hague system so far is China.

United Kingdom companies and individuals have access to the Hague system by virtue of the United Kingdom’s membership of the European Union. There are negotiations being conducted for the United Kingdom to directly join the Hague international design system in its own right, and provided these negotiations are successfully then United Kingdom individuals and companies will continue to benefit from international design registration after March 2019.

The number of individual states and territories which can be designated in an international design registration currently stands at 66 as of April 13, 2017, excluding the Russian Federation and counting a bundle of African countries under the African Regional Intellectual Property Organisation (ARIPO) as a single territory, and the European Union as another single territory.

Typically, the cost of an international design registration covering for example the US and Japan is significantly less than the cost of the alternative procedure of obtaining separate US and Japanese national registered designs.

For more information contact us here

Mancunuim IP becomes part of the Franks & Co Group

Mancunium IP is now part of the Franks & Co Group.

Franks & Co is an established United Kingdom based firm of Patent and Trade Mark Attorneys dedicated to protecting the ideas and innovations which drive businesses around the world. Its practice includes all aspects of patent, trade mark, designs, copyright and knowledge transfer services.

Franks & Co. was originally established in 1996 by Dr Robert Franks.

With offices in Sheffield and Northampton, not to mention a well established network of trusted partners and associates in every corner of the world, Franks & Co brings a wealth of experience to the Mancunium IP offering.

For more information contact us here

Glasgow University pioneers free intellectual property for Industry

Glasgow University is carrying out a trial to provide free intellectual property to Industry.

In a first of its kind in the UK, the University will offer ground-breaking medical research and scientific technology to business and entrepreneurs free of charge.

It is hoped that speeding up IP tech transfer, the move will radically improve the implementation of academic research into useful commercial products, in the process making Glasgow University, the most progressive institution in the UK for IP knowledge.

More details can be found here.

Patents County Court (Subsequently renamed IP Enterprise Court)

For most SME’s, having a practical, cost-effective plan for translating their company’s innovations into revenue is of paramount importance. Yet, not as many recognise the value locked-up in their Intellectual Property (patents, designs, trade marks, copyright and know-how). Although this is only a part of the bigger picture, a good strategy for generating, capturing and protecting IPRs will ensure that even SME’s do not miss out on opportunities that have a potential to create additional / supplementary revenue streams using. This may be achieved in a number of ways such licensing use of an IP right, but also through careful marking of products. But at times, there may be a need to send out warnings to competitors who may appear to be misusing, or who are actually infringing IPRs, including use of the court system / dispute resolution.

In the United Kingdom, a company has a number of options regarding resolving IP related disputes, including:-

(1) Low-cost non-binding Patent Office opinions.
(2) Independent dispute resolution tribunals.
(3) High Court actions.

However, under new rules that came into effect on 1 October 2010, the Patents County Court (PCC) will become a forum for lower value and much more streamlined IPR dispute resolution, a move aimed at providing access to justice for individual inventors and SMEs.

In addition to being able to award the full range of relief including injunctions and damages, costs awarded against the losing party will be capped at £50,000, which in itself is expected to lower the overall costs incurred during litigation.

More details can be found here (update 1 Oct 2013)

European Commission opens the way for some Member States to move forward on a unitary patent

After a request for a single European patent by 12 EU member states not too long ago, the European Commission has formally proposed unitary patent protection for these member states.

Michel Barnier, EU Commissioner for Internal Market and Services, said that the purpose was to establish a unitary right for the founding member states with the hope that eventually all member states will show an interest and join the initiative.

Under the EU Treaty, the enhanced cooperation mechanism allows nine or more countries to move forward in a particular area if, within a reasonable period, no agreement can be reached by all EU member states. The 12 countries that have requested the single EU patent are Denmark, Estonia, Finland, France, Germany, Lithuania, Luxembourg, the Netherlands, Poland, Slovenia, Sweden and the UK. More information can be found here