IP Law Daily, PATENT NEWS: USPTO releases reports on virtual marking and satellite offices, (Sep 30, 2014)

By Cheryl Beise, J.D.

The USPTO has released two reports the agency submitted to Congress this month pursuant to the Leahy-Smith America Invents Act (“AIA”). The “Report on Virtual Marking,” submitted on September 16, 2014, addresses the effectiveness of virtual marking as an alternative to physically marking an article with patent information. In its “Report on the Satellite Offices,” submitted September 30, 2014, the USPTO discusses the agency’s satellite offices, including the criteria used in selecting their locations.

Virtual Marking Report. Prior to the AIA, the marking statute (35 U.S.C. § 287(a)) required patented articles to be physically marked by placing the word “patent” or the abbreviation “pat.,” along with the patent number, on the article itself or its packaging. The AIA amended § 287(a) to provide patentees with the option of using “virtual marking” as a means of providing constructive notice of patent protection to the general public via a posting on the Internet. Patentees may now fix onto an article or its packaging the word “patent” or the abbreviation “pat.” followed by a website address where the article is associated with the relevant protective patents.

The Virtual Marking Report concludes that virtual marking is serving its intended purpose of making it easier for manufacturers to mark small-sized articles and keep patent information current on articles without having to re-tool production equipment or create new molds. “However, virtual marking’s reliance on the Internet poses issues that may limit the general public’s access to patent information, including unavailability of Internet access in certain circumstances and privacy issues related to Internet usage,” the report states. Because virtual marking is a relatively new procedure and there is little case law on the subject, the USPTO suggests revisiting the issue at a later date, “to account for further user experiences, additional data, and case law developments.”

Satellite Office Report. Section 23 of the AIA directed the USPTO to establish three or more satellite offices in the United States within three years of the law’s enactment, subject to available resources. The satellite offices are intended to increase outreach activities, enhance employee retention, improve recruiting, decrease the application backlog, and improve examination quality. Prior to the AIA, the USPTO already had initiated a satellite office pilot program in Detroit, Michigan. In July 2012, the USPTO announced that three additional satellite offices would be established in Dallas, Texas, Denver, Colorado, and Silicon Valley, California. The Denver Office opened on June 30, 2014. The Silicon Valley and Dallas offices are expected to open in the spring of 2015 and fall of 2015, respectively.

The Satellite Office Report explains the USPTO’s rationale for selecting the office locations, including progress on establishing satellite offices, how the required purposes and considerations were addressed, and whether the statutory purposes are being achieved. According to the report, examiners in the Denver and Detroit satellite offices are contributing to a reduction of the patent application backlog and pendency equal to the examiners in Alexandria, and the same is expected for the Silicon Valley and Dallas locations. The USPTO also has implemented outreach activities to various stakeholders, including independent inventors, business communities, universities, and other government offices, in all four satellite office regions.

With the completion of the patent marking and satellite office reports, the USTPO only has to prepare one more report to Congress pursuant to the AIA. The final report, on the overall implementation of the AIA, is due in September 2015.

News: Patent USPTO