1. September 23, 2011 Maury M. Tepper, III Tepper & Eyster, PLLC © Tepper & Eyster 2011

2. How’s the PTO Doing Overall? Just Fine, Thanks! Trademark Filings Continue to Increase (368,939 in 2010 – 4.8% increase, and 2011 is on track for a 6.1% increase) Pendency Remains in Range: 2.7 Months in 3Q 2011 (Target is 2.5 to 3.5) Disposal Pendency is at 12.1 Months (Target was 15) Examiner Production is 6.5% above plan

3. 3 PTO Funding and User Fees HR1249 “The Leahy-Smith America Invents Act of 2011” Establishes a Patent & Trademark Reserve Fund for deposit of any amounts received by USPTO above appropriated budget, to be used only for USPTO The “Fence” swings both ways now Director is given fee-setting authority Director must first notify the Advisory Committee Advisory Committee to publish the proposal

4. 4 What’s New in IT? Trademarks Next Generation (TMNG) Original Objective and Timeline On Aug. 14, 2009, Director instructed OCIO to separate TM infrastructure and to begin replacing it with a new IT infrastructure to accommodate end-to-end electronic processing (to be implemented by Feb., 2011) Where we Are Today (Still Planning)

5. 5 What’s New in IT? SOME Accomplishments Improvements in Assignments Documents can now be Viewed Online Email Notification on the way! TDR 2.0

6. 6 What’s New in IT? Universal Laptops (ULPs) Rollout is succeeding throughout the Office 3,435 deployed as of August 5 Just NOT in Trademarks! 5 deployed, and none working!

7. 7 What’s New in IT? Improved Email Communication with Examining Attorneys REMEMBER – It’s part of the record! USPTO is working to add up to 4 Courtesy Email Addresses on Copy (to fix the “Drop Box Delay”)

8. What’s New in IT? Trademarks “Dashboard” Introduced May, 2011 Visual Depiction of Multiple Performance Measures Up to Date Information

9. What’s New in IT? “Wiki” Version of TMEP Section 1200 is available for comment (went live 1/12/11) IdeaScale Program to be expanded to all of TMEP Public Comments will be considered and incorporated into next release of TMEP (1Q 2012)

10. 10 New Quality Measure Trademarks is piloting a new comprehensive excellence measure that, among other things, encourages more phone actions and looks at every aspect of correspondence from the EA The new measure will be for the “comprehensive excellence” of the office action.

11. Expansion of Work At Home Telework Negotiations successfully concluded Pilot Program to Eliminate the 90-mile limitation Reduced Office Requirement Limits on travel the PTO can require of Examiners What This Means for You – MORE Phone Calls

12. 12 Fraud after Bose The CAFC rejected the “fraud “ test proposed in Medinol and asserted a much tougher test for fraud. Deception must be willful - a deliberate attempt to mislead. “should have known” about the falsity with subjective intent = simple negligence standard

13. 13 Bose--continued Mere negligence is not fraud. Intent to deceive is stricter standard than negligence or gross negligence—look to patent inequitable conduct. Fraud means applicant or registrant knowingly makes a false, material representation with the intent to deceive the USPTO.

14. PTO Response to Bose April, 2009 – PTO and George Washington Univ. Law School Roundtable on “The Future of Use-Based Registration” June, 2009 – PTO publishes Request for Comments to Improve Accuracy of IDs July 12, 2011 – RFC on Change to Post-Registration Examination Rules (Comment Period Closes TODAY!)

15. 15 What’s Changing With Disclaimers? NOT MUCH! In Response to changes in several other common law countries, PTO hosted a Roundtable on June 21, 2011 Is Disclaimer Requirement Useful? Is it Too Expensive? User Feedback Supports Continuing Disclaimer Practice

16. New PTO Goal Promote “End-to-End” Electronic Processing Currently 98% of Applications are filed electronically Less than 70% of Applications stay “electronic” PTO held a Roundtable on June 23, 2011 with practitioners who file electronically but do not authorize email communication to learn WHY?

17. How’s the TTAB Doing? Pendency is Climbing (Total Ave. Pendency for Appeals is 48 weeks, Inter Partes is 270 weeks) Precedential Decisions are Declining Cases Awaiting Decision have More Than Doubled since 2009

18. What’s New at the TTAB? Revised TBMP (3d Edition) issued in May 2 New Judges Appointed Chief Judge Named NOI issued April, 2011 on Board Participation in Settlement Discussions Roundtable Upcoming (Nov. 1) on Metrics ACR Proposals Published (there’s still room for more!)

19. Questions?