Baker Donelson - USA
There are signs that traditional methods of patent and trademark monitoring are waning as the US Patent and Trademark Office (USPTO) embraces real-time web-based alerts, digital subscription services and partnerships with data capture experts.
Traditional patent and trademark monitoring involved weekly readings of the Official Gazette – the USPTO's official journal – which is published every Tuesday and includes a representative drawing for each patent granted and trademark published that week. However, this method can feel like searching for a needle in a haystack and takes considerable time and patience. Today's research skills are largely a function of online prowess, with several key monitoring tools making it easy to 'trap' information.
Google Alerts is a powerful web monitor, provided that users choose appropriate keywords. For example, in order to monitor all precedential Patent Trial and Appeal Board (PTAB) decisions, a Google alert for 'PTAB' and 'Standard Operating Procedure 2' must be set because the latter is the regulation under which the PTAB designates decisions as precedential. The keywords appear in each precedential announcement. Users should always pre-test the volume of the results using a standard Google search covering the past week, which in this case would lead to just a few results. Alerts will start to arrive as soon as the trap is set. As some alerts will be irrelevant, it helps to have them compiled and curated. This can be automated with (for example) Google Drive and If This Then That (IFTTT). IFTTT is a free web-based service that allows users to create chains of simple conditional statements called 'applets'. Users can create an IFTTT account, connect their Google Drive account and set IFTTT to append every Google alert email to a document. Edit the material and you have the beginnings of a newsletter.
The USPTO is moving in the same direction. Through its partnership with Reed Tech (a LexisNexis company) the USPTO offers a patent application alert service. This service sends email alerts when patent applications containing selected keywords are published. Users can set keywords in a number of different fields, including the title, abstract, description and drawings, claims, classification, applicant, inventor and assignee. The service is useful for promptly identifying targets for pre-issuance submissions under the America Invents Act, which might otherwise require more expensive post-grant procedures.
With regard to trademarks, users can also use Google Alerts to remain vigilant against unauthorised third-party infringers on the Internet by setting a Google alert using a specific trademark, portions thereof or confusingly similar terms in a search. While many professionals readily pay for trademark application watch services, the USPTO's new Trademark Official Gazette Watch promises to do exactly that. Users can simply create an account on the MyUSPTO website. Various widgets are available, including the Trademark Official Gazette Watch. Further, Oppedahl Patent Law Firm LLC is distributing free Feathers software, which allows users to build a list of US trademark applications and registrations to monitor. The software automatically sends users an email when the status of an application or registration changes.
If you are not overrun by alerts, there are numerous IP-related subscription services worth considering. The USPTO has an online subscription centre that enables anyone to subscribe via email to an array of USPTO newsletters and alerts. The subscription topics available include Inventors Eye, USPTO Press Releases, USPTO Monthly Review, Patents Alerts, Trademarks Alerts and Patent Trial and Appeal Board.
In short, given just a few hours of initial effort, anyone with a computer and internet access can set an information trap and enjoy a continuous stream of real-time IP information.
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This is a co-published article whose content has not been commissioned or written by the IAM editorial team, but which has been proofed and edited to run in accordance with the IAM style guide.