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November 18, 2011 TPAC Meeting Summary Commissioner Cohns update: Reviewed FY2011 performance measures Quality measures

es are meeting or exceeding expectations Noted that Excellent Office Action initiative exceeding target and USPTO hopes to have additional financial incentives and training for Examiners this year related to the project FY2011 application filings were up 8.1% over FY2011, considerably more than the 4.4% increased expected by the USPTO In FY2011, 73% of trademark applications were handled entirely electronically from start to finish (an increase from the prior years figure of 68.1%) 11 new examining attorneys started work at the USPTO on September 26 all were USPTO examiners earlier in their career Planning to hire additional examiner class in March 2012 Public outreach projects: o Disclaimers: the consensus from the USPTOs roundtable earlier in the year about disclaimer practices was that no major changes are desired or needed USPTO working now on a new Examiners Guide on disclaimer issues that will be out soon o Paper filing: USPTO met with several groups of applicants that were continuing to file on paper rather than electronically Recent changes include additional notice of approval for publication to electronic applicants, and allowing for more than 1 email address for correspondence o USPTO is holding informal discussions between INTA and some managing attorneys to continue the flow of communication and so that both sides can understand each others needs and processes o On November 29, 2011, USPTO is hosting a public roundtable on Continuing Legal Education Programs on Trademark Policing Measures and Tactics as a follow up to the Trademark Litigation Tactics study o 2011 Trademark Expo: Huge success Many seminars held 27 exhibitors more than ever More than 15,000 visitors Chubby Checker performed at opening ceremonies and was fantastic Electronic enhancements: o Assignment documents are now online o TEAS filing system updated November 19th with many enhancements

Applicants/attorneys can use multiple email addresses Can submit sound and motion mark files with new applications When forms are saved for use later, they will now retain the attachments Tri-Lateral Meeting coming up December 15-17, 2011 o Consists of US (USPTO), European Union (OHIM), and Japan (JPO) o Korea and China have been asked to formally join. Korea has accepted; China expected to accept. Both have been informal observers in the past. o Meeting will be hosted by USPTO

Office of External Policy Affairs - Susan Anthony Discussed USPTOs role as intellectual property advisor to NTIA which advises ICANN Launch of new gTLDs is still a burning topic: o Preventing the launch of the new domain extensions is a fight we have fought and lost. o Noted that while many have opposed the new gTLD launch, many brand owners are excited about the new possibilities they could create. o Uniform Rapid Suspension System could be a valuable tool for trademark holders, but has been eroded. o Olympics and Red Cross have lobbied for special protection from new gTLDs. They are also seeking second level domain protection as well. Concerns over where you draw the line, and over what other international or non-governmental organizations should be eligible for same protections. UDRP changes are very possible in the future, but may have to wait until full roll out of the new gTLDs. International and Policy Update (Sharon Marsh) Following Bose decision and USPTO roundtable on the fraud issues, a Notice of Proposed Rulemaking was issued earlier this year regarding the creation of a study of post-registration specimens to examine the extent of the issue o Proposed rulemaking had fairly broad authority o Comments received from bar associations and the public Generally supported a more accurate register, but expressed concerns over the details the burdens on registrants, the lack of restrictions and criteria for when the USTPO could or would ask for additional specimens o USPTO will be issuing a final rule soon and has re-crafted it to address the comments and provide more limits o Pilot program will be run by Examining Attorneys likely to last for 6 months review random selection of Section 8 filings

On January 1, 2012, the new Nice Agreement 10th Edition of acceptable identification of goods and services will go into effect

TTAB Update Judge Rogers o Now posting quarterly metrics on the TTAB website o Noted that Fourth Quarter of FY2011 saw the largest numbers of new filings for the year; could be the start of a trend upward, but will have to watch the numbers. o ACR cases: only a handful decided last year, but several more have been submitted to the Board already in the start of FY2012 o TPAC members noted that there would be value in showing how much time the ACR cases took once ACR was adopted (rather than from the commencement of the case) o Will soon be hiring: o New Judge to replace the retired Judge Walters o New Senior Level Attorney to work on editing of the TBMP and identifying opinions for possible precedential status (currently takes significant judge time to do so) o Administrative person to help with HR and IT tasks, among others o Recently posted new ACR plug-and-play options on the TTAB website o Held roundtable on November 1, 2011 regarding performance measures (see my blog post here) o Discussed possible metrics for measuring performance and timing issues o Also discussed possible changes to Board practice, procedures, and rules to keep pendency times down o Will publish the transcript when available o Then will go back to stakeholders to see if they want to allow for supplemental remarks o Will look at what changes may be feasible or desirable and whether they would require rules changes, affect staffing, etc. o Will host another roundtable in the spring on Accelerate Case Review (ACR) o Considering future roundtable on issues related to the Boards standard protective order Legislative Update Dana Colarulli o America Invents Act implementation under way. See USPTO special webpage for details and timelines and user input. o USPTO keeping an eye on two bills in Congress that could affect trademarks: Protect IP Act (S. 968) and Stop Online Piracy Act (H.R. 3261)

OCIO Update Kevin B. Smith & Raj Dolas o Lots of activity going on with the planning and development of Trademarks Next Generation o Working on virtualizing and stabilizing older applications used by Trademarks at USPTO see graphic below Chief Financial Officer update (presented by Bruce Kisliuck): Detailed USPTO plans for implementation of the America Invents Act Noted a large bump in patent fees at the close of FY2011 due to a short window before the AIA fee increase went into effect USPTO one of the agencies that received a full appropriation, no longer operating for FY2012 on a continuing resolution Future TPAC Meetings March 8, 2012 July 13, 2012 October 5, 2012 From USPTO website: TPAC Meeting Agenda OCFO Update FY2011 - Trademark Performance Plan Q4 FY 2011 Trademark Performance Measures (Non-Examiner Statistics) TTAB Metrics OCIO Update

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