BSKB News

Seth S. Kim Promoted to Partner

BSKB is pleased to announce that Seth S. Kim has been promoted to Partner of the firm.

USPTO DOCX Filings Surcharge Fee Delay

The USPTO has delayed the effective date of the surcharge fee for non-DOCX filings to January 1, 2023. The PTO Announcement and Federal Register Notice can be viewed using the USPTO link found here: https://www.uspto.gov/blog/director/entry/modernizing-patent-filing-with-docx The USPTO will continue to accept DOCX specifications for non-PCT applications first filed in the U.S., for applications filed in the U.S. under the Paris Convention and for applications filed as a by-pass continuation of a PCT application without the surcharge fee. The surcharge delay allows the USPTO time for further testing and for application filers to adjust to the DOCX format. If you have any questions, please do not hesitate to contact us.

Hailey R. Bureau, Ph.D., Promoted to Associate

A huge congratulations to BSKB’s very own Hailey Bureau, Ph.D.! She has just been promoted to Associate after passing the Virginia Bar Exam. Congrats, Hailey!

USPTO DOCX Filings

Effective January 1, 2022, a USPTO surcharge fee of $400 (large entity), $200 (small entity) and $100 (micro entity) will apply for non-DOCX filings. The surcharge fee applies to utility non-provisional application filings (e.g., the specification, claims, and abstract must be in DOCX format to avoid the surcharge; drawings are not subject to this requirement). The DOCX surcharge does not apply to US National Stage Applications or PCT International Applications filed in the US Receiving Office. Drawings may be filed as PDF or DOCX documents. There is no surcharge for drawings not filed as DOCX documents. DOCX is a structured text-based Microsoft Word document. Effective January 1, 2022, a USPTO surcharge fee of $400 (large entity), $200 (small entity) and $100 (micro entity) will apply for non-DOCX filings. The surcharge fee applies to utility non-provisional application filings (e.g., the specification, claims, and abstract must be in DOCX format to avoid the surcharge; drawings are not subject to this requirement). The DOCX surcharge does not apply to US National Stage Applications or PCT International Applications filed in the US Receiving Office. Drawings may be filed as PDF or DOCX documents. There is no surcharge for drawings not filed as DOCX documents. DOCX is a structured text-based Microsoft Word document. In view of the above, to avoid the USPTO surcharge, we recommend that you commence sending specifications in DOCX format for all utility non-provisional applications filed on or after January 1, 2022.

Len Svensson's meat substitute technology paper featured in IPWatchdog

Leonard Svensson recently published an article in IPWatchdog, Inc. analyzing meat substitution companies and the patent protection being sought and obtained in the industry.

Patent Law Institute 2021: Critical Issues & Best Practices

BSKB is proud to announce that Partners, Gerald Murphy and Chad Rink will be presenting again at this year's Practising Law Institute (PLI), April 30, 2021 beginning at 9AM PT. Mr. Murphy and Mr. Rink will be discussing Chemical, Pharmaceutical and Biotech Updates Affecting Patent Prosecution.

High Court Mulls Taking Up Diagnostic Patent Eligibility Fight

Partner MaryAnne Armstrong was quoted in a Bloomberg Law article discussing Ariosa’s appeal to the Supreme Court of a Federal Circuit decision reviving Illumina Inc.'s fetal DNA test patents and what the outcome could mean for patent eligibility in the biotech industry.

MaryAnne Armstrong, Ph.D. Appointed to SACEPO

BSKB is pleased to announce the appointment of Partner, MaryAnne Armstrong, Ph.D. to the European Patent Office’s Standing Advisory Committee (SACEPO Working Party on Quality, section for American countries).

Estella M. Gustilo, Ph.D. Joins BSKB

Birch, Stewart, Kolasch & Birch, LLP (BSKB) is pleased to announce the arrival of Estella M. Gustilo, Ph.D. to the firm’s prosecution practice.

BSKB ranked in 2021 "Best Law Firms"

Birch, Stewart, Kolasch & Birch, LLP has been ranked in the 2021 U.S. News - Best Lawyers® "Best Law Firms" list nationally in 3 practice areas and regionally in 3 practice areas.

Season’s Greetings

Wishing you a safe and wonderful holiday season and a happy New Year.

It’s Apple vs. Startup in Faceoff Over Who Can Use Fruit Logos

Michael Smith was quoted in a Bloomberg Law article regarding Apple's opposition to the “federal registration of food prep app Prepear’s logo as a trademark, arguing the green pear-with-leaf logo ‘readily calls to mind’ its iconic bite-out-of-an-apple logo.”

Eric H. Liou joins Birch, Stewart, Kolasch & Birch

Falls Church, Va., August 31, 2020 — Eric H. Liou has joined Birch, Stewart, Kolasch & Birch, LLP (BSKB) as an associate in the firm’s Electronics and IT Practice Group.

USPTO Fees Update

Effective October 2, 2020, many USPTO fees will increase including application filing, RCE, appeal and issue fees. Therefore, to save costs, with one exception, you may consider filing any items with fee increases prior to October 2, 2020. The exception relates to the payment of the Issue Fee. Any issue Fee having a mailing date prior to October 2, 2020, will have the lower Issue Fee printed on the Notice of Allowance (even if the Issue Fee is paid after October 2, 2020).

Michael Smith quoted in Law360 on the Washington's NFL Team temporary name

"The fact that these other guys have filed applications for trademark registrations, I think it is a cautionary tale," Birch Stewart Kolasch & Birch LLP trademark attorney Michael Smith told Law360. "Teams want to go ahead file an intent to use applications early on so they can be first in line. That is not to say that the Washington team is not going to be able to resolve the issue, but it complicates things more."

Partner Michael Smith is quoted in today's Law360 article regarding a rare Listerine royalty auction

Unlike patents and copyrights, which have a set lifespan, "trade secrets basically last forever as long as you can keep a secret," said Michael Smith of Birch Stewart Kolasch & Birch LLP. A modern trade secrets contract would likely take that into account and call for the agreement to terminate if the secret became known, "which would mean the obligation obviously to continue paying would likewise terminate at that time," he said.

Partner Michael Smith quoted in the Washington Business Journal

Washington’s NFL team could still profit off its discarded name

Michael T. Smith Named New Partner at Birch, Stewart, Kolasch & Birch

BSKB is pleased to announce the promotion of Michael T. Smith as a Partner. Michael T. Smith joined BSKB in 2012 having practiced in the intellectual property field since 2001. Mr. Smith’s practice focuses on all aspects of trademark law, including clearance, prosecution, maintenance, enforcement, and licensing. His practice also includes patent prosecution, litigation in federal district courts, and inter partes matters before the Trademark Trial and Appeal Board as well as the Patent Trial and Appeal Board. Mr. Smith’s litigation experience includes the representation of clients from a variety of industries, including media, technology, hospitality and manufacturing. Mr. Smith received his bachelor’s degree in biology from West Virginia University and his JD from the University of Akron School of Law.

U.S. Brand Protection & Trademark Seminar Postponed

Birch, Stewart, Kolasch & Birch, LLP recognized by Legal 500.

Birch, Stewart, Kolasch & Birch, LLP has been editorially recommended and ranked in the Patents: Prosecution area of the current edition of Legal 500.