Tag:United States Patent and Trademark Office

1
USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer
2
Guidance on use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office
3
Proposed PTAB Rules up for Comment
4
New Interim Guidance on Fintiv Factors
5
U.S. Spending Bill Includes Sweeping New Copyright and Trademark Measures
6
PTAB designates additional decisions precedential relating to its discretion to deny petitions
7
New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have substantial effects on the enforceability of patents that are subject to a terminal disclaimer.

Read More

Guidance on use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office

On 11 April 2024, the United States Patent and Trademark Office (USPTO) published guidance (referred to herein as the Guidance) on the use of artificial intelligence (AI) based tools, including generative AI, in practice. The USPTO recognizes the benefits of AI and while practitioners are not presently required to disclose whether AI is used as a drafting tool there are a variety of duties that arise with its use. The Guidance outlines the current USPTO policies and illustrates how these rules interact with the use of AI tools. Below, we will highlight different uses of AI tools and provide an overview of potential risks the USPTO discusses in the Guidance.

Read More

Proposed PTAB Rules up for Comment

The USPTO on April 21, 2023 proposed a variety of changes to the pre-institution requirements and briefing process for post-grant proceedings, including both IPRs and PGRs. Among the proposed changes are broad amendments to the discretionary denial frameworks, which are intended to provide clarity, curb abusive litigation tactics, and generally align procedure with the objectives of the AIA. The deadline for submitting comments and suggestions related to these rules is June 20, 2023. The proposed rules provide valuable insight into the future of post-grant proceedings before the PTAB. An overview of these changes is outlined below, and additional details follow.

  • Parallel Proceedings – The USPTO is considering changes to the Fintiv framework, including the elimination of current factors 1, 2, and 5, a requirement for a Sotera stipulation, and a grace period that would exempt petitions filed within 6 months of service of the complaint from being discretionarily denied under this rule.
  • 325(d) Framework – The USPTO is considering a rule that would reign in the application of discretionary denial under 325(d) by limiting its application to art or arguments that had been “previously addressed,” or actually evaluated by the patent office as articulated on the record, such as in a rejection, notice of allowance, or examiner interview. Mere citation in an IDS will no longer meet the standard. Prior art will only be considered “substantially the same” where it contains the same teaching relied upon in the petition, and that teaching was addressed by the patent office. 
  • Serial Petitions – The USPTO is considering replacing the existing framework for serial petitions with a rule that will deny any serial or follow-on IPR petition filed by: (1) the same petitioner; (2) a real party in interest to that petitioner; (3) a party with a significant relationship to that  petitioner; or (4) a party who previously joined an instituted IPR filed by that petitioner. There will be an exception where the earlier petition was not resolved on the merits of the petition, or where exceptional circumstances are shown.
  • Prior Adjudications – The USPTO is contemplating stricter requirements where a prior final adjudication by a district court or in a post-grant proceeding upheld the validity of claims that substantially overlap the challenged claims, essentially requiring the petitioner (1) either has standing to challenge the validity of the patent in district court or intends to pursue commercialization, (2) was not a real party in interest to the party who unsuccessfully challenged the claims, and (3) meets the heightened burden of compelling merits.
  • Micro and Small Entities – The USPTO is mulling changes that would protect under-resourced entities by denying institution where the patent owner (1) claimed micro or small entity status at the time of filing; (2) did not exceed a gross income cap in the calendar year preceding filing of the petition; and (3) was commercializing a product covered by the challenged claim at the time of filing.
  • For-Profit Entities – The USPTO is contemplating a rule that would deny any IPR or PGR petition by a for-profit entity that has not been sued or threatened with infringement of the challenged patent, is not otherwise practicing in the field of the challenged patent, and is not in “substantial relationship” with an entity to which the rule would not apply.

The USPTO has also proposed changes to the disclosure requirements, what constitutes compelling merits, and termination by settlement filing requirements. An in-depth discussion of each suggested change is included below.

Read More

New Interim Guidance on Fintiv Factors

On 21 June 2022, the United States Patent and Trademark office (USPTO) issued interim guidance on how the Patent Trial and Appeal Board (PTAB) should exercise its discretion when determining whether to institute a post-grant proceeding.

Read More

U.S. Spending Bill Includes Sweeping New Copyright and Trademark Measures

On Monday, 21 December, U.S. Congressional leaders passed a spending bill that included government funding and folded in several controversial intellectual property provisions that will expand the rights of intellectual property owners. These provisions include the Copyright Alternative in Small-Claims Enforce (CASE) Act, the Trademark Modernization Act (TMA), and a law to make certain illegal streaming a felony. The bill was signed into law by President Trump on 27 December 2020.

Read More

PTAB designates additional decisions precedential relating to its discretion to deny petitions

On Tuesday, the Patent Trial and Appeal Board (PTAB) designated two decisions precedential and one as informative explaining the circumstances under which the Board will exercise its discretion under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny petitions.  The cases analyzed situations where the prior art and invalidity arguments advanced by Petitioner were similar/identical to those previously considered by the examiner and where the timing of a final decision may coincide with another body’s findings (e.g., a district court trial) regarding validity.  These cases provide guidance to Petitioners and Patent Owners alike about how to construct discretionary denial arguments, in particular regarding the appropriate way to address art that may or may not be cumulative to already-considered references. 

Read More

New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses

On Tuesday July 31, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.

The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:

  1. electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
  2. provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
  3. provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.
Read More

Copyright © 2024, K&L Gates LLP. All Rights Reserved.