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