Tag: USPTO

1
POP Provides Clarity Regarding Level of Proof for Printed Publications Before the PTAB
2
New USPTO Requirement: Mandatory Electronic Trademark Submissions and Physical Addresses
3
Don’t B Late; Federal Circuit Interprets the B Delay Calculation
4
IPR of pre-AIA patent not an unconstitutional taking
5
New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations
6
Webpage specimens not automatically use in commerce
7
US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR
8
USPTO Clarifies Alice/Mayo Step 2A with New Patent Subject Matter Eligibility Guidance
9
USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings
10
USPTO publishes updated Subject Matter Eligibility in a new revision of the Manual of Patent Examining Procedure (MPEP)

POP Provides Clarity Regarding Level of Proof for Printed Publications Before the PTAB

The PTAB’s Precedential Opinion Panel (“POP”) issued a decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, on Friday, December 20, 2019. The issue at hand: “What is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?” Hulu v. Sound View, IPR2018-01039, Paper 29 at *2 (P.T.A.B. December 20, 2019).

This decision provides clarity on an issue that was often addressed inconsistently across panels regarding the “requirements for institution involving issues of public accessibility of an asserted ‘printed publication.’” Id. at 2.

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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.
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Don’t B Late; Federal Circuit Interprets the B Delay Calculation

Mayo Foundation v. Iancu reads more like an arithmetic problem than a Federal Circuit decision. The reason is the case involves the Patent Term Adjustment Act (PTA) (see 35 U.S.C. § 154(b)). PTA determinations require calculating how many days of delay, from the effective filing date to the Notice of Allowance, are attributable to the applicant and how many to the PTO. Under one PTA scenario, the applicant is entitled to an adjusted term, recovering every day the application is pending beyond three years past the effective filing date for the balance of delay attributable to the PTO. This is called a “B Delay” (§154(b)1)(B)). However, the B Delay is subject to several exclusions. The disputed exclusion in Mayo concerned a Request for Continued Examination (RCE) of the application, which Mayo filed before the PTO declared an interference. 

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IPR of pre-AIA patent not an unconstitutional taking

In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).

Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.

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New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations

On Tuesday July 2, 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, 7, and 11. They take effect on Saturday August 3, 2019.

The impact of the rule, as implemented, is a new requirement for a licensed U.S. attorney to serve as counsel for applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (i.e. foreign applicants, registrants, or parties). Previously, a substantial number of such trademark applications had been filed without a U.S. attorney by applicants domiciled in other jurisdictions.

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Webpage specimens not automatically use in commerce

On April 10, 2019, the Federal Circuit issued a precedential opinion, at the request of the U.S. Patent and Trademark Office (USPTO), regarding submissions of webpages as specimens of use. In re Siny Corp is an important reminder to applicants and practitioners to carefully consider whether webpage specimens to be submitted to the USPTO actually comprise the offering of goods and/or services at the point of sale, or whether they are mere advertising.

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US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR

Judge Bryson of the Federal Circuit, sitting by designation in the Eastern District of Texas, issued one of the clearest articulations to date in favor of granting a stay pending inter partes review.[1] Notably, in this case, claim construction had ended, discovery was nearly complete, and trial was set to begin in three months. The defendant, Samsung, had recently joined an instituted IPR covering six of the eleven asserted claims and moved to stay the district court proceeding.

Judge Bryson clearly articulated the three factors that district courts consider when analyzing whether or not to grant a stay:
1) whether the stay will unduly prejudice the non-moving party;
2) whether the proceedings had reached an advance stage, including the stage of discovery and whether a trial date is set; and
3) whether the stay will likely result in simplifying the case before the court.

After noting that the congressional intent of post-grant review before the patent office was to be a “quick and cost effective alternative[] to litigation” to provide a “faster, less costly alternative to civil litigation to challenge patents” and to be “an inexpensive substitute for district court litigation that allows key issues to be addressed by experts in the field” he proceeded to walk through the three factors.

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USPTO Clarifies Alice/Mayo Step 2A with New Patent Subject Matter Eligibility Guidance

For the last several years, a major part of prosecuting software-related patents at the U.S. Patent and Trademark Office (“USPTO”) has been dealing with theUSPTO’s inconsistent interpretation of patent subject-matter eligibility issues under 35 U.S.C. § 101 arising from the Supreme Court’s decisions in Alice Corporation Proprietary Ltd. v. CLS Bank International[1]and Mayo Collaborative Services. v.Prometheus Labs.[2]  However, new guidance from the USPTO concerning the Alice/Mayo test regarding patent subject-matter eligibility was released for public comment on January 7, 2019.  This guidance attempts to provide more examination consistency for entities prosecuting software-related patents.  We describe the primary features of the new guidance below and offer insights into what this means for companies pursuing such patents at the USPTO going forward.

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USPTO Announces Final Rule Changing Claim Construction Standard in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Proceedings

The United States Patent and Trademark Office is publishing a final rule revising the claim construction standard used by the Patent Trial and Appeal Board (the “Board”) in inter partes review, post-grant review, and covered business method patent review proceedings.  The Board will no longer interpret claims under the broadest reasonable interpretation standard and will instead use the claim construction standard enunciated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its progeny and followed by federal courts and the United States International Trade Commission (“ITC”).  The changes to the claim construction standard will only apply to proceedings in which a petition is filed on or after the effective date of the final rule.

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USPTO publishes updated Subject Matter Eligibility in a new revision of the Manual of Patent Examining Procedure (MPEP)

On January 30, 2018, the USPTO quietly published a new revision (Revision 08.2017)[1] to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP).  The revision includes amendments to a number of chapters, including notably the guidance regarding subject matter eligibility under 35 U.S.C. § 101.  This includes changes in Chapter 2105 for living subject matter eligibility and Chapter 2106 for products of nature and software eligibility.  The revision incorporates the contents of previous subject matter eligibility guidance documents that were provided on the “Subject Matter Eligibility” webpage[2] of the USPTO.  Although the MPEP does not have the force of law, unlike the CFR, patent examiners generally tend to follow the guidance provided in the MPEP.  Accordingly, patent applicants dealing with Section 101 rejections should generally be starting with these revised MPEP chambers as a basis when crafting arguments to overcome such rejections.

Revised Chapter 2106 discusses the two-part Alice test[3] including guidance regarding whether an invention falls under one of the statutory categories and whether an invention is directed to a judicial exception for an abstract idea.  Of particular note, chapter 2106.05 provides expansive guidance for determining whether a claim amounts to something “significantly more” than an abstract idea.  These “significantly more” arguments are often the best avenue for overcoming Section 101 rejections.

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