Extension of the Patent Trial and Appeal Board Motion To Amend Pilot Program, 60134-60135 [2022-21472]
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60134
Federal Register / Vol. 87, No. 191 / Tuesday, October 4, 2022 / Notices
applications in a series to require all
divisional applications to be filed
within a set period of time after the
restriction requirement is made final
and after any petition for review has
been resolved?
g. make changes to the rejoinder
practice after a final rejection has been
made, such as giving applicants a
certain time period after final rejection
to provide appropriate claims for
rejoinder?
h. limit or change non-statutory
double patenting practice, including
requiring applicants seeking patents on
obvious variations to prior claims to
stipulate that the claims are not
patentably distinct from the previously
considered claims as a condition of
filing a terminal disclaimer to obviate
the rejection; rejecting such claims as
not differing substantially from each
other or as unduly multiplied under 37
CFR 1.75; and/or requiring a common
applicant or assignee to include all
patentably indistinct claims in a single
application or to explain a good and
sufficient reason for retaining patentably
indistinct claims in two or more
applications? See 37 CFR 1.78(f).
5. Please provide any other input on
any of the proposals listed under
initiatives 2(a)–2(i) of the USPTO Letter,
or any other suggestions to achieve the
aims of fostering innovation,
competition, and access to information
through robust and reliable patents.
The USPTO also invites public input
on the following questions, which are
presented verbatim (except for minor
changes to internal citation format) as
they appeared in the June 8 letter from
Members of Congress. Any comments
relating to fee setting will be taken into
consideration when the USPTO takes up
fee setting more broadly.
6. Terminal disclaimers, allowed
under 37 CFR 1.321(d), allow applicants
to receive patents that are obvious
variations of each other as long as the
expiration dates match. How would
eliminating terminal disclaimers, thus
prohibiting patents that are obvious
variations of each other, affect patent
prosecution strategies and patent quality
overall?
7. Currently, patents tied together
with a terminal disclaimer after an
obviousness-type double patent
rejection must be separately challenged
on validity grounds. However, if these
patents are obvious variations of each
other, should the filing of a terminal
disclaimer be an admission of
obviousness? And if so, would these
patents, when their validity is
challenged after issuance, stand and fall
together?
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8. Should the USPTO require a
second look, by a team of patent quality
specialists, before issuing a continuation
patent on a first office action, with
special emphasis on whether the claims
satisfy the written description,
enablement, and definiteness
requirements of 35 U.S.C. 112, and
whether the claims do not cover the
same invention as a related application?
9. Should there be heightened
examination requirements for
continuation patents, to ensure that
minor modifications do not receive
second or subsequent patents?
10. The Patent Act requires the
USPTO Director to set a ‘‘time during
the pendency of the [original]
application’’ in which continuation
status may be filed. Currently there is no
time limit relative to the original
application. Can the USPTO implement
a rule change that requires any
continuation application to be filed
within a set timeframe of the ultimate
parent application? What is the
appropriate timeframe after the
applicant files an application before the
applicant should know what types of
inventions the patent will actually
cover? Would a benchmark (e.g., within
six months of the first office action on
the earliest application in a family) be
preferable to a specific deadline (e.g.,
one year after the earliest application in
a family)?
11. The USPTO has fee-setting
authority and has set [fees] for filing,
search, and examination of applications
below the actual costs of carrying out
these activities, while maintenance fees
for issued patents are above the actual
cost. If the up-front fees reflected the
actual cost of obtaining a patent, would
this increase patent quality by
discouraging filing of patents unlikely to
succeed? Similarly, if fees for
continuation applications were
increased above the initial filing fees,
would examination be more thorough
and would applicants be less likely to
use continuations to cover, for example,
inventions that are obvious variations of
each other?
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2022–21481 Filed 10–3–22; 8:45 am]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO–P–2021–0042]
Extension of the Patent Trial and
Appeal Board Motion To Amend Pilot
Program
United States Patent and
Trademark Office, Commerce.
ACTION: Notice.
AGENCY:
The United States Patent and
Trademark Office (USPTO) is extending
the Motion to Amend (MTA) Pilot
Program, initiated on March 15, 2019,
and first extended on September 16,
2021. The MTA Pilot Program provides
additional options for a patent owner
who files an MTA in an America
Invents Act (AIA) trial proceeding
before the Patent Trial and Appeal
Board (PTAB). In particular, the
program provides a patent owner who
files an MTA with options to request
preliminary guidance from the PTAB on
the MTA and to file a revised MTA. The
MTA Pilot Program also provides
timelines for briefing to accommodate
these options.
DATES: Applicability Date: October 4,
2022. Duration: The MTA Pilot Program
will run until September 16, 2024 (or it
may end sooner if replaced by a
permanent program after notice-andcomment rulemaking). The USPTO may
further extend the MTA Pilot Program
(with or without modification) on either
a temporary or a permanent basis, or
may discontinue the program after that
date.
FOR FURTHER INFORMATION CONTACT:
Miriam L. Quinn, Acting Vice Chief
Administrative Patent Judge; or Melissa
Haapala, Vice Chief Administrative
Patent Judge; at 571–272–9797
(Miriam.Quinn@uspto.gov or
Melissa.Haapala@uspto.gov,
respectively).
SUMMARY:
A patent
owner in an AIA trial proceeding may
file an MTA as a matter of right. See 35
U.S.C. 316(d)(1), 326(d)(1). After
receiving public feedback about the
PTAB’s MTA practice, in October 2018
the USPTO published a Request for
Comments in the Federal Register
seeking written public comments on a
proposed amendment process in AIA
trials that would involve preliminary
guidance from the PTAB on the merits
of an MTA and an opportunity for a
patent owner to file a revised MTA. See
Request for Comments on MTA Practice
and Procedures in Trial Proceedings
Under the America Invents Act Before
the Patent Trial and Appeal Board, 83
SUPPLEMENTARY INFORMATION:
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khammond on DSKJM1Z7X2PROD with NOTICES
Federal Register / Vol. 87, No. 191 / Tuesday, October 4, 2022 / Notices
FR 54319 (Oct. 29, 2018). The majority
of comments supported the PTAB
issuing preliminary guidance in cases
involving an MTA, and commenters
were almost evenly mixed in supporting
or opposing the opportunity for a patent
owner to file a revised MTA.
On March 15, 2019, in response to
these public comments, the USPTO
issued a Federal Register Notice
detailing the MTA Pilot Program. See
Notice Regarding a New Pilot Program
Concerning Motion To Amend Practice
and Procedures in Trial Proceedings
Under the America Invents Act Before
the Patent Trial and Appeal Board, 84
FR 9497 (Mar. 15, 2019). The MTA Pilot
Program provides a patent owner with
two options not previously available: (1)
a patent owner may choose to receive
preliminary guidance from the PTAB on
its MTA; and (2) a patent owner may
choose to file a revised MTA after
receiving a petitioner’s opposition to the
original MTA and/or the PTAB’s
preliminary guidance (if requested). If a
patent owner does not elect either
option, then AIA trial practice,
including MTA practice, is essentially
unchanged from the practice prior to the
implementation of the MTA Pilot
Program.
The USPTO subsequently extended
the MTA Pilot Program on September
16, 2021, to run through September 16,
2022. The USPTO presented the results
of the MTA Pilot Program through
March 31, 2022, in Installment 7 of the
Motion to Amend Study. The most
recent information and statistics related
to MTAs are available on the USPTO’s
website at www.uspto.gov/patents/ptab/
motions-amend-study.
Now that stakeholders have had
experience with the MTA Pilot Program,
as well as access to the results of the
Motion to Amend Study, the USPTO
plans to issue a Request for Comments
regarding the MTA Pilot Program to
gather stakeholder feedback and
suggestions on the program and on
amendment practice generally and to
determine whether to make the program
permanent through notice-and-comment
rulemaking. The USPTO is extending
the MTA Pilot Program for a second
time, through September 16, 2024,
while it gathers public input. The
requirements for the program remain as
set forth in the original notice without
modification.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2022–21472 Filed 10–3–22; 8:45 am]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO–P–2020–0027]
Extension of the Fast-Track Appeals
Pilot Program
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Notice.
AGENCY:
The United States Patent and
Trademark Office (USPTO) is extending
the Fast-Track Appeals Pilot Program,
initiated on July 2, 2020, and previously
extended on July 12, 2021. The FastTrack Appeals Pilot Program permits
appellants with a docketed ex parte
appeal before the Patent Trial and
Appeal Board (PTAB or Board) to file a
petition to expedite the review of the
appeal. The Fast-Track Appeals Pilot
Program sets a target of reaching
decisions on ex parte appeals within six
months from the date they enter the
program.
SUMMARY:
Applicability Date: October 4,
2022. Duration: The Fast-Track Appeals
Pilot Program will run until July 2,
2024. After that date, the USPTO may
temporarily or permanently extend the
Fast-Track Appeals Pilot Program (with
or without modification) or discontinue
the program.
FOR FURTHER INFORMATION CONTACT:
Steven Bartlett, PTAB, by telephone at
571–272–9797 or by email at
fasttrackappeals@uspto.gov.
SUPPLEMENTARY INFORMATION: Ex parte
appeals to the Board are normally taken
up for decision in the order in which
they are docketed. See USPTO Standard
Operating Procedure 1, Assignment of
judges to panels (Sept. 20, 2018),
available at www.uspto.gov/patents/
ptab/resources. Currently, the average
appeal pendency is about 12 months,
down from 15 months in 2020, and 30
months in 2015. See the PTAB statistics
available at www.uspto.gov/patents/
ptab/statistics. A small number of ex
parte appeals are advanced out of turn,
for example, because the appealed case
is a reissue application or a
reexamination proceeding, or because
the appealed case was accorded special
status in light of an inventor’s advanced
age or poor health.
On July 2, 2020, the PTAB adopted,
on a temporary basis, the Fast-Track
Appeals Pilot Program, under which
appellants may have an ex parte appeal
to the Board advanced out of turn by
filing a petition under 37 CFR 41.3 and
paying the petition fee specified in 37
CFR 41.20(a). See Fast-Track Appeals
DATES:
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60135
Pilot Program (85 FR 39888, July 2,
2020) (Fast-Track Notice). The PTAB
extended the Fast-Track Appeals Pilot
Program on July 12, 2021. See Extension
of the Fast-Track Appeals Pilot Program
(86 FR 36530, July 12, 2021) (First
Extension). The Fast-Track Appeals
Pilot Program permits appellants to
accelerate the Board’s decision on an ex
parte appeal, hastening patentability
determinations and the potential for
commercialization of products or
services embodying those patented
inventions. This helps spur follow-on
innovation, economic growth, and job
creation. The USPTO’s form for the
Fast-Track petition, Form PTO/SB/451,
is available at www.uspto.gov/patents/
apply/forms/forms-patent-applicationsfiled-or-after-september-16–2012.
The original Fast-Track Notice
required, among other things, that
appellants file a petition before July 2,
2021, to participate in the program. The
Fast-Track Notice also set a maximum
number of 500 appeals that may be
advanced through Fast-Track petitions.
The First Extension required that a
petition be filed before July 2, 2022, to
participate in the program. The First
Extension removed the maximum
number of 500 appeals, but it
maintained a maximum number of 125
Fast-Track petitions granted per quarter.
The Fast-Track Appeals Pilot Program
is hereby extended to accept petitions
for advancing out of turn (i.e., providing
‘‘Fast-Track status’’) to ex parte appeals
through July 2, 2024. The requirements
for the program remain the same as
those established in the original notice
(see Fast-Track Notice, 85 FR 39888),
with the following modification
regarding the petition limit.
Consistent with the First Extension,
there is no upper limit of 500 total
granted Fast-Track petitions. However,
to maintain the Board’s ability to
provide this faster appeal option while
timely resolving other appeals, the
number of granted petitions in the FastTrack Appeals Pilot Program remains
limited to 125 granted petitions per
quarter. If a quarterly limit is reached,
the PTAB retains the flexibility to
accept additional petitions, either for
consideration in that quarter or in the
next quarter.
The USPTO tracks the number of
petitions it grants, the average time it
takes to answer petitions, and the
average time for the Board to render a
decision on the merits of the ex parte
appeal after a petition grant. These
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]]>Agencies
[Federal Register Volume 87, Number 191 (Tuesday, October 4, 2022)]
[Notices]
[Pages 60134-60135]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-21472]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2021-0042]
Extension of the Patent Trial and Appeal Board Motion To Amend
Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO) is
extending the Motion to Amend (MTA) Pilot Program, initiated on March
15, 2019, and first extended on September 16, 2021. The MTA Pilot
Program provides additional options for a patent owner who files an MTA
in an America Invents Act (AIA) trial proceeding before the Patent
Trial and Appeal Board (PTAB). In particular, the program provides a
patent owner who files an MTA with options to request preliminary
guidance from the PTAB on the MTA and to file a revised MTA. The MTA
Pilot Program also provides timelines for briefing to accommodate these
options.
DATES: Applicability Date: October 4, 2022. Duration: The MTA Pilot
Program will run until September 16, 2024 (or it may end sooner if
replaced by a permanent program after notice-and-comment rulemaking).
The USPTO may further extend the MTA Pilot Program (with or without
modification) on either a temporary or a permanent basis, or may
discontinue the program after that date.
FOR FURTHER INFORMATION CONTACT: Miriam L. Quinn, Acting Vice Chief
Administrative Patent Judge; or Melissa Haapala, Vice Chief
Administrative Patent Judge; at 571-272-9797 ([email protected] or
[email protected], respectively).
SUPPLEMENTARY INFORMATION: A patent owner in an AIA trial proceeding
may file an MTA as a matter of right. See 35 U.S.C. 316(d)(1),
326(d)(1). After receiving public feedback about the PTAB's MTA
practice, in October 2018 the USPTO published a Request for Comments in
the Federal Register seeking written public comments on a proposed
amendment process in AIA trials that would involve preliminary guidance
from the PTAB on the merits of an MTA and an opportunity for a patent
owner to file a revised MTA. See Request for Comments on MTA Practice
and Procedures in Trial Proceedings Under the America Invents Act
Before the Patent Trial and Appeal Board, 83
[[Page 60135]]
FR 54319 (Oct. 29, 2018). The majority of comments supported the PTAB
issuing preliminary guidance in cases involving an MTA, and commenters
were almost evenly mixed in supporting or opposing the opportunity for
a patent owner to file a revised MTA.
On March 15, 2019, in response to these public comments, the USPTO
issued a Federal Register Notice detailing the MTA Pilot Program. See
Notice Regarding a New Pilot Program Concerning Motion To Amend
Practice and Procedures in Trial Proceedings Under the America Invents
Act Before the Patent Trial and Appeal Board, 84 FR 9497 (Mar. 15,
2019). The MTA Pilot Program provides a patent owner with two options
not previously available: (1) a patent owner may choose to receive
preliminary guidance from the PTAB on its MTA; and (2) a patent owner
may choose to file a revised MTA after receiving a petitioner's
opposition to the original MTA and/or the PTAB's preliminary guidance
(if requested). If a patent owner does not elect either option, then
AIA trial practice, including MTA practice, is essentially unchanged
from the practice prior to the implementation of the MTA Pilot Program.
The USPTO subsequently extended the MTA Pilot Program on September
16, 2021, to run through September 16, 2022. The USPTO presented the
results of the MTA Pilot Program through March 31, 2022, in Installment
7 of the Motion to Amend Study. The most recent information and
statistics related to MTAs are available on the USPTO's website at
www.uspto.gov/patents/ptab/motions-amend-study.
Now that stakeholders have had experience with the MTA Pilot
Program, as well as access to the results of the Motion to Amend Study,
the USPTO plans to issue a Request for Comments regarding the MTA Pilot
Program to gather stakeholder feedback and suggestions on the program
and on amendment practice generally and to determine whether to make
the program permanent through notice-and-comment rulemaking. The USPTO
is extending the MTA Pilot Program for a second time, through September
16, 2024, while it gathers public input. The requirements for the
program remain as set forth in the original notice without
modification.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-21472 Filed 10-3-22; 8:45 am]
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