Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (USPTO or Office) is adding a new rule to govern the process for the review of Patent Trial and Appeal Board (PTAB or Board) decisions in Leahy-Smith America Invents Act (AIA) proceedings by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (Director). The new rule promotes the accuracy, consistency, and integrity of PTAB decision-making in AIA proceedings.

The United States Patent and Trademark Office has issued a certificate for a one-year interim extension of the term of U.S. Patent No. 7,199,162.

The United States Patent and Trademark Office (Office or USPTO) modifies its rules of practice governing amendment practice in trial proceedings under the Leahy-Smith America Invents Act (AIA) to make permanent certain provisions of the Office's motion to amend pilot program (MTA pilot program) and to revise the rules that allocate burdens of persuasion in connection with motions to amend (MTAs). These rules provide a patent owner with the option of issuance of preliminary guidance in response to an MTA and the option of filing one additional revised MTA. Further, these rules clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board, and that when exercising the discretion to grant or deny an MTA or to raise a new ground of unpatentability, the Board may consider all evidence of record in the proceeding. The rules further provide that the Board may consider information identified in response to a Board-initiated request for examination assistance, and that the results of that assistance will be added to the record. The rules better ensure the Office's role of issuing robust and reliable patents, and the predictability and certainty of post-grant trial proceedings before the Board. These rules relate to the Office trial practice for inter partes review (IPR), post-grant review (PGR), and derivation proceedings that implemented provisions of the AIA providing for trials before the Office.

The United States Patent and Trademark Office (USPTO) is extending the comment period for the notice titled "2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence" that was published in the Federal Register on July 17, 2024. The notice's comment period is extended until October 16, 2024. This will be the only extension of the comment period.

The National Medal of Technology and Innovation (NMTI or Medal) is the nation's highest honor for technological achievement, bestowed by the President of the United States on the nation's leading innovators. The Medal is awarded to individuals, teams (up to four individuals), companies, or divisions of companies for their outstanding contributions to America's economic, environmental, and social well-being. The NMTI Nomination Evaluation Committee will meet in a closed session on September 26, 2024. The primary purpose of the meeting is to discuss the relative merits of the people, teams, and companies nominated for the NMTI.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651- 0055 (Trademark Post Registration). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

On November 17, 2021, the United States Patent and Trademark Office (USPTO) published in the Federal Register a final rule amending its regulations to implement provisions of the Trademark Modernization Act of 2020 (TMA) concerning new response periods and extensions in the examination of post-registration filings. After publication of that rule, the USPTO delayed the effective date of a portion of the rule including through another final rule published on September 12, 2023. This proposed rule would withdraw these provisions that are currently delayed.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651- 0016 (Rules for Patent Maintenance Fees). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651- 0061 (Trademark Petitions). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651- 0062 (Third-Party Submissions and Protests). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651- 0064 (Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

The United States Patent and Trademark Office (USPTO) plays an important role in incentivizing and protecting innovation, including innovation enabled by artificial intelligence (AI), to ensure continued U.S. leadership in AI and other emerging technologies (ET). On April 30, 2024, the USPTO published a request for comments (RFC) in the Federal Register regarding the impact of the proliferation of AI on prior art, the knowledge of a person having ordinary skill in the art (PHOSITA), and determinations of patentability made in view of the foregoing. In furtherance of its AI/ET Partnership, the USPTO hereby announces a public listening session on July 25, 2024, titled "Listening Session on the Impact of the Proliferation of AI on Prior Art and PHOSITA." The purpose of the listening session is to obtain public input from stakeholders on the impact of the proliferation of AI on prior art and PHOSITA, as set forth in the questions for public comment of the RFC. The USPTO expects that the feedback received in this listening session and the written responses received for the RFC will help the USPTO evaluate the need for further guidance on these matters, aid in the development of any such guidance, and help inform the USPTO's work in the courts and in providing technical advice to Congress.

The United States Patent and Trademark Office (USPTO), Department of Commerce, is interested in collecting the public's views on the current state of the common law experimental use exception and whether legislative action should be considered to enact a statutory experimental use exception.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651- 0027 (Recording Assignments). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

The United States Patent and Trademark Office (USPTO) is reopening the comment period, which ended on May 13, 2024, for the guidance titled "Inventorship Guidance for AI-Assisted Inventions" that was published in the Federal Register on February 13, 2024.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension of an existing information collection: 0651-0077 (National Summer Teacher Institute (NSTI) and Master Teacher in Intellectual Property Program (MTIP)). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

The USPTO proposes to amend the rules of practice to add a new requirement for an acceptable terminal disclaimer that is filed to obviate (that is, overcome) nonstatutory double patenting. The proposed rule change would require terminal disclaimers filed to obviate nonstatutory double patenting to include an agreement by the disclaimant that the patent in which the terminal disclaimer is filed, or any patent granted on an application in which a terminal disclaimer is filed, will be enforceable only if the patent is not tied and has never been tied directly or indirectly to a patent by one or more terminal disclaimers filed to obviate nonstatutory double patenting in which: any claim has been finally held unpatentable or invalid as anticipated or obvious by a Federal court in a civil action or by the USPTO, and all appeal rights have been exhausted; or a statutory disclaimer of a claim is filed after any challenge based on anticipation or obviousness to that claim has been made. This action is being taken to prevent multiple patents directed to obvious variants of an invention from potentially deterring competition and to promote innovation and competition by allowing a competitor to avoid enforcement of patents tied by one or more terminal disclaimers to another patent having a claim finally held unpatentable or invalid over prior art.

The United States Patent and Trademark Office (USPTO or Office) seeks public comments regarding the impact of the proliferation of artificial intelligence (AI) on prior art, the knowledge of a person having ordinary skill in the art (PHOSITA), and determinations of patentability made in view of the foregoing. The increasing power and deployment of AI has the potential to provide tremendous societal and economic benefits and foster a new wave of innovation and creativity while also posing novel challenges and opportunities for intellectual property (IP) policy. Through the AI and Emerging Technologies Partnership (AI/ET Partnership), the USPTO has been actively engaging with the innovation community and AI experts on IP policy in view of AI. To build on these efforts, the USPTO is requesting written public comments on how the proliferation of AI could affect certain evaluations made by the Office, including what qualifies as prior art, the assessment of the level of skill of a PHOSITA, and determinations of patentability made in view of these evaluations. The USPTO expects that the responses received will help the Office evaluate the need for further guidance on these matters, aid in the development of any such guidance, and help inform the USPTO's work in the courts and in providing technical advice to Congress.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651- 0009 (Applications for Trademark Registration). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

The United States Patent and Trademark Office (USPTO or Office) proposes modifications to the rules of practice for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB or Board) that the Director and, by delegation, the PTAB will use in exercising discretion to institute IPRs and PGRs. The Office proposes these provisions in light of stakeholder feedback received in response to an October 2020 Request for Comments (RFC) and an April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposals enhance and build on existing precedent and guidance regarding the exercise of the Director's discretion pursuant to the America Invents Act (AIA) to determine whether to institute an IPR or PGR proceeding with regard to serial petitions, parallel petitions, and petitions implicating the same or substantially the same art or arguments previously presented to the Office. The proposed rules also provide a separate briefing process for discretionary institution arguments and align the procedures for termination of proceedings pre- and post- institution.