Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

Changes to Representation of Others Before the United States Patent and Trademark Office; Correction
Document Number: 2021-13145
Type: Rule
Date: 2021-06-22
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) is correcting an earlier final rule, ``Changes to the Representation of Others Before the United States Patent and Trademark Office,'' that appeared in the Federal Register on May 26, 2021 and which takes effect on June 25, 2021. This document corrects a minor error. No other changes are being made to the underlying final rule.
New Implementation Date for Patent Practitioner Registration Statement and Continuing Legal Education Certification
Document Number: 2021-12149
Type: Notice
Date: 2021-06-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) is delaying the implementation of the biennial mandatory registration statement required from registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters until November 1, 2024. However, beginning in the spring of 2022, registered patent practitioners and individuals granted recognition to practice before the USPTO in patent matters may voluntarily certify that they have completed six credit hours of continuing legal education (CLE) in the preceding 24 months.
Submitting Patent Applications in Structured Text Format and Reliance on the Text Version as the Source or Evidentiary Copy
Document Number: 2021-11256
Type: Notice
Date: 2021-06-02
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is in the process of transitioning to a system that supports submitting new patent applications in structured text, specifically DOCX format. Filing in structured text allows applicants to submit their specifications, claims, and abstracts in text-based format, thereby eliminating the need for applicants to convert applications into a PDF for filing. It also provides a flexible format with no template constraints and improves data quality by supporting original formats for chemical formulas, mathematical equations, and tables. The USPTO previously stated that for applications filed in DOCX, the authoritative document would be the accompanying PDF that the USPTO systems generate from the DOCX document. In response to public feedback, however, the USPTO now considers the DOCX document filed by the applicant to be the authoritative document. Accordingly, an applicant who files or has filed an application in DOCX may rely on that version as the source or evidentiary copy of the application to make any corrections to the documents in the application file. The USPTO will be hosting DOCX training sessions to provide more information, demonstrate how to file and retrieve DOCX files in Patent Center, EFS-Web, and PAIR, and answer any questions. Applicants can also file test submissions through Patent Center training mode to practice filing in DOCX. In addition, we will be offering listening sessions to gather feedback and suggestions to further improve DOCX features.
Changes to Representation of Others Before the United States Patent and Trademark Office
Document Number: 2021-10528
Type: Rule
Date: 2021-05-26
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) amends the Rules of Practice in Patent Cases and the rules regarding Representation of Others before the United States Patent and Trademark Office. This rulemaking aligns the USPTO Rules of Professional Conduct more closely with the American Bar Association (ABA) Model Rules of Professional Conduct. It also improves clarity in existing regulations to facilitate the public's compliance, including revising various deadlines, the procedures concerning the registration exam, provisions related to the revocation of an individual's registration or limited recognition in limited circumstances, and provisions for reinstatement. It makes non-substantive changes to improve the readability of various provisions as well.
Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications
Document Number: 2021-10421
Type: Proposed Rule
Date: 2021-05-26
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) proposes to amend the rules of practice to permit higher- capacity physical media to be submitted to the USPTO. Patent applications for certain inventions require significant data in American Standard Code for Information Interchange (ASCII) text format to be submitted to the USPTO in order to determine whether the invention described in the patent application is patentable. When submission of such data exceeds the USPTO's patent electronic filing system capacity, direct submission would not be possible for a large data submission in ASCII text format. To that end, the rules of practice are proposed to be amended to provide applicants with the ability to use physical media larger than compact discs (CDs) for submission of an electronic version of amino acid and nucleotide sequence information, information compiled in a large table, and information relating to a computer program listing. Additionally, changes regarding extraction of compressed data files, which had not been permitted in the past for certain submissions, would be permitted if compliant with the requirements of the proposed rules. Other rules relating to certain obsolete and non-secure methods of presenting data would be eliminated.
Patent and Trademark Public Advisory Committees
Document Number: 2021-11047
Type: Notice
Date: 2021-05-25
Agency: Department of Commerce, Patent and Trademark Office
On November 29, 1999, the President signed into law the Patent and Trademark Office Efficiency Act (1999 Act), which, among other things, established two Public Advisory Committees to review the policies, goals, performance, budget, and user fees of the United States Patent and Trademark Office (USPTO) with respect to patents, in the case of the Patent Public Advisory Committee (PPAC), and trademarks, in the case of the Trademark Public Advisory Committee (TPAC), and to advise the Director of the USPTO on these matters (now codified in the United States Code). The America Invents Act Technical Corrections Act made several amendments to the 1999 Act, including the requirement that the terms of the USPTO Public Advisory Committee members be realigned by 2014, so that December 1 will be used as the start and end date, with terms staggered so that each year, three existing terms expire and three new terms begin on December 1. With this current notice, the USPTO is requesting nominations for up to three members of the PPAC and up to three members of the TPAC, for terms of three years that will begin on December 1, 2021.
Changes To Implement Provisions of the Trademark Modernization Act of 2020
Document Number: 2021-10116
Type: Proposed Rule
Date: 2021-05-18
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) proposes to amend the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020. The proposed rule establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made; provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board; establishes flexible Office action response periods; and amends the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable. The USPTO also proposes to set fees for petitions requesting institution of ex parte expungement and reexamination proceedings, and for requests to extend Office action response deadlines. Amendments are also proposed for the rules concerning the suspension of USPTO proceedings and the rules governing attorney recognition in trademark matters. Finally, a new rule is proposed to address procedures regarding court orders cancelling or affecting registrations.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Trademark Post Registration
Document Number: 2021-09972
Type: Notice
Date: 2021-05-12
Agency: Department of Commerce, Patent and Trademark Office
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.
Grant of Interim Extension of the Term of U.S. Patent No. 9,364,354; Reducer®
Document Number: 2021-09846
Type: Notice
Date: 2021-05-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office has issued an order granting interim extension for a one-year interim extension of the term of U.S. Patent No. 9,364,354.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Prosecution Highway (PPH) Program
Document Number: 2021-07857
Type: Notice
Date: 2021-04-16
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO), in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0058 (Patent Prosecution Highway (PPH) Program). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Recording Assignments
Document Number: 2021-07854
Type: Notice
Date: 2021-04-16
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO), in accordance with 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.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Public Search Facility User ID and Badging
Document Number: 2021-07851
Type: Notice
Date: 2021-04-16
Agency: Department of Commerce, Patent and Trademark Office
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- 0041 (Public Search Facility User ID and Badging). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.
Fast-Track Pilot Program for Appeals Related to COVID-19
Document Number: 2021-07704
Type: Notice
Date: 2021-04-15
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is initiating the Fast-Track Pilot Program for Appeals Related to COVID-19 to provide for the advancement of applications out of turn in ex parte appeals related to COVID-19 before the Patent Trial and Appeal Board (PTAB). An appellant who has filed an ex parte appeal of an application with claim(s) that cover a product or process related to COVID-19 (such product or process must be subject to an applicable U.S. Food and Drug Administration (FDA) approval for COVID-19 use) and received a notice that the appeal has been docketed may file a petition at no cost to expedite the review of his or her appeal without paying a petition fee. The Fast-Track Pilot Program for Appeals Related to COVID-19 sets a target of reaching a decision on an ex parte appeal within six months from the date the appeal is entered into the pilot program.
Administrative Updates to the General Requirements Bulletin for Admission to the Examination for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office
Document Number: 2021-05940
Type: Notice
Date: 2021-03-23
Agency: Department of Commerce, Patent and Trademark Office
This request for comments seeks public input on proposed administrative updates to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office (GRB). There are three categories of technical and scientific qualifications that may typically make applicants eligible: Category A for specified bachelor's degrees, Category B for other bachelor's degrees with technical and scientific training, and Category C for practical engineering or scientific experience, which may be demonstrated by passing the Fundamentals of Engineering test. The United States Patent and Trademark Office (Office or USPTO) evaluates the criteria for applicants to sit for the registration examination on an ongoing basis. Based on this ongoing evaluation, the USPTO is looking into changing the criteria to: Add common Category B degrees to Category A, accept advanced degrees (i.e., master's and doctoral degrees) under Category A, and accept a combination of core sciences under Category B, Options 2 and 4, so long as one of the core science courses has a lab component.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; National Summer Teacher Institute
Document Number: 2021-04787
Type: Notice
Date: 2021-03-09
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO), in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0077 (National Summer Teacher Institute). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.
Grant of Interim Extension of the Term of U.S. Patent No. 8,858,612; Reducer®
Document Number: 2021-04170
Type: Notice
Date: 2021-03-02
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office has issued an order granting a one-year interim extension of the term of U.S. Patent No. 8,858,612.
Grant of Interim Extension of the Term of U.S. Patent No. 6,953,476; Reducer®
Document Number: 2021-04168
Type: Notice
Date: 2021-03-01
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office has issued an order granting a one-year interim extension of the term of U.S. Patent No. 6,953,476.
Grant of Interim Extension of the Term of U.S. Patent No. 7,534,790; Vernakalant Hydrochloride
Document Number: 2021-03427
Type: Notice
Date: 2021-02-19
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office has issued an order granting interim extension for a one-year interim extension of the term of U.S. Patent No. 7,534,790.
Development of a National Consumer Awareness Campaign on Combating the Trafficking in Counterfeit and Pirated Products
Document Number: 2021-02724
Type: Notice
Date: 2021-02-10
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) published a request for comments in the Federal Register on November 17, 2020, seeking information from stakeholders, including, but not limited to, intellectual property rights holders, online third- party marketplaces, third-party intermediaries, other private sector stakeholders, other entities with experience in public-private awareness campaigns, and applicable government agencies on the ``Development of a National Consumer Awareness Campaign on Combating the Trafficking in Counterfeit and Pirated Products'' as a public- private partnership. Through this notice, the USPTO is reopening the period for public comment until March 12, 2021.
Extension of the Period for Comments on the National Strategy for Expanding American Innovation
Document Number: 2021-02571
Type: Notice
Date: 2021-02-08
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) recently sought input from the public regarding the National Council for Expanding American Innovation (NCEAI). The USPTO is extending the comment period to ensure that all stakeholders have sufficient opportunity to submit comments on this important effort to develop a national strategy to expand innovation demographically, geographically, and economically.
Expanded Collaborative Search Pilot Program Extension
Document Number: 2021-02342
Type: Notice
Date: 2021-02-04
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) has extended the Expanded Collaborative Search Pilot (CSP) program, originally running from November 2017 through October 2020, an additional two years. The Expanded CSP program, conducted with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO), builds on the success of the initial CSP program, taking advantage of improvements in patent quality and examination pendency. With the Expanded CSP, applicants may request that multiple partnering intellectual property (IP) offices exchange search results for their counterpart applications prior to formulating and issuing their office actions. Each designated partner IP office independently conducts a prior art search for its corresponding counterpart application. The search results are then exchanged between the designated partner IP office(s), including the USPTO, before any IP office issues an office action. With this exchange of search results, the examiners in all designated partner IP offices will have a more comprehensive set of prior art references to consider when making initial patentability determinations. The Expanded CSP allows the USPTO to study the impact on examination processes of exchanges of search results between the USPTO and multiple partner IP offices prior to formulating and issuing office actions.
Sovereign Immunity Study
Document Number: 2021-01305
Type: Notice
Date: 2021-01-22
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) published a notice in the Federal Register on November 5, 2020, requesting information on the extent to which patent or trademark rights holders are experiencing infringement by state entities without adequate remedies under state law, and the extent to which such infringements appear to be based on intentional or reckless conduct. With this new notice, the USPTO is supplementing the previous notice with additional questions.
Small Entity Government Use License Exception
Document Number: C1-2020-27049
Type: Rule
Date: 2021-01-13
Agency: Department of Commerce, Patent and Trademark Office
Secondary Trademark Infringement Liability in the E-Commerce Setting
Document Number: 2021-00216
Type: Notice
Date: 2021-01-11
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) published a request for comments in the Federal Register on November 13, 2020, seeking information from intellectual property rights holders, online third-party marketplaces and other third-party online intermediaries, and other private sector stakeholders on the application of the traditional doctrines of trademark infringement to the e-commerce setting. Through this notice, the USPTO is reopening the period for public comment until January 25, 2021.
Disclaimer Practice in Patents and Patent Applications
Document Number: 2020-27676
Type: Proposed Rule
Date: 2020-12-30
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) proposes to amend the rules of practice to expand when certain types of patent applicants and patentees may, subject to other conditions, obtain or enforce a second patent for an invention that is similar (i.e., patentably indistinct) to a first patent. Ordinarily, in examination before the USPTO, any application for a second patent covering such similar invention would be rejected. The proposed rule change is limited to the situation where owners of the first and second patents or patent applications are different but have an agreement to conduct research together (i.e., a joint research agreement). For this limited situation, the proposed rule change would increase the ability to file a document, called a terminal disclaimer, that ties the rights of a second patent to the first patent. Specifically, a terminal disclaimer causes the second patent to limit its enforceable patent term to end no later than the first patent's term and limits when the second patent can be enforced. The proposed rule change would expand when a terminal disclaimer is permitted to be filed in the joint research agreement situation by eliminating the requirement that the second patent or patent application be filed later than the first patent or patent application. The USPTO also proposes to amend its rules of practice to explicitly state existing practices in the rules regarding when certain affidavits and declarations, as well as terminal disclaimers, may be filed.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Admission to Practice and Roster of Registered Patent Attorneys and Agents Admitted to Practice Before the United States Patent and Trademark Office
Document Number: 2020-28412
Type: Notice
Date: 2020-12-23
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO), in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0012 (Admission to Practice and Roster of Registered Patent Attorneys and Agents Admitted to Practice Before the United States Patent and Trademark Office). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.
Request for Comments on the National Strategy for Expanding American Innovation
Document Number: 2020-28298
Type: Notice
Date: 2020-12-23
Agency: Department of Commerce, Patent and Trademark Office
On September 14, 2020, the United States Patent and Trademark Office (USPTO) hosted the inaugural meeting of the National Council for Expanding American Innovation (NCEAI). The NCEAI consists of distinguished leaders from industry, academia, government, and nonprofit organizations. It was organized as an outgrowth of the Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018, which charged the USPTO with preparing a report concerning patenting and entrepreneurship activities among women, minorities, and veterans. The goal of the NCEAI is to help the USPTO develop a national strategy to build a more demographically, geographically, and economically inclusive innovation ecosystem. To assist in the development of this strategy, the USPTO is seeking input from the public.
Rules of Practice To Allocate the Burden of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board
Document Number: 2020-28159
Type: Rule
Date: 2020-12-21
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) revises the rules of practice in inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) (collectively post-grant trial) proceedings before the Patent Trial and Appeal Board (PTAB or Board) to allocate the burdens of persuasion in relation to motions to amend and the patentability of substitute claims proposed therein. In light of Federal Circuit case law, and to better ensure the predictability and certainty of post-grant trial proceedings before the Board, the Office revises the rules of practice governing motions to amend, to expressly assign to the petitioner the burden of showing the unpatentability of substitute claims proposed in a motion to amend. In addition, the Office revises the rules to expressly assign to the patent owner the burden of showing that a motion to amend complies with certain statutory and regulatory requirements for such a motion. Notwithstanding the adversarial nature of the proceedings and the burdens described above, however, the Office further revises its rules to expressly provide that the Board itself may, in the interests of justice, exercise its discretion to grant or deny a motion to amend only for reasons supported by readily identifiable and persuasive evidence of record in the proceeding. The Office anticipates the Board will exercise its discretion in the interests of justice only in rare circumstances. In doing so, the Board may make of record only readily identifiable and persuasive evidence in a related proceeding before the Office or evidence that a district court can judicially notice. Where the Board exercises its discretion in such circumstances, the parties will have an opportunity to respond.
The Article of Manufacture Requirement
Document Number: 2020-28110
Type: Notice
Date: 2020-12-21
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) seeks public input on whether its interpretation of the article of manufacture requirement in the United States Code should be revised to protect digital designs that encompass new and emerging technologies.
Small Entity Government Use License Exception
Document Number: 2020-27049
Type: Rule
Date: 2020-12-21
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) is amending the rules of practice in patent cases to clarify and expand exceptions to the rule pertaining to government use licenses and their effect on small entity status for purposes of paying reduced patent fees. The rule change is designed to support independent inventors, small business concerns, and nonprofit organizations in filing patent applications and to encourage collaboration with the Federal Government by expanding the opportunities to qualify for the small entity patent fees discount for inventions made during the course of federally funded or federally supported research.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Applications for Trademark Registration
Document Number: 2020-27904
Type: Notice
Date: 2020-12-18
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO), in accordance with 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.
Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent and Trademark Resource Center Metrics
Document Number: 2020-27784
Type: Notice
Date: 2020-12-17
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office, in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0068 (Patent and Trademark Resource Center Metrics). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.
Trademark Fee Adjustment
Document Number: 2020-27564
Type: Rule
Date: 2020-12-15
Agency: Department of Commerce, Patent and Trademark Office
On November 17, 2020, the United States Patent and Trademark Office (USPTO) published in the Federal Register a final rule on setting and adjusting trademark fees that is scheduled to go into effect on January 2, 2021. This final rule changes the effective date of one fee paid by international applicants under the Madrid Protocol from January 2, 2021, to February 18, 2021.
PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence
Document Number: 2020-27048
Type: Rule
Date: 2020-12-09
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) revises the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB or Board) in accordance with the U.S. Supreme Court decision in SAS Institute Inc. v. Iancu (SAS). Consistent with SAS, the Office also revises the rules of practice for instituting a review, if at all, on all grounds of unpatentability for the challenged claims that are asserted in a petition. Additionally, the Office revises the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a reply and a patent owner response may respond to a decision on institution. The Office further revises the rules to eliminate the presumption that a genuine issue of material fact created by the patent owner's testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.
Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board
Document Number: 2020-25490
Type: Proposed Rule
Date: 2020-11-18
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (USPTO or Office) published a request for comments in the Federal Register on October 20, 2020, seeking public comment on considerations for instituting trials before the Office under the Leahy Smith America Invents Act (AIA). Through this document, the USPTO is extending the period for public comment until December 3, 2020.
Trademark Fee Adjustment
Document Number: 2020-25222
Type: Rule
Date: 2020-11-17
Agency: Department of Commerce, Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) is setting or adjusting certain trademark fees, as authorized by the Leahy-Smith America Invents Act (AIA), as amended by the Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018 (SUCCESS Act). The changes will allow the USPTO to continue to recover the prospective aggregate costs of strategic and operational trademark and Trademark Trial and Appeal Board (TTAB or Board) goals (based on workload projections included in the USPTO fiscal year (FY) 2021 Congressional Justification), including associated administrative costs. They will also further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. USPTO has weighed carefully current economic conditions and the potential hardship that the fee increase could create for businesses and individuals. The Office paused development of the fee rule because of uncertainty about the economy earlier this year. The latest economic data point to continued recovery in many sectors of the economy. Because of this and the relatively small annual cost to businesses and individuals from USPTO's trademark applications and maintenance fees, the Office has decided to finalize the fee rule for implementation in January 2021.
Secondary Trademark Infringement Liability in the E-Commerce Setting
Document Number: 2020-25163
Type: Notice
Date: 2020-11-13
Agency: Department of Commerce, Patent and Trademark Office
On January 24, 2020, the Department of Homeland Security (DHS) released its Report to the President of the United States titled ``Combating Trafficking in Counterfeit and Pirated Goods'' (DHS Report). The report responded to the April 3, 2019, Presidential Memorandum titled ``Memorandum on Combating Trafficking in Counterfeit and Pirated Goods'' (Presidential Memorandum). Among the action items identified in the DHS Report was action 9, titled ``Assess Contributory Trademark Infringement Liability for E-Commerce.'' In order to implement this action item, the United States Patent and Trademark Office (USPTO) is seeking information from intellectual property rights holders, online third-party marketplaces and other third-party online intermediaries, and other private sector stakeholders, on the application of the traditional doctrines of trademark infringement to the e-commerce setting. More specifically, the USPTO seeks input on the application of contributory and/or vicarious trademark infringement liability (secondary infringement liability) to e-commerce.
Sovereign Immunity Study
Document Number: 2020-24621
Type: Notice
Date: 2020-11-05
Agency: Department of Commerce, Patent and Trademark Office
At the request of Senators Thom Tillis and Patrick Leahy, the United States Patent and Trademark Office (USPTO) is undertaking a study of the extent to which patent or trademark rights holders are experiencing infringement by state entities without adequate remedies under state law, and the extent to which such infringements appear to be based on intentional or reckless conduct. The USPTO seeks public input on these matters to assist in preparing the study.