Patent and Trademark Office December 2020 – Federal Register Recent Federal Regulation Documents

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.