Patent and Trademark Office 2024 – Federal Register Recent Federal Regulation Documents

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.

The United States Patent and Trademark Office (USPTO or Office) proposes new rules to govern the process for the review of Patent Trial and Appeal Board (PTAB or Board) decisions in 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). Specifically, the USPTO proposes these rules in light of stakeholder feedback received in response to a request for comments (RFC). The proposed rules promote the accuracy, consistency, and integrity of PTAB decision-making in Leahy-Smith America Invents Act of 2011 (AIA) proceedings.

The United States Patent and Trademark Office (USPTO) proposes to set or adjust patent 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 proposed fee adjustments are needed to provide the USPTO with sufficient aggregate revenue to recover the aggregate costs of patent operations in future years (based on assumptions and estimates found in the agency's Fiscal Year 2025 Congressional Justification (FY 2025 Budget)), including implementing the USPTO 2022-2026 Strategic Plan (Strategic Plan).

The United States Patent and Trademark Office (USPTO) proposes to set and adjust 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 proposed fee adjustments will provide the USPTO sufficient aggregate revenue to recover the aggregate costs of trademark operations in future years (based on assumptions and estimates found in the agency's Fiscal Year 2025 Congressional Justification (FY 2025 Budget)), including implementing the USPTO 2022-2026 Strategic Plan (Strategic Plan).

The United States Patent and Trademark Office (USPTO) issued a memorandum to the patent examining corps to assist patent examiners in addressing means-plus-function and step-plus-function claim limitations, and to create a clearer record for the applicant, the public, and the courts. The issued memorandum will help ensure consistent analysis by USPTO employees in addressing means-plus- function and step-plus-function limitations and will result in clearer communications to applicants from the USPTO as to the interpretation of means-plus-function and step-plus-function limitations and any related deficiencies. Clearer USPTO communications provide both the applicant and the public with notice as to the claim interpretation used by the patent examiner during prosecution, and if the applicant intends a different claim interpretation, the issue can be clarified early in prosecution.

On March 9, 2023, the United States Patent and Trademark Office (USPTO) implemented the First-Time Filer Expedited Examination Pilot Program, which permits patent applications from certain micro entity first-time filers to be advanced out of turn for examination and reviewed earlier (accorded special status). The pilot program was originally scheduled to end on March 11, 2024. In view of the continued interest in the program, the USPTO is extending it until either March 11, 2025, or until the date on which the USPTO grants a total of 1,000 petitions since the start of the pilot program, whichever occurs first. All pilot parameters will remain the same as those for the original pilot.

The United States Patent and Trademark Office (Office or USPTO) proposes to update its rules 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). The Office proposes to revise its rules of practice to provide for issuance of preliminary guidance in response to an MTA and to provide a patent owner with the option for filing one additional revised MTA. Further, the Office proposes to revise the rules to clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board and to clarify 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, including evidence identified through a prior art search conducted by the Office at the Board's request and added to the record. These 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 changes would apply to the existing consolidated set of rules relating 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), as required by the Paperwork Reduction Act of 1995, invites comments on the extension of an existing information collection: 0651-0060 (National Medal of Technology and Innovation Nomination Application). 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) is publishing this updated guidance to provide a review of the flexible approach to determining obviousness that is required by KSR Int'l Co. v. Teleflex Inc. (KSR). The focus of this document is on post-KSR precedential cases of the United States Court of Appeals for the Federal Circuit (Federal Circuit), to provide further clarification for decision-makers on how the Supreme Court's directives should be applied. While highlighting the requirement for a flexible approach to the obviousness determination, this updated guidance also emphasizes the need for a reasoned explanation when reaching a conclusion that a claimed invention would have been obvious. This updated guidance, together with the direction provided in the Manual of Patent Examining Procedure (MPEP), serves as operable guidance for USPTO personnel when applying the law of obviousness.

As part of its initiatives to expand access to practice before the U.S. Patent and Trademark Office (USPTO or Office), the USPTO proposes to amend the rules regarding admission to practice before the Patent Trial and Appeal Board (PTAB or Board) in proceedings under the Leahy-Smith America Invents Act (AIA proceedings) to give parties the option to designate non-registered practitioners who are recognized pro hac vice (i.e., granted recognition in a specific PTAB proceeding) as lead counsel; excuse parties from the requirement to designate back-up counsel upon a showing of good cause such as a lack of resources to hire two counsel; establish a streamlined alternative procedure for recognizing counsel pro hac vice that is available when counsel has previously been recognized pro hac vice in a different PTAB proceeding; and clarify that those recognized pro hac vice have a duty to inform the Board of subsequent events that render inaccurate or incomplete representations they made to obtain pro hac vice recognition.

Pursuant to the ``Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence'' (October 30, 2023), the United States Patent and Trademark Office (USPTO or Office) is issuing inventorship guidance for inventions assisted by artificial intelligence (AI). The guidance provides clarity for USPTO stakeholders and personnel, including the Central Reexamination Unit and the Patent Trial and Appeal Board (PTAB or Board), on how the USPTO will analyze inventorship issues as AI systems, including generative AI, play a greater role in the innovation process. This guidance explains that while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity. Patent protection may be sought for inventions for which a natural person provided a significant contribution to the invention, and the guidance provides procedures for determining the same. Finally, the guidance discusses the impact these procedures have on other aspects of patent practice. The USPTO is seeking public comments on this inventorship guidance for AI-assisted inventions.

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- 0032 Initial Patent Applications. 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 announcing the Public Engagement Partnership meeting series to facilitate increased engagement with the public about the patent system. The USPTO will host the first meeting of the Public Engagement Partnership series virtually and in person at the USPTO headquarters on March 1, 2024. The purpose of this meeting is to provide education about the patent system and to share ideas, experiences, and insights related to the administration of the system.