Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (USPTO) is reminding applicants that patent applications must properly present examples in a manner that clearly distinguishes between prophetic examples that describe predicted experimental results and working examples that report actual experimental results. The distinction must be clear to satisfy the written description and enablement requirements and comply with the applicant's duty of disclosure.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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 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.

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.

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.