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

The USPTO is withdrawing the Notice of Proposed Rulemaking (NPRM) published in the Federal Register on May 10, 2024, that proposes to add a new requirement for an acceptable terminal disclaimer filed to obviate (that is, overcome) nonstatutory double patenting.

The United States Patent and Trademark Office (USPTO) sets or adjusts 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 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).

To promote the accuracy and integrity of the trademark register, the United States Patent and Trademark Office (USPTO or Office) is amending its practice concerning the selection of registrations for audit during the post-registration maintenance process. When the USPTO implemented its audit program in 2017, it announced that it would conduct random audits of certain affidavits or declarations filed each year. To promote the accuracy and integrity of the trademark register, the USPTO is adding additional directed audits to its practice.

In conformance with the Civil Service Reform Act of 1978, the United States Patent and Trademark Office (USPTO) announces the appointment of persons to serve as members of its Performance Review Board (PRB). This is an update to the recently published Federal Register notice (published on July 16, 2024), to reflect a board member serving in the role of a new position as the Interim Chief Public Engagement Officer.

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.