Patent and Trademark Office – Federal Register Recent Federal Regulation Documents

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.

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.

The United States Patent and Trademark Office (USPTO) issues this final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement). These changes are listed in the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), which is published by the World Intellectual Property Organization (WIPO), and will become effective on January 1, 2021.

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: 0651-0042 (Patent Examiner Employment Application). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

This request for comments seeks public input on proposed guidelines regarding continuing legal education (CLE). Pursuant to the final rule published on August 3, 2020, registered patent practitioners and individuals granted limited recognition to practice before the United States Patent and Trademark Office (USPTO or Office) in patent matters will be required to biennially submit a mandatory registration statement beginning on March 1, 2022. On the registration statement, practitioners may state whether they have completed 6 credits of CLE within the previous 24 months. The USPTO has prepared proposed CLE guidelines, attached to this request for comments as Appendix 1, which advise practitioners and providers as to the proposed types of CLE courses and activities that will qualify for USPTO CLE credit. In this request for comments, the Office seeks input on the proposed guidelines.

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. 7,259,184 (`184 patent).

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. 7,057,053 (`053 patent).

The United States Patent and Trademark Office (USPTO or Office) is amending the foreign filing license rules to facilitate the use of ePCT (a World Intellectual Property Organization (WIPO) online service) to prepare an international application for filing with the USPTO in its capacity as a Receiving Office (RO/US) under the Patent Cooperation Treaty (PCT). While the former foreign filing license rules authorized the export of technical data to ePCT for purposes of preparing an international application for filing in a foreign PCT Receiving Office, they did not authorize the export of technical data to ePCT for purposes of preparing an international application for filing with the RO/US. As a foreign filing license addresses the export of technical data, the USPTO is amending the foreign filing license rules to further provide that a foreign filing license from the USPTO authorizes the export of technical data abroad for purposes related to the use of ePCT to prepare an international application for filing with the RO/US under the PCT.

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: 0651-0075 (International Design Applications (Hague Agreement)). 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), in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0031 (Patent Processing). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

Patents and published patent applications provide a key source of free-flowing technical information among the world's brightest minds, thus promoting further innovation. The United States Patent and Trademark Office (USPTO or Office) recognizes that its charge to issue high-quality patents to inventors goes hand-in-hand with dissemination of this important information. Such information flow is now more important than ever in view of the urgent challenges posed by COVID-19. Therefore, the USPTO is implementing a deferred-fee provisional patent application pilot program (the program) to promote the expedited exchange of information about inventions designed to combat COVID-19. Under this program, the USPTO will permit applicants to defer payment of the provisional application filing fee until the filing of a corresponding nonprovisional application. In turn, applicants must agree that the technical subject matter disclosed in their provisional applications will be made available to the public via a searchable collaboration database maintained on the USPTO's website. To qualify for the program, the subject matter disclosed in the provisional application must concern a product or process related to COVID-19, and such product or process must be subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use, whether such approval has been obtained, is pending, or will be sought prior to marketing the subject matter for COVID-19.

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: 0651-0050 (Responses to Office Action and Voluntary Amendment Forms). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

On June 29, 2016, the United States Patent and Trademark Office (USPTO) implemented the Cancer Immunotherapy Pilot Program, which permits patent applications pertaining to cancer immunotherapy to be advanced out of turn for examination and reviewed earlier (accorded special status). To date, over 500 petitions requesting participation in the pilot program have been filed, and 167 patents have been granted under the pilot program. In view of the continued interest in the program, the USPTO is extending it until June 30, 2022. All parameters will remain the same as in the original pilot.

The United States Patent and Trademark Office (Office or USPTO) proposes to set or adjust 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 proposed fees are intended to recover the prospective aggregate costs of future 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. The proposed fees will 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. Before a final rule is issued, the USPTO will consider the state of the U.S. economy, the operational needs of the agency, and public comments submitted pursuant to this rulemaking. The USPTO will make adjustments as necessary to the substance and timing of any final rule based on all of these considerations.

The United States Patent and Trademark Office (USPTO or Office) is revising the rules of practice pertaining to patent term adjustment in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Supernus Pharm., Inc. v. Iancu (Supernus). The Federal Circuit in Supernus held that a reduction of patent term adjustment must be equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application. The USPTO is revising the provisions pertaining to reduction of patent term adjustment for alignment with the Federal Circuit decision in Supernus.

The Chief Financial Officer/Assistant Secretary of Commerce for Administration, with the concurrence of the General Services Administration, renewed the Charter for the National Medal of Technology and Innovation Nomination Evaluation Committee on February 12, 2020.

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995, invites comments on the renewal and revision of an existing information collection: 0651- 0063 (Patent Trial and Appeal Board (PTAB) Appeals).

The United States Patent and Trademark Office (USPTO or Office) considers the effects of the COVID-19 outbreak to be an extraordinary situation. Therefore, pursuant to the Office's authority, the USPTO is waiving its only regulatory requirements for an original handwritten signature personally signed in permanent dark ink or its equivalent for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card. In both instances, the Office will accept copies of handwritten signatures. The USPTO has no other requirements for original handwritten, ink signatures.

The United States Patent and Trademark Office has issued an order granting interim extension under 35 U.S.C. 156(d)(5) for a one- year interim extension of the term of U.S. Patent No. 6,953,476.

The United States Patent and Trademark Office (USPTO) is clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional.