Posts by Element IP

The USPTO published a notice in the Federal Register announcing the Climate Change Mitigation Pilot Program.

Under this pilot program, qualifying nonprovisional utility patent applications involving technologies that mitigate climate change by reducing greenhouse gas emissions will be advanced out of turn for examination (accorded special status) until a first action on the merits. Applicants are not required to satisfy the current requirements of the accelerated examination program or the prioritized examination program.

The USPTO will begin accepting petitions to participate in the pilot program June 3, 2022. The pilot program will be available until June 5, 2023, or until the USPTO accepts 1,000 grantable petitions, whichever is earlier, subject to its discretion to terminate prior.

See the full press release here.

The USPTO announced another extension to the modified COVID-19 Prioritized Examination Pilot Program. Requests that are compliant with the pilot program’s requirements and are filed on or before June 30, 2022, will be accepted.

The Federal Register Notice is available here.

Effective March 11, 2022, the USPTO will no longer grant Global Patent Prosecution Highway (GPPH) requests that are based on work performed by Rospatent as an Office of Earlier Examination. In addition, in pending cases in which, prior to March 11, 2022, the USPTO granted special status under the GPPH to applications based on work performed by Rospatent, the USPTO will remove that status and return those applications to the regular processing and examination queue, meaning that they will no longer be treated as GPPH applications at the USPTO.

Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office (USPTO) has terminated engagement with officials from Russia’s agency in charge of intellectual property, the Federal Service for Intellectual Property (commonly known as Rospatent), and with the Eurasian Patent Organization.

The press release is available here.

The USPTO launched a new Patent Public Search tool, which is based advanced Patents End-to-End (PE2E) search tool examiners use to identify prior art.

This free, cloud-based platform combines the capabilities of four existing search tools scheduled to be retired in September 2022: Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT). In the past, users could only access legacy search tools PubEAST and PubWEST at a USPTO facility like the headquarters in Alexandria, a regional office, or a Patent and Trademark Resource Center.

In conjunction with the launch of Patent Public Search tool, the USPTO unveiled a new Patent Public Search webpage that includes FAQs, training resources, and other information to help users transition to the new tool.

You can now use the First Office Action Estimator online tool [link] to get a time estimate for the first Office action on U.S. patent applications. A first Office action estimation will not be available for an application if a first Office action has already been issued for the application, or if the application has not yet been classified.

To check current estimates on how long it will take for a first Office action to be issued on a specific patent application, simply enter the application serial number into the tool. Alternatively, if you have an existing application and serial number, you can check estimates by logging into Private PAIR or Patent Center.

In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC, IPR2021-00330, (PTAB Jan. 14, 2022), the Patent Trial and Appeal Board (PTAB) granted a Petitioner’s Motion for Rehearing and accorded its Petition a filing date of December 16, 2020 – the date the Petitioner received a Fedwire confirmation that its payment to the USPTO’s bank, Treasury NYC, was accepted. This decision vacated a prior, erroneous Board decision denying institution of an IPR as time bared under 35 U.S.C. § 315(b) based on a December 21, 2020 filing date – the date the USPTO received the funds from its bank.

On rehearing, the PTAB rejected the prior majority decision finding “the beneficiary [USPTO] receives the payment when the beneficiary’s bank [Treasury NYC] actually pays the beneficiary or credits the beneficiary’s account and makes the funds available to the beneficiary, not when the beneficiary’s bank accepts the wire transfer from the sender’s bank as alleged by Petitioner.” In particular, the PTAB stated:

It is undisputed that the federal regulations incorporating Article 4A of the Uniform Commercial Code are applicable here. It is also undisputed that these regulations expressly address when the originator of a wire transfer (Petitioner) is considered to have paid the beneficiary (USPTO).  Specifically, Section 4A-406, is titled “Payment by Originator to Beneficiary; Discharge of Underlying Obligation,” and states, in relevant part, that the “originator of a funds transfer [Petitioner] pays the beneficiary [USPTO] . . . (i) at the time a payment order for the benefit of the beneficiary [USPTO] is accepted by the beneficiary’s bank [Treasury NYC] in the funds transfer and (ii) in an amount equal to the amount of the order accepted by the beneficiary’s bank.” Ex. 3004, 421 (emphasis added). Thus, even though the regulations governing Fedwire transactions consider the USPTO (the beneficiary) and Treasury NYC (the beneficiary’s bank) to be separate entities, section 4A-406 dictates that a petitioner pays the USPTO when Treasury NYC accepts the petitioner’s funds transfer.

In view of the above, the panel conclude that Petitioner’s Fedwire confirmation constituted sufficient evidence that Petitioner’s IPR fee accompanied the Petition, and that payment was “received” under 37 C.F.R. § 42.103(b), on December 16, 2020 (i.e., before the statutory deadline).

The USPTO is implementing a pilot program to evaluate the effects of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications. Under this pilot program, applicants may receive invitations to participate if their applications meet the criteria for the program as specified in the Federal Register notice, including a criterion that the claims in the application necessitate rejections on SME and other patentability-related grounds. An applicant who accepts the invitation to participate in this pilot program must still file a reply to every Office action mailed in the application, but is permitted to defer responding to SME rejections until the earlier of final disposition of the application, or the withdrawal or obviation of all other outstanding rejections.

Invitations to participate in the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will be mailed during the period beginning on February 1, 2022, and ending on July 30, 2022.

The USPTO is extending the modified COVID-19 Prioritized Examination Pilot Program. Requests that are compliant with the pilot program’s requirements and are filed on or before March 31, 2022, will be accepted. The USPTO will evaluate whether to terminate or further extend the program during this extension period.

The Federal Register Notice is available here.

Effective January 1, 2022, electronic retrievals of priority documents between the USPTO and the EPO will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS).

For applications filed on or after January 1, 2022, the applicant must provide the WIPO DAS access code associated with the priority application. The transition to the WIPO DAS will provide applicants with additional security via the requirement of the WIPO DAS access code, which serves as a third validation point for each application along with the application number and filing date. In addition, use of the WIPO DAS permits applicants to better manage and monitor the status of requested certified copy retrievals via the WIPO DAS applicant portal.