Posts by Element IP

The USPTO will transition to the electronic issuance of patents and trademark registrations in 2022.

For patents, the USPTO will be issuing a notice of proposed rulemaking (NPRM) to seek public feedback on our proposal to revise the rules of practice to issue patents electronically. Under the current rule (37 CFR 1.315), the USPTO is required to deliver or mail a patent “upon issuance to the correspondence address of record.” Under the proposed changes, the USPTO would no longer physically deliver the patent by mailing it to the correspondence address, but would issue the patent electronically via our patent document viewing systems (i.e., Patent Center and Patent Application Image Retrieval (PAIR)). Patentees would also be able to download and print their electronically issued patents through these systems.

The USPTO considers the shift to electronic registrations beneficial for patent owners because it will reduce the pendency of every issued patent application by approximately two weeks.

The full press release is available here.

As part of the “Go For Real” anti-counterfeiting campaign, the National Crime Prevention Council (NCPC) and the USPTO released a series of ads informing younger buyers and their parents about the serious dangers of buying fake goods. The ads are designed to counter a dangerous escalation of counterfeits that are cheating consumers and causing serious injuries and death, hurting U.S. businesses, and funding organized crime. The ads are viewable here.

The campaign is especially focused on stopping fake electronics, cosmetics and personal care products, and sports equipment. The ads—which show the purchase of a counterfeit gone disastrously wrong—are being rolled out to more than 2,100 television stations, social media, electronic billboards, online gaming, radio and music services, and other innovative ways to directly reach teens and tweens.

The USPTO issue a final rule that delays until January 1, 2023, the effective date of the fee set forth in 37 CFR 1.16(u) for any nonprovisional utility patent application filed under 35 U.S.C. 111, including any continuing application, that is not filed in DOCX format. Prior to this final rule, the fee was set to take effect on January 1, 2022. The delay will enable the USPTO to undertake enhanced testing of its information technology systems as more users file in DOCX, and it also will give applicants more time to adjust to filing patent applications in DOCX format.

The final rule is available here.

United States Secretary of Commerce Gina Raimondo announced her new role as Chair of the re-branded Council for Inclusive Innovation (CI2), which will assist the USPTO in developing a comprehensive national strategy to build a more diverse and inclusive innovation ecosystem.

“Together, as a Council, it is imperative that we continue working to expand American innovation by tapping into the strength of our nation’s diversity and increasing opportunities for all innovators and entrepreneurs who are creating new technologies, companies, and industries,” wrote Secretary Raimondo. “With the most recent data from the U.S. Patent and Trademark Office indicating that only 12.8% of inventors listed on patents granted in a single year are women, and little to no data on the participation of other underrepresented groups, we can all agree that there is much work to be done to build a stronger and more inclusive innovation sector.”

The full press release is available here.

The USPTO issued a final rule permitting patent applicants to use physical media larger than compact discs, i.e., Digital Video Disc-Recordable (DVD-R or DVD+R), for submission of an electronic version of amino acid and nucleotide sequence information, information compiled in a large table, and information related to a computer program listing.

This rulemaking expands the types of physical media that can be used when submissions of such data exceed the USPTO’s patent electronic filing system capacity.

The full text of the final rule is available here.

The United States Patent and Trademark Office extended the After-Final Consideration Pilot (AFCP) 2.0 through September 30, 2022.

Briefly, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. To be eligible for AFCP 2.0, applicants must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. The examiner will then use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with the applicant, if the response does not place the application in condition for allowance.

A summary of AFCP 2.0 is available here.

The United States Patent and Trademark Office is extending the Motion to Amend (MTA) Pilot Program, which was initiated on March 15, 2019, and provides additional options for a patent owner who files an MTA before the Patent Trial and Appeal Board (PTAB). In particular, the MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA. The program also provides timelines for briefing to accommodate these options.

The MTA Pilot Program will run until September 16, 2022. The USPTO may extend the MTA Pilot Program (with or without modification) on either a temporary or a permanent basis, or may discontinue the program after that date.

The Notice published in the Federal Register is available here.

The America Invents Act includes provisions for prioritized examination of patent applications and provides that the Office may not accept more than 10,000 requests for prioritization in any fiscal year (October 1 to September 30) until regulations setting another limit are prescribed. The Office published an interim rule in 2019 expanding the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year to 12,000. The current interim rule further expands the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year to 15,000.

The limit of 15,000 requests for prioritized examination accepted per year is applicable for fiscal year 2021.

The Interim Rule published in the Federal Register is available here.

The United States Patent and Trademark Office is modifying the COVID–19 Prioritized Examination Pilot Program to accept applications until December 31, 2021. Requests that are compliant with the pilot program’s requirements and are filed on or before December 31, 2021, will be accepted, even if more than 500 requests have already been approved. The USPTO will evaluate whether to terminate or further extend the program during this extension.

The Modification published in the Federal Register is available here.

The USPTO announced that starting August 23, 2021, David L. Berdan will be performing the functions and duties of the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, following the news that Coke Stewart will be departing the agency.

In November 2020, Berdan was appointed General Counsel of the USPTO. In that role, he advises the agency on all major legal matters and supervises the Office of General Counsel and its three component offices: the Office of the Solicitor, the Office of General Law, and the Office of Enrollment and Discipline.

“A West Point graduate and Gulf War veteran, Dave has the leadership ability, experience, and dedication to public service necessary for success in this role,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “I look forward to working with him on achieving the USPTO’s strategic goals, serving our stakeholders, and leading this tremendously talented workforce of over 13,000 public servants.”

Deputy General Counsel, Office of General Law David Shewchuk will serve as Acting General Counsel while Berdan performs the functions and duties of the Deputy Director.

The USPTO’s Notice is available here.