Posts by Element IP

Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, called on consumers to fight against counterfeit products. He did so in an address to the National Association of Manufacturers (NAM) as they released their anti-counterfeiting white paper.

“When we fight counterfeiting, we have to look at both sides—supply and demand,” declared Director Iancu. “And on both fronts, we have the strong support of the entire Administration.”

“A creative, collaborative, and ambitious public-private partnership can harness the particular strengths and reach of the partners undertaking this important work,” continued Director Iancu. “Working together—industry and government in a systemic and sustained manner—we can make a real difference.”

Andrei Iancu’s remarks can be found here.

The United States Patent and Trademark Office (USPTO) today released “Progress and Potential: 2020 Update on U.S. Women Inventor-Patentees,” a follow-up to its 2019 report on U.S. women inventors. The new report updates the previous findings based on a review of an additional nearly one million issued patents and three years of new data, and it provides further insights into the participation of women in America’s intellectual property systems.

The report’s numerous findings include:

• More women are entering and staying active in the patent system than ever before.
• The number of patents with at least one woman inventor increased from 20.7% in 2016 to 21.9% by the end of 2019.
• The “Women Inventor Rate”–the share of U.S. inventors receiving patents who are women–increased from 12.1% in 2016 to 12.8% in 2019.
• The share of women among new inventors on issued patents increased from 16.6% in 2016 to 17.3% by 2019.
• The gender gap in the number of women inventors who remain active by patenting again within five years is decreasing. For the most recent group of new inventors, 46% of women patented again in the next five years versus 52% of men.
• Among the leading patent filers, the 3M Company showed the largest improvement in the participation of women inventor-patentees: Their average increased from 15.2% over 2007- 2016 to 16.6% for 2007-2019.

“This report is a great achievement for the USPTO and an important steppingstone for women in America’s intellectual property systems,” said Secretary of Commerce Wilbur Ross. “The USPTO has remained committed in their efforts to support women in innovation, and this positive momentum will continue to create a more inclusive intellectual property community.”

The full report can be found here.

The United States Patent and Trademark Office (USPTO) today announced that Secretary of Commerce Wilbur Ross has reappointed Commissioner for Patents Drew Hirshfeld for a second five-year term. Commissioner Hirshfeld’s original term was set to expire this July.

“I am pleased to reappoint Drew Hirshfeld as the Commissioner for Patents at the United States Patent and Trademark Office,” said Secretary of Commerce Wilbur Ross. “Commissioner Hirshfeld has made great contributions toward the mission of the Patents organization, and I am confident he will continue to do so throughout his second term. The Patents organization is vital to America’s intellectual property system, and I commend Commissioner Hirshfeld’s leadership and service.”

“Commissioner Hirshfeld and his team have done an excellent job in recent years of improving patent pendency, quality and overall operations, while helping to implement significant changes to examination guidance in many areas, including patent eligibility,” said Andrei Iancu, Under Secretary of Commerce and Director of the USPTO. “I am confident that under his ongoing leadership, the Patents organization will continue the efforts we have recently undertaken and operate at the highest levels of excellence to meet the needs of our ever-important and ever-evolving intellectual property system.”

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 Cancer Immunotherapy Pilot Program will continue to run until June 30, 2022. Therefore, petitions to make special under the Cancer Immunotherapy Pilot Program must be filed on or before June 30, 2022. In addition, any petition to make special under the Cancer Immunotherapy Pilot Program filed between June 30, 2020, and the publication date of this notice will be considered timely. The USPTO may further extend the pilot program (with or without modifications) or terminate it, depending on feedback received, continued interest, and the effectiveness of the pilot program.

Read the official notice here.

The United States Patent and Trademark Office (USPTO) today announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The “Fast-Track Appeals Pilot Program” launches July 2, 2020. The required petition fee is $400.

“The Fast-Track Appeals Pilot Program serves as an extension of the Track One prioritized examination program, which has proven to be very popular with our nation’s innovators,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “For the first time in USPTO history, applicants will be able to speed up both patent examination and ex parte appeals, thus obtaining decisions on their most important inventions in about half the time of a typical application.”

Petition grants for fast-track review of ex parte appeals will initially be limited to a maximum of 500 per fiscal year, or 125 per quarter, for the program’s duration. In order to keep appeals on schedule, oral hearings under the program will be expedited and, once scheduled, will not be rescheduled or relocated.

Read the full press release here.

On June 30, the ninth edition of the Manual of Patent Examining Procedure was revised to include updated information on patent examination policy and procedure related to a number of issues, including subject matter eligibility and examination of computer-implemented functional claim limitations.

The June 2020 revision updates sections of chapters 100-1000, 1200-1500, and 1700-2800. The updated sections have a revision indicator of [R-10.2019], meaning these sections have been updated to reflect USPTO patent practice and relevant case law as of October 31, 2019. In addition, the June 2020 revision updates Chapter FPC – Form Paragraphs Consolidated, the Foreword, the Introduction, the Subject Matter Index, and all Appendices, except Appendix I and Appendix P.

Learn more on the USPTO’s MPEP page here.

The United States Patent and Trademark Office (USPTO) recognizes that the COVID-19 pandemic has imposed significant hardships on many of our stakeholders. As a result, the USPTO has waived certain fees under existing authority through the March 16 notice, and has extended certain patent and Patent Trial and Appeal Board (PTAB) deadlines three times under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), through the March 31 notice, the April 28 notice, and the May 27 notice.

As businesses begin to reopen or resume operations, some stakeholders will continue to require relief, particularly small businesses and individuals. By the notice issued today (the June 29 notice), under the CARES Act authority and its existing authority, the USPTO has extended from July 1, 2020, to September 30, 2020, the time for small and micro entities to pay certain patent-related fees that would otherwise have been due on or after March 27, 2020. The small and micro entity fees eligible for an extension until September 30, 2020, include: basic filing fees, issue fees, maintenance fees, and other fees as set forth in the June 29 notice. In addition to this extension, and although some of the other relief provided in past notices is ending, other extensions of time and other relief remain available to those who need it on a case-by-case basis.

Read the full notice here.

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.

Effective date: This final rule is effective on July 16, 2020. Applicability date: The changes in this final rule apply to original utility and plant patents issuing from applications filed on or after May 29, 2000, in which a notice of allowance was mailed on or after July 16, 2020.

Read the full notice here.

Pursuant to Subsection 12004(a) of the Coronavirus Aid, Relief, and Economic Security (CARES) Act and 37 C.F.R. § 1.183, and in response to the requests from stakeholders, the United States Patent and Trademark Office (USPTO) is extending the time period for petitioning for certain rights of priority or benefit in a patent application and waiving the associated petition fee.

The relief extends the two-month time-period for restoring the right of priority to or benefit of a foreign or provisional application for any nonprovisional application due to be filed on or after March 27, 2020, but before July 30, 2020.

Read the full notice here.

DTN, LLC v. Farms Technology, LLC, IPR2018-01412, Paper 21 (June 14, 2019) (precedential)

This decision terminates the proceeding due to settlement and denies a joint request to expunge collateral agreements referenced in the settlement agreement. The decision determines that collateral agreements do not need to be between the patent owner and the petitioner and do not need to be made in connection with, or in contemplation of, terminating an IPR to fall within the scope of 35 U.S.C. § 317(b).

Sattler Tech Corp. v. Humancentric Ventures, LLC, PGR2019-00030, Paper 9 (July 26, 2019) (informative)

This decision institutes a post-grant review proceeding for a design patent after finding the petitioner showed it was more likely than not that the claimed portions of the design were primarily functional, not ornamental.

Kokusai Electric Corp. v. ASM IP Holding B.V., IPR2018-01151, Paper 38 (Aug. 20, 2019) (informative)

This order terminates the proceeding due to settlement without reaching a decision on the patent owner’s motion to amend, explaining that the patent owner may pursue the claims in a reissue or reexamination proceeding.

Curt G. Joa, Inc. v. Fameccanica.data S.P.A., IPR2016-00906, Paper 61 (June 20, 2017) (informative)

This decision provides guidance as to the use of confidential information during an oral hearing.

Read the full press release on the USPTO website.