Posts by Element IP

The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) would like to express our most heartfelt sympathies to the victims of the novel coronavirus (COVID-19) and their families. We sincerely hope that everyone affected recovers soon and that the spread of COVID-19 infection will end as soon as possible.

This unprecedented crisis has had a significant negative impact on the global economy. Amidst this challenging situation, we are once again reminded of the importance of innovations that support our society.

As evidenced by the daily reports around the world, there is no doubt that innovation is a powerful weapon against COVID-19. On countless occasions, humanity has overcome crises throughout history by the development and promotion of innovation.

Read the full press release on the USPTO website.

The United States Patent and Trademark Office (USPTO) considers the effects of the COVID-19 outbreak to be an “extraordinary situation” within the meaning of 37 CFR 1.183. In accordance with this notice, the USPTO will permit patentees to file initial patent term extension applications that meet certain criteria via EFS-Web or Patent Center.

Read the full press release on the USPTO website.

In accordance with the temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO) today further extended the time to file certain patent-related documents and to pay certain required fees.

The USPTO has already extended various deadlines twice, with the latest extension expiring at the end of this month. However, the USPTO recognizes that the COVID-19 pandemic continues to impose various hardships, especially on small businesses and individual inventors. Accordingly, as stakeholders continue to navigate the effects of the pandemic in various ways, and as more and more of them are resuming operations, the USPTO will again extend certain deadlines.

Read the full press release on the USPTO website.

PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence

The USPTO proposes changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’) in accordance with SAS Institute Inc. v. Iancu (‘‘SAS’’). Consistent with SAS, the USPTO also proposes changes to the rules of practice for instituting a review on all grounds of unpatentability for the challenged claims that are asserted in a petition.

Additionally, the Office proposes changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution. The Office further proposes a change to eliminate the presumption that a genuine issue of material fact created by the patent owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.

Read the full press release on the USPTO website.

USPTO announces COVID-19 Prioritized Examination Pilot Program for small and micro entities
The United States Patent and Trademark Office (USPTO) today announced a new COVID-19 Prioritized Examination Pilot Program.
Under this new pilot program, the USPTO will grant requests for prioritized examination to applicants that qualify for small or micro entity status without payment of the typical fees associated with other prioritized examination. In addition, the USPTO will endeavor to reach final disposition of applications in this program within six months if applicants respond promptly to communications from the USPTO.

Read the full press release on the USPTO website.

USPTO to allow filing of plant patent applications and correspondence via patent electronic filing systems in response to the COVID-19 outbreak
In response to the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) today announced it will temporarily permit the filing of plant patent applications and follow-on documents via the USPTO patent electronic filing systems (EFS-Web or Patent Center) until further notice. Filers are reminded that only registered users of the USPTO patent electronic filing systems may file follow-on documents into existing applications via the USPTO patent electronic filing systems.

Read the full press release.

Statement from Director Andrei Iancu on the loss of former USPTO Director Q. Todd Dickinson
The United States Patent and Trademark Office (USPTO) mourns the loss of The Honorable Q. Todd Dickinson, former Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Todd was immensely knowledgeable and influential in the intellectual property community. He was a warm person and a great friend to many.
Todd’s career spanned the IP landscape, having worked in law firms, corporations, trade groups, and government. After serving as Chief IP Counsel at Sun, Todd was appointed by President Clinton in 1998 to be Deputy Commissioner of Patents and Trademarks at the USPTO. With the passage of the American Inventors Protection Act (AIPA) in 1999, Todd became the first person to hold the modern-era title of Under Secretary of Commerce and Director of the USPTO.

Read the full press release.

Waiver of Original Handwritten Signature Requirement Due to the COVID-19 Outbreak
SUMMARY: 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.

DATES: March 30, 2020.

Download this notice.

Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay
SUMMARY: 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.
DATES: The clarification of practice set forth is applicable to any petition decided on or after March 2, 2020

Download this notice.