USPTO Withdraws Proposed Terminal Disclaimer Rule

Today the USPTO withdrew its proposed change to terminal disclaimer practice. The change, proposed on May 10, 2024, would have added a new requirement to terminal disclaimers filed to overcome obviousness-type double patenting (ODP) rejections. Most controversially, under the new requirement, the applicant would need to agree that the patent issuing from an application in which a terminal disclaimer was filed would be enforceable only if the patent were not tied (and had never been tied) through one or more terminal disclaimers to a patent in which any claim had been finally held unpatentable or invalid over prior art.

Thus, for example, in a family of two patents, one earlier, one later, each having twenty claims and being “tied” together by a single terminal disclaimer in the later patent, should any one of the twenty claims in the earlier patent be found unpatentable or invalid over prior art, all twenty claims in the later patent would become unenforceable. Given the popularity of ODP rejections over co-pending applications, it was easy to envision under the proposed change an entire family of patents with forty, sixty, eighty, etc., claims becoming unenforceable upon a finding of invalidity for a single claim.

As required, the USPTO solicited comments on the proposed change. The vast majority of comments were opposed to the proposed change, including a letter from a group of five former Directors, Deputy Directors, and Patent Commissioners urging the USPTO to completely withdraw the proposed rule. On December 4, 2024, the USPTO withdrew the rule, stating only that “[i]n light of resource constraints, the USPTO has decided not to move forward with the proposed rule at this time and to withdraw the proposed rule.”

The USPTO today announced that two Federal Register Notices will be issued on June 6. The first notice changes the effective date of the Non-DOCX filing fee to January 17, 2024. The USPTO states in the notice:

The effective date of this new fee was most recently delayed in a final rule published in the Federal Register on March 27, 2023 and was scheduled to become effective on June 30, 2023. Through this final rule, the USPTO is delaying the effective date of this fee until January 17, 2024.

The second notice extends, indefinitely, the option to file an applicant-generated PDF version of an application along with the DOCX version in Patent Center. The notice states:

The option to submit an applicant-generated PDF of a patent application along with the validated DOCX file(s) when filing an application in Patent Center…is being extended until further notice.

Element IP will continue to keep you informed of developments in the USPTO’s implementation of DOCX filing.

The USPTO today announced that a Federal Register Notice will be issued on Monday March 27 changing the effective date of the Non-DOCX filing fee to June 30, 2023. The USPTO states in the notice:

The effective date of this new fee was most recently delayed in a final rule published in the Federal Register on December 29, 2022 and was scheduled to become effective on April 3, 2023. Through this final rule, the USPTO is delaying the effective date of this fee until June 30, 2023.

Element IP will continue to keep you informed of developments in the USPTO’s implementation of DOCX filing.

Beginning April 18, 2023, the U.S. Patent and Trademark Office (USPTO) is shifting towards issuing paper waste-reducing electronic patent grants (eGrants) to patent recipients—a new process that delivers the official copy of patent grants in an electronic format. The USPTO will provide a bound paper version as a ceremonial copy throughout a limited transition period, and then for a nominal fee thereafter.

“By issuing eGrants, we’re making considerable strides toward more environmentally-conscious operations at the USPTO,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Providing 21st century service to our stakeholders means shifting our processes to reflect 21st century policies. The eGrant process not only minimizes paper waste, but it also benefits stakeholders by reducing pendency and streamlining the process. It’s a win-win for the agency and for our customers.”

The eGrant process is expected to significantly decrease the USPTO’s printing and mailing needs, potentially reducing patent pendency and saving the agency nearly $2 million in annual printing and mailing costs. Further, under the new process, patent recipients will receive their electronic patent grant in PDF format on the day of issuance.

During the transition period, patent awardees will have access to the eGrant official copy in Patent Center and receive the bound paper version as a ceremonial copy. Patent recipients may still request USPTO certified copies and presentation copies from the USPTO’s certified copy center for an additional fee. Unlimited free copies of eGrants can also be printed from USPTO’s online Patent Center. The agency already provides electronic trademark registration certificates to trademark owners.

The USPTO expects the eGrant process to reduce the time between payment of the issue fee and patent grant. Because of this, there will be less time after the payment of the issue fee for applicants to file continuing applications, Quick Path IDSes, and petitions to withdraw an application from issue. Accordingly, these submissions should be filed as early as possible, with continuing applications preferably filed before payment of the issue fee.

The United States Patent and Trademark Office (USPTO) is extending for an additional year (retroactive to January 1, 2023) its pilot program of providing an email address for submitting inquiries about the Patent Cooperation Treaty (PCT) and international and national stage applications.

The email address is [email protected].

The USPTO notes that the email address is intended for general inquiries (such as: how to file international applications, national stage applications, and bypass applications; the status of pending applications; and how to respond to communications in such applications), rather than case-specific or time-sensitive inquiries (such as when a petition may be a proper response). The USPTO recommends directing the latter inquiries by telephone to the PCT Help Desk.

On January 18, at the U.S. Patent and Trademark Office’s (USPTO) Women’s Entrepreneurship (WE) event in Naples, Florida, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal announced the launch of the agency’s new Intellectual Property (IP) Identifier tool. This user-friendly, virtual resource—designed for those who are less familiar with IP—enables users to identify whether they have IP and the IP protections they need to support and advance their business, invention, or brand. The IP Identifier serves as an important foundation for an innovator, entrepreneur or creator’s IP journey. In addition to the tool helping identify a person’s or company’s intellectual property, it provides easily digestible information on intellectual property—patents, trademarks, copyrights, and trade secrets.

“Protecting your IP is a smart and necessary business strategy, and the IP Identifier is a great starting point for those new to IP,” Director Vidal told the audience at the WE event. “This resource will equip entrepreneurs with a basic understanding of the IP they have and will lead them to resources to protect it. We encourage everyone who is considering starting a business or trying to grow one to utilize this tool. It’s another example of our work to bring more people into the innovation ecosystem to increase American competitiveness, grow the economy, and solve world problems.”

The IP Identifier includes two modules: The Basic IP Identifier; and the Advanced IP Identifier. The Basic IP Identifier module consists of six simple questions that allow users to quickly assess the type of IP they should protect. The Advanced IP Identifier module allows users to learn about their specific type of IP and obtain links to additional resources, including how to file an application for protection. A third module, Managing your IP assets, is currently under development.

The United States Patent and Trademark Office (USPTO) published a final rule in the Federal Register on August 3, 2020, that would require a fee for patent applications not filed in DOCX format, except for design, plant, or provisional applications. As recently as December 20, 2022, the USPTO indicated that this new fee was scheduled to become effective on January 1, 2023. However, the USPTO announced on December 29, 2022, that it is (further) delaying the effective date of this fee until April 3, 2023.

The Federal Register Notice is available here.

To accelerate innovation in the health and medical fields, the USPTO announced a fifth extension of its Cancer Immunotherapy Pilot Program. The program permits patent applications pertaining to cancer immunotherapy to be advanced out of turn for examination and reviewed earlier (accorded special status).

Petitions requesting participation in the pilot program that are compliant with the program’s requirements and are filed on or before January 31, 2023, will be accepted. All parameters will remain the same as in the original pilot through the January 31, 2023, extension.

The Federal Register Notice is available here.

The USPTO launched a new public webpage that provides information on applications for patent term extension (PTE) that have been filed within the past five years and patent terms extended under 35 U.S.C. § 156. The information includes the application number, patent number, and trade name identified in the PTE application, and provides a link to the electronic file containing the PTE papers. The USPTO plans to update the information on this webpage on a quarterly basis.

On August 1, 2022, the USPTO Patent Center, which has been available to the public since 2017, will fully replace the legacy Public Patent Application Information Retrieval (Public PAIR) tool for the electronic filing and management of patent applications.

The USPTO alleges that the Patent Center provides a faster, more streamlined search experience. In addition to providing improved system performance and a more intuitive user experience, Patent Center incorporates all the existing functions of Public PAIR, as well as several enhanced features that allow users to:

• • Search publicly available information as a guest by application, patent, Patent Cooperation Treaty (PCT), publication, and/or international design registration number
  • Sort documents and transaction history based on column headings
  • Perform a quick document preview
  • Download multiple documents at once within a single PDF file or in a ZIP file (new)
  • Download patent references (new)
  • Download documents in DOCX and XML formats (new)
  • Download bibliographic information in XML format (new)

See the full press release here.