Kathleen Cooney-Porter returns to USPTO as Senior Trademark Advisor

            Kathleen Cooney-Porter has announced her return to the USPTO to serve as a senior trademark advisor Under Secretary and Director of The United States Patent and Trademark Office. Ms. Cooney-Porter is an expert in trademark matters having previously worked both at the USPTO as a trademark examiner and senior law advisor as well as in private practice at both law firms and as a consultant. Maier & Maier thanks her for her time as a partner and wishes her well at her new role.


Maier & Maier recognized by Chambers USA in 2025 List

We are pleased to announce that Maier & Maier has been recognized by Chambers USA, the premier legal guide known for ranking top law firms and attorneys nationwide.  
 
In the 2025 edition, Maier & Maier was recognized for our work in the Intellectual Property field. Our inclusion in Chambers USA is an honor to Maier & Maier and is a testament to our commitment to delivering superior legal counsel in intellectual property matters.
 
Chambers USA rankings are based on independent research and interviews with clients and peers, evaluating firms on their technical legal ability, client service, depth of team, and market reputation.

USPTO Institutes plan to accelerate patent issuance

Initially announced in a news brief, beginning next week on May 13, 2025, the U.S. Patent and Trademark Office (USPTO) will be accelerating the Issue Dates for patents. Previously, the time between Issue Notification and Issue Date averaged around three weeks. The USPTO is reducing that time to approximately two weeks, allowing patent holders to bring their investments to the market earlier.

 

Previously the USPTO required time between grant and issuance in order to format and print the patent, however as the Office has now switched to publishing electronic grants (eGrants) via their online platform Patent Center this is no longer necessary. Additionally, the USPTO indicated further time is saved by eliminating redundancies in the process.

 

By shortening the wait time between the Issue Notification and the Issue Date, Applicants may avoid the need to file a Quick Path Information Disclosure Statement, and the prompter patent issuance will provide earlier protection for inventions. The change also reduces the lame duck period where the inventors and attorneys still have a duty to submit known prior art but where such submission might delay issuance. Further information about  eGrantsPatent Center, and other USPTO modernization efforts can be found on the USPTO website.

 

Maier & Maier provides experienced IP counsel who can help with patent filings and strategies based on the newest trends and the ever-changing landscape of the USPTO.


Maier & Maier congratulates Partner Stephen Kunin on his recognition in the IAM Strategy 300 Global Leaders 2025

We are thrilled to announce that Stephen Kunin, one of the partners at Maier & Maier, has been recognized as one of the IAM Strategy 300 Global Leaders 2025. This prestigious award highlights Stephen’s exceptional expertise and leadership in the intellectual property (IP) field.

A slot in the 300 is the mark of a professional whose approach to intellectual property is regarded by peers as truly strategic in nature. The list features individuals from all kinds of entities that are selected for their skill, contribution and success – whether service providers, corporations, research institutions or universities. The selection process involves thousands of nominations, interviews, and in-depth evaluations conducted by IAM’s research team over several months, making this recognition an extraordinary achievement.

Stephen’s wealth of knowledge and ability to innovate serve as a boon not just to Maier & Maier but to the broader IP community. Once again we congratulate Stephen on his achievement, To explore more about the IAM Strategy 300 Global Leaders 2025, visit the IAM website.


USPTO formally terminates Climate Change Mitigation Pilot Program

On April 17, 2025, the USPTO formally announced the termination of the Climate Change Mitigation Pilot Program. The Climate Change Mitigation Pilot Program was launched in June 2022 as a replacement to the Green Technology program and allowed for applications involving technologies that reduce, remove, prevent, and/or monitor greenhouse gas emissions to be made special (advanced out of term for examination).

The program was initially scheduled to run until June 7, 2027, or until 4,000 applications had been granted special status under the program. The program was first suspended on January 28, 2025, and then formally terminated April 17, 2025. A press release by the USPTO stated that “(t)erminating the program allows us to dedicate our resources to reducing pendency across all applications, regardless of the technology to which the application is directed”. You can find more information in the Federal Register Notice.


UPDATE on the RESTORE Patent Rights Act of 2024

On December 18, 2024, the Subcommittee on Intellectual Property of the U.S. Senate Committee on the Judiciary held a hearing concerning the Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024.[1] Senator Coons (one of the senators co-sponsoring the Act) led the hearing.

Senator Coons emphasized during the hearing that the Act seeks to bring back, what he views as, the Constitutional right for inventors to prevent others from using their inventions. He noted that for over 200 years, courts almost always granted injunctions when a patentee asked for one. Senator Coons emphasized that predatory infringement, an “infringe now, pay later” model is on the rise and thus patent values have decreased, and data shows patentees are being forced to grant lower-value, non-exclusive licenses. This leads to abandoning innovative ideas and reduced research and development investment.

The Subcommittee heard from four witnesses at the hearing. Jacob Babcock, CEO at NuCurrent, Joshua Landau, Senior Counsel, Innovation Policy Computer and Communications Industry Association, Kristen Jakobsen Osenga, Professor of Law at the University of Richmond School of Law, and Jorge L. Contreras, Professor of Law at University of Utah S.J. Quinney College of Law. The witnesses presented varying viewpoints questioning and supporting the Act and took questions from the senators.

Senator Coons’ questions indicated that he was concerned with what he termed “efficient infringement” (or predatory infringement, referenced above). Essentially a company, either domestic or foreign, knowingly infringes a patent and only if the patentee sues them and sees litigation through, does the alleged infringer suffer any consequences. The concern raised by Senator Coons was that the infringement is simply a cost of doing business and the patentee, even if they win the litigation, does not see adequate reward for their invention because the infringer continues to make money on the infringing product and merely has to pay a license fee.

Another concern raised by some of the witnesses and Senator Coons, is that the eBay decision[2] distorted statistics on the requesting and granting of permanent injunctions, where parties no longer seek injunctive relief and thus the current statistics do not accurately reflect how difficult it is to have an injunction granted in one’s favor.

Questions from the senators also indicated that they are concerned with the apparent burden shifting that resulted from eBay. Under the eBay factors, it is the patentee’s burden to show that an injunction should issue. The senators (especially Senator Hirono) deemed it more appropriate to create a presumption that an injunction should issue and place the burden on the infringer to show otherwise.

The witnesses also proposed certain revisions to the one-sentence Act that would potentially address the overbreadth that was raised as a concern. One such suggestion was to attach the presumption of an injunction to the requirement that a patentee be producing or making a product. This would mean that non-practicing entities could not take advantage of the Act and would instead have to proceed through the traditional eBay factors.

The hearing was helpful, as it shed light on concerns held by multiple senators regarding an alleged stifling of innovation due to eBay. The Act may be changed to disallow non-practicing entities from taking advantage of the easier injunctive relief offered, but only time will tell. We will continue to monitor the Act’s progress and provide updates.

[1] https://www.judiciary.senate.gov/committee-activity/hearings/the-restore-patent-rights-act-restoring-americas-status-as-the-global-ip-leader

[2] The Supreme Court’s eBay decision was discussed in greater depth in our first article on the RESTORE Act: https://maierandmaier.com/restore-patent-rights-act-of-2024-an-attempt-to-bring-back-permanent-injunctions-permanently/


Maier & Maier Secures Victory At the International Trade Commission

April 22, 2024  – Maier & Maier PLLC is pleased to report that our clients Hikam America, Inc., Hikam Electrónica de México, S.A. de C.V., Hikam Tecnologia de Sinaloa, Hewtech Philippines Corp., Hewtech Philippines Electronics Corp., and Hewtech (Shenzhen) Electronics Co., Ltd. have been terminated from ITC Investigation No. 337-TA-1365.

The Firm represented six of the Respondents in an ITC Investigation in which they were accused by Shoals Technologies Group, LLC (“Shoals”) of infringing U.S. Patent No. 10,553,739 (“the ‘739 Patent”), which purportedly covers molded fuses used in solar installations.

On March 6, 2024, the presiding ALJ issued an Initial Determination (Order No. 20) granting Respondents’ motion for summary determination pursuant to Commission Rule 210.18(b) (19 CFR 210.18(b)). The ID found that under the proper claim construction, Shoals has not shown that genuine issues of material fact exist regarding whether Shoals has satisfied the technical prong of the domestic industry requirement with respect to the ’739 Patent.

On March 13, 2024, Shoals filed a petition for review of the ID. On March 26, 2024, Respondents and OUII each filed separate responses to Shoals’ petition for review of the ID.

On April 19, 2024, the Commission determined not to review the ID. Because Shoals has not satisfied the technical prong of the domestic industry requirement for the ’739 patent, the investigation is now terminated as to the ’739 patent with a finding of no violation.

Maier & Maier continues to enjoy consistent and favorable results in its litigation matters. The firm has obtained favorable results when defending clients accused of infringement by competitors as well as cases brought by patent assertion entities. This victory comes on the heels of another favorable decision in a District Court case earlier this month.

About Maier & Maier PLLC

Maier & Maier’s litigation team has been hard at work delivering positive results for clients. The Maier & Maier team continues to advocate on behalf of clients in federal courts, before the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, and the International Trade Commission.


Maier & Maier Obtains Grant of Summary Judgment of Invalidity Based on §101 Related to Wearable Technology

April 5, 2024 – Maier & Maier PLLC is pleased to report that we secured a victory for our client Firstbeat Technologies OY in a case involving a heart rate measuring apparatus incorporated into wearable technology. The case was originally filed by Polar Electro OY in the District of Delaware on November 7, 2011, but was eventually transferred to the District of Utah. In December of 2021, we argued our Motions for Summary Judgment (“MSJ”) before Judge Waddoups. Today, the Court issued a decision granting our MSJ that the claims of U.S. Patent No. 6,537,227 are invalid as abstract. See 1:17-cv-00139-CW, Dkt. 498. The case has now been dismissed and Judgment has been entered in favor of our client Firstbeat Technologies OY.

Maier & Maier continues to enjoy consistent and favorable results in its litigation matters. The firm has obtained favorable results when defending clients accused of infringement by competitors as well as cases brought by patent assertion entities. This victory comes on the heels of another favorable decision in an ITC 337 Investigation last month.

About Maier & Maier PLLC

Maier & Maier’s litigation team has been hard at work delivering positive results for clients. The Maier & Maier Team continues to advocate on behalf of clients in federal courts, before the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and the International Trade Commission.


RESTORE Patent Rights Act of 2024 – An Attempt To Bring Back Permanent Injunctions. Permanently.

Over the summer, Congressman Nathaniel Moran (R-TX-01), a member of the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, and Congresswoman Madeleine Dean (D-PA-04) introduced the bicameral Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024.

This bipartisan bill aims to restore patentees’ abilities to protect their patent rights through permanent injunctions, altered by the eBay v. MercExchange ruling.[1]

eBay v. MercExchange

The Supreme Court altered the landscape of permanent injunctions in patent cases in its 2006 eBay ruling. Before eBay, permanent injunctions issued once infringement and validity had been found. They were automatic and were only denied in “unusual cases.” The Court found that this automatic issuance violated the equitable determination that usually accompanies permanent injunctions. The Court ruled a patentee plaintiff must demonstrate the following before a permanent injunction issues:

(1) that it has suffered an irreparable injury;

(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;

(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and

(4) that the public interest would not be disserved by a permanent injunction.

 

In ruling this way, the Court disconnected a patent owner’s right to exclude from the remedy for stopping the violation of that right. Since eBay, permanent injunctions issue much more rarely.

 

The RESTORE Patent Rights Act

 

The RESTORE Patent Rights Act proposes to codify the pre-eBay injunction landscape. The Act proposes a relatively simple change to §283 whereby a rebuttable presumption would exist that a permanent injunction should issue if infringement is found. The Act states:

 

If, in a case under this title, the court enters a final judgment finding infringement of a right secured by patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct.[2]

 

The authors of the bill worry that post eBay, a patentee’s exclusive right to his patented invention is meaningless, as permanent injunctions are no longer automatic.  The authors state that post-eBay requests for permanent injunctions in patent cases fell by 65% for companies that use their patented technology to manufacture a product and grants of permanent injunctions to those companies also fell by more than 65%.[3]

 

While the Act is still in its early stages, it appears to have bi-partisan support. We will continue to monitor developments and provide further insight if permanent injunctions become a more-powerful tool in the plaintiff’s toolbox and a detriment to defendants.

 

[1] eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393, 126 S. Ct. 1837, 1840, 164 L. Ed. 2d 641 (2006)

[2] https://moran.house.gov/uploadedfiles/restore_act_2024.07.29.pdf

[3] https://www.coons.senate.gov/imo/media/doc/restore_act_one-pager.pdf


Trademark Q3 2024 updates, data at a glance

Trends in First Action Pendency at the USPTO

As many may be familiar with, in recent years trademark pendency times at the USPTO have rapidly increased, with the average first action pendency time in Q1-Q4 of 2023 reaching over 8 months. The USPTO attributes this increase in pendency times primarily to the fact that it expected a slowdown in patent and trademark filings in 2020 and 2021 during the COVID pandemic (and so adjusted hiring targets downward), while actually seeing a substantial increase in trademark filings (as more people started their own companies or launched new products based on new and different opportunities for e-commerce and remote work).

The trend that has led to a near-quadrupling of pendency times started in Q4 2020, with the average pendency time for most of 2019-2020 being consistently around 2.5 to 3 months, as can be seen in the graph below.

 

Average First Action Pendency Q3 2019 – Q2 2022

After Q4 2020 first action pendency began to increase markedly, reaching an average time of 7.7 months in Q2 2022 and then further increasing to a height of 8.5 months in Q2 2023.

 

Average First Action Pendency Q4 2021 – Q3 2024

In 2024, it seems that the USPTO has begun to be able to clear this “inherited backlog,” with Q3 2024 being the first time first action pendency has dropped below 8 months since Q2 2022.

 

Year to Date New Applications and Registrations

So far this year, there have been 338,915 new registrations and 564,474 new applications filed across all classes, which is an increase in 2.9% from filings in the same time period of 2023.

Applications in each quarter of the year have slightly increased from the low point in filings that occurred in 2023, though they still remain less than filings in 2021 and 2022.

Overall, the increase in pendency and decrease in filings from the last two years appears to be reversing course, though it remains to be seen whether either trend will continue back to pre-pandemic norms.  Maier & Maier includes experienced trademark counsel who can help with trademark filings and strategies based on the newest data and trends.