On March 31^st, the conclusion of Women’s History Month, the USPTO concluded its annual Women’s Entrepreneurship Symposium. Each year since 2011, the USPTO has honored diverse panels of successful women innovators, notable inventors, and experts and welcomed them to share their stories of overcoming adversity on their way to success.

As part of the symposium, the USPTO highlights important subjects, issues, and solutions including the expansion of roles for women and other underrepresented groups in STEM, innovation, and economic growth

The final panel included Janeya Griffin, Founder and CEO, The Commercializer; Rea Huntley, Founder and CEO, Lavii INC; and Sarah Gibson Tuttle, Founder and CEO, Oliver and June. Together, they discussed the importance of protecting your IP assets, the ways they identify those assets and opportunities for growth, and other such strategies that have keyed their success in todays business climate.

Maier & Maier makes concerted and consistent efforts to promote the growing role of women and minorities, and assist those clients in overcoming the challenges they face in the world of IP. If you need such assistance, we urge you to reach out to us here,so we may continue to do our part as the USPTO continues to strive towards equality and an equitable future for innovation.

As part of January 15, 2021, the USPTO will discontinue the First Action Interview Pilot Program that’s been in place for the past twelve years. The program allows practitioners to conduct an interview with the examiner prior to the first office action. This interview is held after the examiner’s preliminary prior art search and allows the practitioner to submit amendments prior to the first action response to the prior art and discussion.

As the USPTO explains;

Under the Full First Action Interview Pilot Program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. The examiner will conduct a prior art search and provide applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections. Within 30 days of receipt, applicant schedules an interview and submits proposed amendments and/or arguments. At the interview, the relevant prior art, proposed rejections, amendments and arguments will be discussed. If agreement is not reached, the applicant will receive a first action interview Office action that includes an interview summary that constitutes a first Office action on the merits under 35 USC 132.

In their announcement, the USPTO cited the low (0.2%) usage rate as the primary reason for the termination. This low usage stands in stark contrast to the rising rate of interview usage overall, with the peak coming this past October at 38.1%.

This increased interview use is with good cause, as Maier & Maier’s practitioners have had significant success using interviews to get favorable outcomes for our clients. The firm’s office is located just blocks away from the USPTO Headquarters in Alexandria, Virginia, providing easy access to in-person interviews.

If you have any questions about interviews or would like to take advantage of this program before it ends on January 15, 2021, please contact us here.

As part of the U.S. Federal Government’s response to Covid-19, the USPTO announced programs to prioritize Covid-19 related patent and trademark applications this past May and June respectively. Since this summer, applicants were permitted to apply for special status without the normal payment requirements for special status.

Thus far, the USPTO has ushered in nearly 400 such applications with 251 patent requests and 133 trademark petitions granted. Of the patent applications, most target medical treatments, vaccines, and diagnostic technology. The remaining make claims on ventilators, personal protective equipment (PPE), and other similar technology.  The program has resulted in 33 granted patents already related to combatting Covid-19.

“Our staff is working very hard to move COVID-19 related patent and trademark requests, ensuring the intellectual property system is fully responsive to this national emergency,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Over the past two centuries, solutions to some of the nation’s greatest problems have passed through the halls of the USPTO, and it’s very likely that some of the solutions to America’s current pandemic have already been examined by this agency.”

The success of these programs reflects the monumental efforts made by the USPTO in its Covid-19 response, as we’ve covered throughout.

Maier & Maier has embraced these programs to assist our clients and help combat the ongoing virus. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

This Thanksgiving, Maier & Maier’s Steve Kunin noted the strength of USPTO leadership as Director Iancu deftly handled the ongoing pandemic to keep the office productive and effective.

“We should continue to be grateful for Director Andrei Iancu’s leadership and stewardship of the USPTO during these trying times caused by the adverse impacts of COVID-19. With his strong leadership, the USPTO has continued to provide vital services to the patent and trademark user communities.”

Kunin specifically noted the Iancu’s adjustments at the USPTO and responses to pandemic challenges as covered here.

“His outreach efforts have been well received and the USPTO has been open-minded and responsive to public feedback on how it can make continuous quality improvements to its services and products.”

As Kunin notes, this leadership would have been lost if not for the dedication of the USPTO employees as a whole who were forced to adjust to extensive telework like many other industries.

“Kudos as well to all the USPTO employees who have had to adapt to more extensive telework while striving to maintain continuity of operations.”

For more thoughts on the year in IP and appreciation from other experts and practitioners, see the full piece here.

There are currently multiple significant IP cases pending at the Supreme Court, including both the Oracle case and the Arthrex cases, and a number of petitions denied cert. Here are the latest case updates on IP at the Supreme Court:

Google v. Oracle

On October 7^th, the Supreme Court heard oral arguments for the Google v. Oracle case on appeal from the Federal Circuit. The case centers around the Android operating system designed by Google in their first foray into the smartphone arena. In the coding, Google used 11,000 lines of the Java SE platform coding for common interface commands. Oracle, the current owner of the Java SE platform, filed suit on the basis that the use of the lines constituted infringement. While a jury found them to be “fair use”, the Federal Circuit disagreed, reversing the decision, and leading to the current appeal at the Supreme Court.

Accordingly, the questions before the Supreme Court now are:

(1) Whether copyright protection extends to a software interface; and

(2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

The decision could be the most significant copyright decision in at least a decade and will be important to developers and practitioners alike to watch moving forward.

Arthrex

Earlier this month, the Supreme Court denied certiorari to a number of cases. Notably this does not include the Arthrex cases challenging the constitutionality of the USPTO’s Patent Trial & Appeal Board.

On October 14,, 2020, as predicted by Maier & Maier’s own, Steve Kunin, the Supreme Court granted cert in three related Arthex cases: (1) United States v. Arthrex, Inc. (19-1434), (2) Smith & Nephew, Inc. v. Arthrex, Inc. (19-1452), and (3) Arthrex, Inc. v. Smith & Nephew, Inc. (19-1458).

The case rests on the question of whether the Administrative Patent Judges (“APJ’s”) are principal officers or inferior officiers, and accordingly, whether their appointment is constitutional. Specifically, the Supreme Court has identified the following two questions for review:

(1) Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.

(2) Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

Briefing and oral arguments, as well as likely amicus briefs will likely follow before these questions are resolved, and may be one of the first cases heard by any replacement for the late Ruth Bader Ginsburg on the Court.

Cert Denied

Unlike the pending Oracle and Arthrex decisions, the following cases have been denied certiorari by the Supreme Court and will not be heard on appeal:

• • • BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381 (Appealing IPR Termination)
    • TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269 (Right to a Jury Trial for Specific Performance of FRAND license)
    • Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147 (Divided Infringement and 271(g))
    • The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32 (Patent Eligibility)
    • Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351 (Sua Sponte Judicial Order Due Process)
    • Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844 (Exclusion of Patent Attorneys by USPTO)
    • SRAM, LLC v. FOX Factory, Inc., No. 20-158 (Secondary Indicia for Obviousness nexus)
    • Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204 (Application of IPR decisions retroactively to related pending applications)
    • Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68 (Licensing Patents under Federal & State law)