Ongoing Pandemic Highlights Importance of S-Signatures

Disruption to travel, mail, and in-person meetings caused by the ongoing COVID-19 pandemic has made acquiring signatures problematic and the need for inventor signatures has created a direct impact on the patent procedures for many companies.   To mitigate these issues, it is increasingly important for applicants and their counsel to understand the United States Patent Office’s acceptance of electronic signatures.  Pursuant to 37 C.F.R. § 1.4(e), electronic signatures are acceptable for all submissions to the USPTO except correspondence relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and payments by credit cards where the payment is not made by the electronic filing system.  Electronic signatures have been used regularly by U.S. attorneys for patent filings since their acceptance began in 2004.

Electronic signatures may also be used for documents including inventor declarations and powers of attorney. This can greatly facilitate obtaining signatures in a remote workforce. However, it is important to note that the relevant inventor or employee must affix his or her own signature to the document, regardless of whether that signature is electronic or handwritten.  The proper method for electronic signatures is referred to as the “S-Signature,” which requires the inventor to place his or her name in between a pair of forward slashes (Ex: “/John Smith/”) on the signature line.  While the signing individual must apply their own signature (type their name) to the document, the slash marks do not have to be entered by the signing party.  For example, the slashes may be pre-inserted in a document before it is sent to an inventor for signature.  This may further increase efficiency and ensure proper application of the signature.

While the USPTO accepts electronic signatures, if the signature were to become the subject of a contentious matter, there is little evidence of who signed and when they signed the document.  The evidence is often limited to the e-mail exchange in which the signed document was attached.  However, certain signature services may be used to verify the authenticity electronic signatures.  It is important to note that the signatures must still include the slashes.  Pre-inserting the slashes or building them into a signature workflow may also be done when using a signature service, which can make the process more efficient for the signing party and reduce the chance of improper signature application.

For applicants and patent owners with international concerns, it is important to consider the rules of all applicable jurisdictions.  Notably, the U.S. and Patent Cooperation Treaty (PCT) have enacted rules regarding the acceptance of electronic signatures in the form of S-Signatures.  However, some countries may require handwritten signatures or enhanced electronic signature procedures.

Assignments, licenses, and other grants carry additional considerations globally and even within the U.S. because the validity of such grants is generally interpreted according to the controlling law, which may be state law.  There is no universal rule indicating what type of electronic signatures will be sufficient in court.  In the United States, the Electronic Signatures in Global and National Commerce (ESIGN) Act in 2000 made electronic signatures legal in every state and U.S. territory when federal law applies.  All states and Washington D.C. have enacted some form of electronic signature laws, mostly adopting the Uniform Electronic Transactions Act (UETA).  Notable states that have not enacted the UETA, but have instead enacted their own electronic signature laws include Illinois, New York, and Washington.  As a result, in order to determine whether an electronic signature is sufficient in a given jurisdiction, it is still important to check local rules.

It is possible that an electronic signature may be contested years after the relevant document was signed.  Therefore, it may be prudent to bolster the validity of an assignment or license signature with additional evidence.  The evidence needed to do this varies from jurisdiction to jurisdiction, but options include remote notarization, electronic signature software, video evidence of the signing, or bolstering the S-Signature with a traditional ink signature once in person signings become feasible.

In the United States, notarization greatly bolsters the validity of an assignment signature.  35 U.S.C. § 261 states that a notarization “shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent.” In other words, a notarized signature shifts the burden to the challenger to prove that the signature is not authentic.  Notarization can be done remotely so long as the signer is willing to verify his or her identity by sending the notary copies of his or her ID and other identifying information.  A notarized signature is preferable to a witnessed signature, as the notarization does not require the notary to testify to the authenticity.

If neither a notary nor a witness is available, the authenticity of an electronic signature can be bolstered by electronic signature software.  These tools add authenticity and anti-tampering features to an electronic signature and may retain records on the signing that can be recalled later.  However, the acceptability of these types of software is not always consistent among international jurisdictions.  It may also be beneficial to have video evidence of the signature being applied.

In foreign countries, the acceptability of electronic signatures varies from country to country.  In Europe for instance electronic signatures made with anti-tampering software may qualify as “advanced signatures,” which may be very likely to be considered authentic.  Other countries may only accept traditional signatures and notaries.  To cope with the realities of the pandemic, it may be necessary to use an electronic signature at first and establish procedures for bolstering those signatures with traditional signatures and notarization later affirming their validity.

With a remote workforce and social distancing practices, it is important to consider the efficiencies of electronic signatures for your patent procedures.  If you have any questions about whether electronic signatures are appropriate for your specific needs, please contact a Maier & Maier attorney today.


IAM Patent 1000 Recognizes Success of Maier & Maier Firm and Its Partners

The 2020 IAM Patent 1000 rankings were announced this week, and Maier & Maier was heavily featured among the highest-level experts in the patent field. Both founding partners Timothy and Christopher Maier were honored, along with renowned partner Stephen Kunin.

Per the IAM description honoring the firm, “Christopher Maier and Timothy Maier run a self-titled boutique in Alexandria that is steadily building on its reputation for quality in electrical engineering prosecution, post-grant proceedings and business-complementary counselling. Among their colleagues, Stephen Kunin is often called on to provide expert testimony on patent practice matters, in light of his experience and USPTO insight.”

This recognition comes with the firm’s continued success in both prosecution and litigation, along with any related IP needs its clients may have. The firm successfully earns over a thousand granted patents for its varied and valued clients each year and prides itself on its corporate friendly and streamlined reporting systems. In the past year, the firm has been heavily involved in PTAB matters, both for petitioners and patent owners. The firm successfully defended multiple patents from IPR petitions and challenged competitor patents for their clients.

Timothy Maier and Christopher Maier were all recognized for their success in the national patent law hub of the DC Metro Area, while Stephen Kunin was also listed among the Nationally recognized experts in the field.


USPTO Expands COVID Response To Restore Benefit of and Right of Priority to Prior-Filed Applications

The USPTO has been active in responding to the COVID-19 pandemic. They’ve extended deadlines for affected applicants and practitioners multiple times, established multiple pilot programs related to the virus, and taken steps to make sure they can continue operations throughout the pandemic.

Now the USPTO has expanded its adjustments to allow applicants to restore benefit of and right of priority to Prior-Filed Applications. In the notice, the USPTO explains that if the delay was unintentional, applicants may petition for the restoration for their application. The notice grants a two-month extension for the filing and waives the petition fee under § 1.17(m).

This will be available for application claiming the end of a 12-month or 6-month period which fell in a period starting March 27, 2020 and ending after July 30, 2020. This applies to non-provisional utility claiming to both foreign applications (under § 119(a) and § 172) and provisional applications (§ 119(e)), and to foreign applications claiming right of priority.

In order to obtain the extension, as with the other extensions, applicant must demonstrate that the delay was unintentional and due to the COVID-19 outbreak. The USPTO highly encourages the use of this form to establish the COVID-19 connection.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.


USPTO Publishes PTAB Rule Changes For Public Comment

The USPTO has published proposed changes to the rules governing proceedings at the PTAB. Comments must be submitted by June 26th to be considered. A majority of the changes conform the rules with current PTAB practices already adopted, while one specific change would represent a diversion from the norm.

First, the proposal would adopt the Supreme Court’s SAS Institute decision changes to institution at the PTAB. In the decision on whether to institute, the Board would be required to choose between instituting on all or none of the grounds for rejection proposed in the petition. As established by the Supreme Court, this rule would prohibit partial institutions.

Second, the proposed rules would allow sur-replies to principal briefs and a response and reply by the patent owner to decision on institution. This rule echoes changes to the Office Trial Practice Guide from August 2018 and aligns the rules with the current practices by the Board in proceedings.

Finally, the proposed changes would revise 37 C.F.R. 42.108(c) and 42.208(c). Currently, the Board’s determination of whether there are sufficient grounds for institution is described as follows:

The Board‘s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.

Under the proposed change, the description would end before granting the presumption in favor of the petitioner. Under the proposal, the rule would instead read:

The Board‘s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.

Per the notice, the USPTO believes this rule change will ensure that “any testimonial evidence submitted with a patent owner’s preliminary response will be taken into account as part of the totality of the evidence.” This would shift the burden away from the patent owners and likely lead to a lower institution rate at the PTAB.

The PTAB is hosting a Boardside Chat on Thursday June 11 from 12:00 noon until 1:00 PM where they will discuss the proposals.

If you have any questions or concerns about these changes, how they may affect your filings, or are interested in submitting comments and would like assistance, please feel free to reach out to us here.


USPTO Announces Next Round of Coronavirus Extensions

In the past few months, the USPTO has made a number of extensions and changes in response to the spread of coronavirus. Previously, the USPTO had extended deadlines that would have come between March 27 and April 30 by 30 days and then deadlines from March 27 to May 31 to June 1st for those affected by the virus.

Now the USPTO has announced a further extension to July 1st for small and micro entities. Additional extensions for entities of all sizes will remain available on a case-by-case basis through the filing of an extension of time or petition to revive, with the revival petition filing fee waived for those abandoned before June 30.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.


PTAB Discretionary Denial On The Rise

The timing considerations that go into filing a petition for inter partes review with the PTAB have become progressively more difficult to navigate as the PTAB exercises increased discretion in rejecting IPRs. This trend started with the precedential NHK decision in which the PTAB rejected an IPR petition on the basis of an upcoming district court trial. Since then, the Federal Circuit has continued to provide the PTAB with increased autonomy by expanding its discretion to institute IPR under 314(a).

Likewise, in the Thryv decision the Supreme Court all but cut off any review of institution by the Federal Circuit, and in the SAS decision, the Supreme Court determined that all PTAB decisions on whether to institute IPR have to be binary, either instituting on all grounds or denying IPR altogether. Following SAS, the PTAB also started to deny institution of IPR where there is a reasonable likelihood that the petitioner will prevail on only a minority of the proposed grounds for unpatentability. For example, in Biofrontera v. DUSA Pharms the PTAB exercised its discretion to deny institution where the petitioner only showed a reasonable likelihood of success on only 1 of 8 grounds.

Since the NHK decision, many patent owners have raised NHK in an attempt to thwart institution of IPR as redundant to invalidity defenses raised in district court proceedings. Approximately 33 patent owner preliminary responses have raised NHK in similar circumstances since December 2018, with 20 of those cases being decided in Jan to May of 2020 alone. Below is a chart detailing the 10 cases where IPR institution has been denied on the basis of an NHI argument, consolidated into a single entry where multiple IPR denials related to the same parallel district court case.

Table 1: IPR denied based on NHK

Decision Date Case Name* Materially different prior-art arguments raised in the IPR petition(s)? Months until district court trial after the IPR institution decision**
12/3/2018 Mylan v. Bylar No 4
10/16/2019 Next caller v. Trustid No 9
1/22/2020 Magellan v. Sunoco No 2
3/10/2020 Bentley v. Jaguar Yes 7
3/26/2020 Ford v. MIT No 0 (finished, under appeal)
3/27/2020 Google v. UNILOC No 5
5/13/2020 Apple v. FINTIV No 10
5/15/2020 Cisco v. Ramot at Tel Aviv No 6
5/19/2020 Intel v. VLSI No 5-7, estimated

 

The most recent of these cases is perhaps one of the most favorable to the patent owner. In a series of decisions captioned Intel v. VLSI, the PTAB relied on NHK to deny review under 314(a) even though the District court has suspended its trial schedule due to Covid-19. Significantly, petitioner Intel filed its IPR petitions fully three months prior to the one-year statutory deadline after service of the district court complaint. Acknowledging these facts, the PTAB focused on the significant investment that had already gone into the parallel district court case, with fact discovery scheduled to end in May. Additionally, the trial date was set for October 2020, with a final written decision from the PTAB likely not to come until May 2021 if IPR were instituted. Even with the district court currently closed due to Covid-19, the PTAB found that it is likely the district court will go to trial before a final decision is reached. In weighing all the factors set forth in NHK, the PTAB ultimately decided that the likelihood of a district court trial in 5 to 7 months warranted denial of review.

The cases identified above are just the first in a series of PTAB developments favoring patent owners. With the ever-evolving landscape of IPR litigation it has become even more important than ever that parties looking to petition for IPR have capable and knowledgeable counsel who are able to navigate the unwritten rules of discretionary denial of IPRs.


USPTO Announces Prioritized Examination Pilot Program For COVID-19 Related Applications

Continuing its efforts to keep up with COVID-19, the USPTO has announced a prioritized examination pilot program reserved for applications covering products or processes subject to an applicable FDA approval for COVID-19 use.

Beginning on July 13, 2020, applicants may request prioritized examination for covered applications. The USPTO’s objective for the pilot is to complete examination of applications within 12 months of a granted request. The pilot is currently allowed 500 requests, but may be extended, terminated, or modified depending on workload, resources, feedback, and efficacy.

Requests may only be filed at specific points in the process. First, requests can be filed with a non-continuing original utility or plant provisional application. Second, requests can be filed with an original utility or plant nonprovisional application claiming specific forms of benefit to an earlier filing date. Finally, requests can be filed with requests for continued examination, but only one request for prioritized examination may be made with a given application.

Along with the request, applicant must certify that at least one claim covers a product or process related to COVID-19, certify that the applicant qualifies for either small or micro entity status at the time of the request, and execute an application data sheet meeting the conditions specified under 37 CFR 1.53(f)(3)(i).

Should the request be accepted, applicants should be wary of the following. First, any filing of petition for extension will cause the application to be removed from the special docket. Secondly, the First Action Interview Pilot Program is not available for applications granted prioritized examination.

The USPTO is accepting comments on the pilot program until July 13, 2020 to ensure consideration prior to the pilot.

If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.


USPTO Launches “Patents 4 Partnerships” Pilot Program

In the past few months, the USPTO has made a number of changes in response to the spread of coronavirus. The focus has been both protecting USPTO employees and lessening the burden on affected practitioners and applicants alike. Now the USPTO has begun an effort aimed at solving the problem itself.

This month, the USPTO launched their new IP Marketplace Platform Pilot Program “Patents 4 Partnerships”. Per the USPTO announcement, the platform is “a centralized and easily accessible database of U.S. patents and published patent applications that are voluntarily made available for licensing.”

During its preliminary stage, the pilot will be focused technology related to the current pandemic. Specifically, Patents 4 Partnerships is currently limited to patents and published applications for the “prevention, diagnosis, and treatment of or protection from the coronavirus disease (COVID-19), including disinfectants, test kits, ventilators, and components thereof”. Listed publications were collected from 3rd party sources as well as the Official Gazette Notice of Patents and Patent Applications Available for License or Sale.

Additions to the platform may be made by the IP owner through a form on the platform website, while errors can be corrected by reaching out to the USPTO. The USPTO plans to use the next six months to test the platform and determine its future in relation to the Official Gazette Notice of Patents and Patent Applications Available for License or Sale.

The platform is available here while further inquiry about the platform, your portfolio, and any other related matter may be brought to us here.


Supreme Court: PTAB’s Institution of IPR Over Time-Bar Unappealable

In their decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court ruled that the PTAB’s decisions on 35 U.S.C. § 315(b), the one year time-bar, are final and unappealable.

The case began in 2013 at the PTAB with Thryv, Inc. (“Thryv”) and Click-to-Call Technologies, LP (“Click-to-Call”). Thryv filed a petition for an IPR of Click-to-Call’s patent relating to anonymous telephone calling (U.S. Pat. No. 5,818,836). In response, Click-to-Call argued that Thryv was time-barred from bringing this petition because of a complaint from 2001. The PTAB disagreed with Thryv’s argument due to procedural distinctions between the 2001 complaint and usual complaints leading to the time-bar. Therefore, the PTAB instituted the IPR over Click-to-Call’s objections.

Over the course of a series of appeals, the question of whether the Federal Circuit had jurisdiction to hear this appeal was brought to the Federal Circuit in an en banc review. Under §314(d), the PTAB’s institution decision is final and unappealable. However, the Federal Circuit found that §314(d) did not include the time-bar in §315(b). Instead, the Federal Circuit explained that §314(d) was limited to the likelihood-of-success requirement for proposed grounds of rejection stated in §314(a).

The Supreme Court disagreed in a 7-2 vote. The opinion was authored by Justice Ginsburg and joined by Roberts, Breyer, Kagan, and Kavanaugh, and in part by Alito and Thomas. The Court held that §314(d) covered not just the likelihood of success in §314(a), but the institution decision as a whole. At the heart of the opinion was the desire for efficiency in the court system. Per the opinion,

“By providing for inter partes review, Congress, concerned about overpatenting and its diminishment of competition, sought to weed out bad patent claims efficiently…Allowing §315(b) appeals would tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable.”

The dissent, authored by Justice Gorsuch and Joined by Sotomayor, emphasizes the fact that the phrase “in this section” in §314(d) limits the finality and unappealability solely to §314. As Justice Gorsuch puts forth, the justification for including the time-bar of §315(b) under the scope of §314(d) “appears nowhere in the statute but is, instead, a product of the judicial imagination”.

The full opinion is available here and will have significant impact on the procedures of the PTAB for patent owners, petitioners, and practitioners alike.


USPTO Extends COVID-19 CARES Act Response Deadlines

On March 16, the United States Patent & Trademark Office (“USPTO”) announced that  ‘extraordinary’ circumstances for relief at the USPTO would officially include the effects of COVID-19 “coronavirus”. On March 27, the USPTO announced its further relief response with deadline extensions as authorized by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) executed March 27. The announcement identified certain deadlines that would have come between March 27 and April 30, and provided for a 30 day extension.

On April 28, USPTO Director Andrei Iancu officially announced the extension of those deadlines  and the expansion of the affected deadlines. Under the new announcement, certain deadlines occurring from March 27-May 31 are extended to June 1 with a statement of personal effect, rather than the original 30 days. The statement must describe how the deadlines and payments were delayed as a result of a personal effect of COVID-19 on practitioners, applicants, patent owners, petitioners, third party requesters, inventors, or other individual involved including as examples, office closures, cash flow interruptions, inaccessibility of files/materials, personal or family illness, etc. This extension applies to most responses, filings, and requests as listed in the notice with some reserved only for small and micro-entities. The specific affected deadlines and requirements are laid out in the official patent and trademark CARES notices.

The USPTO has adjusted its operations to ensure that fees and documents will continue to be processed through EFS-Web, USPS, and the Customer Service Window. Per the announcement, USPTO interviews and hearings will be conducted virtually until further notice.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.