The 16th Annual Summit on Protecting Innovations in the Financial Services Industry took place July 24th-25th in New York City. Andrei Iancu, the Director of the USPTO, joined other notable members of the FinTech industry including Tariq Hafiz, Group Director of 3600 Tech Group at the USPTO, inhouse counsel for major industry members, and private practitioners. The discussion focused on developments in FinTech IP practice including updates on the Updates on IP Policy and Law at the USPTO and Prosecution Practice Tips.
IP Policy and Law
The main theme that Iancu emphasized was the importance of establishing a culture of innovation in the U.S. from early childhood straight through to the boardrooms across the country. Supporting this culture should be the primary purpose of patent law and policy, and in order to properly serve that role, there needs to be clarity and consistency in the field. This need is highlighted in the FinTech industry, where uncertainty in Subject Matter Eligibility led to a substantial dent in the consistent 6% annual growth the industry saw before the Alice decision in 2014.
Solutions to this issue may come from a variety of places. He cited the 2019 Guidance issued by the USPTO as one step forward, though it has not yet been endorsed in the Federal Circuit but emphasized that he was open to others as well. He specifically pointed to pending legislation in Congress which would adjust the statutory language to provide more consistent rulings on the issues but noted that those would not come until after the August recess at the earliest. In the meantime, practitioners must take ownership of their cases, and make sure that examiners are properly applying the USPTO guidance to applications.
Iancu also highlighted the steps being taken by the USPTO to provide greater consistency and reliability in trademarks along with patents. There have been fraudulent trademark filings at the USPTO (audits conducted have found fraud in 50% of the applications reviewed). Multiple initiatives have been taken to address this concern including both additional requirements for foreign filings and new technological applications to identify potential fraud.
Prosecution Practice Tips
After Final Consideration Pilot 2.0: For cases near allowance after final rejection, the USPTO introduced the AFCP 2.0 program for additional consideration time (3.0 hours for utility and plant applications, 1.0 hour for design applications). However, even after that additional allotment has been allowed, examiners may request additional time from their SPE in order to resolve the application. Practitioners should not be afraid to initiate this process and potentially gain an earlier allowance for their client.
Automated Interview Request: In order to expedite the examination process, the USPTO launched the Automated Interview Request (AIR) which allows for remote video interviews to be scheduled much more efficiently between examiners and practitioners.
Full First Action Interview Pilot Program: After filing applications, applicants can file for a first action interview. In the program, the examiner addresses the merits of the application before issuing an official first office action in an interview. This can be used to great effect for RCE applications, where the applicant may take advantage of discussing the merits to make any necessary amendments and achieve a condition of allowance for the application significantly faster than by waiting for standard examination.
101 Guidance: The USPTO issued guidance to examiners on how to handle 101 rejections in light of recent Federal Circuit decisions. Most notably in the guidance were 1). the requirement to properly cite assertions made in rejections and 2). the need to identify a specific category of abstract behavior for claims. If examiners fail to follow the guidance correctly, practitioners may request another non-final rejection to correct the errors made in guidance application.
New Informative decisions: Since passing the 2019 101 Guidance, the PTAB has designated five subsequent PTAB decisions as informative on its application. These 5 cases address how to properly analyze the subject matter of the claims in accordance with the guidance:
Ex parte Smith, 2018-000064 (Feb. 1, 2019)
Ex parte Olson, 2017-006489 (Mar. 25, 2019)
Ex parte Kimizuka, 2018-001081 (May 15, 2019)
Ex parte Savescu, 2018-003174 (Apr. 1, 2019)
Ex parte Fautz, 2019-000106 (May 15, 2019)
Category: Firm News