USPTO Transitions to Electronic Patent Grants

Maier & Maier

The USPTO recently announced through the publishing of a new Federal Register final rule (88 Fed. Reg. 12560) that effective Tuesday, April 18, 2023 all newly issued patents will be issued electronically. Electronically issued patents will bear the digital signature of the USPTO director, and the corresponding patent cover sheet will be nearly identical to current cover sheets; however, they will include the seal and Director’s signature in digital form. As an additional update the new official USPTO digital seal will serve as authentication of the patent, and will include an encrypted digital signature embedded within the seal.

Eventually patents will no longer be issued in paper form and will be digital only, however there will be a yet-to-be determined transition period where a paper copy of the electronic patent will be provided as a courtesy. The courtesy copy will be mailed to the correspondence address of record. After the transition period ceremonial copies or presentation copies (certified copy of the front page that can be used for display) will be available for nominal fees. Advance copies of issued patents however will no longer be available for purchase.

Moving to electronic Patent grants will, according to the office, reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit issued patents to be viewed and printed by applicants and the public immediately upon issuance in patent center. As a practical matter, the move to electronic grants will have some impact on patent practice, particularly with regards to continuation practice. Under the current system there is typically a delay of several weeks between the mailing of the issue notice and the actual issue date of the patent. Under the electronic patent process, the Office notes that patents will issue “shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications.” This means Applicants will have less time between the payment of the issue fee and grant, and therefore less time to file continuations, quick path Information Disclosure Statements, or petitions to withdraw an application from issue under 37 CFR 1.313(c). In line with this change the Patent Office recommends that going forward all these filings should be done as early as possible, and particularly with respect to continuations should be preferably done before the payment of the issue fee.

The above rule is just one of many steps the Patent Office has taken towards digitizing their processes. For example, the Patent Office also finalized another rule (88 Fed. Reg. 13028) the same week as the above which establishes that effective May 1, 2023 all “patent term extension (PTE) applications, interim PTE applications, and any related submission to the USPTO must be submitted electronically via the USPTO patent electronic filing system”. Professional and knowledgeable patent counsel are more important than ever to help clients navigate the ever changing and advancing systems of the USPTO.

USPTO Director Vidal issues key decisions regarding abuse of process in proceedings before the Patent Trial and Appeal Board

Maier & Maier

Two key decisions have been issued from the Patent Trial and Appeal Board (Board) this Thursday regarding abuse of process.

The first, Patent Quality Assurance, LLC, v. VLSI Technology LLC, IPR2021-01229, Paper 102, is a precedential decision where the Director of the USPTO Kathi Vidal held that Petitioner Patent Quality Assurance (PQA) abused the Inter-Partes Review (IPR) process by using the proceeding for the purposes of extortion.

According to the decision, PQA failed to offer a verifiable, legitimate basis for filing its petition, which was filed only after a district court awarded large monetary damages keyed to the subject ‘373 patent. The Director identified that petitions unrelated to any pending litigation may raise concerns of petitioners who file “petitions, filed for the primary purpose of obtaining a cash settlement” from patent owners in order to settle and terminate the proceed.

The Director also found that PQA made material misrepresentations in order to ensure that another petition would be denied so that PQA’s petition, which was a replica of an earlier petition filed by Intel Corp., could proceed. The Director concluded that “To safeguard the proper functioning of the patent system, and the confidence therein, it is incumbent on me and the USPTO to protect against that harm.”

In a second, related decision, OpenSky Industries LLC v. VLSI Technology LLC, IPR2021-01064, Paper 121, the Director sanctions Petitioner OpenSky by precluding them from participating the proceeding based on their abuse of the IPR process in addition to sanctionable conduct including discovery misconduct, violation of an express order, and unethical conduct.

The standard applied to PQA and OpenSky was one of “compelling merits”. This requires that the petitioner present a compelling, meritorious challenge, which requires a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. §314(a).

Our team at Maier & Maier is proud of our success in both petitioning and defending IPRs and other cases in front of the Board.

New Deadlines to Respond to Trademark Office Actions

Maier & Maier

On December 3, 2022, the United States Patent and Trademark Office will shorten the response deadline for Trademark office actions from 6-months to 3-months. This shortened deadline will apply to all office actions issued on or after December 3, 2022.

There will be an opportunity to file one 3-month extension for an additional fee. The USPTO fee for a 3-month extension will be $125 and the extension request must be filed before the initial 3-month deadline.

The goal of the shortened response deadline is to decrease the time to obtain a registration, while also allowing flexibility to request additional time to respond to more complex office actions.

The new shortened deadline will not apply to applications filed through the Madrid Protocol section 66(a).

The deadline for post-registration office actions will remain unchanged until October 7, 2023.

If a response deadline is missed, it may still by possible to revive the application by filing a petition to revive.

We look forward to assisting our valued clients as we navigate the transition to a 3-month response timeline.

USPTO Transitions to New Online Search Tool, Patent Public Search

Maier & Maier

On September 30, 2022, the United States Patent and Trademark Office (USPTO) consolidated and replaced four legacy search tools with a single Patent Public Search tool. The new tool is intended to streamline the search process for users and to incorporate new, useful features.

The legacy tools that were phased out include:

  • Public-Examiner’s Automated Search Tool (PubEAST)
  • Public-Web-based Examiner’s Search Tool (PubWEST)
  • Patent Full-Text and Image Database (PatFT), and
  • Patent Application Full-Text and Image Database (AppFT).

The new Patent Public Search tool can be accessed here.

Design Day 2022 Highlights

Maier & Maier

On April 21, 2022, the United States Patent and Trademark Office hosted its annual Design Day event, featuring speakers discussing recent developments in design patent practice. The virtual event was joined by over 600 attendees.

The amount of design patents filed in FY2021 increased by 17.6% over the previous year, to a total of 54,201 applications, a new record for the USPTO. The increase in design patent applications shows the recognition of the value of design patent protection by inventors and rights holders. Of those filings, 40.4% originated in the United States, while 30.5% were from China. As a consequence of the increased volume of filings, first action pendency increased to 16.6 months, while total pendency remained relatively flat at 21 months.

The next presentation focused on the anticipated entry of China into the Hague system in May 2022. The Hague system allows an applicant to file a single international application for a single international registration, which is then examined according to the laws of each contracting party designated in the registration. With China’s entry on May 5, 2022, the Hague system will include 76 contracting parties, covering 94 countries.

To align with the requirements of the Hague Agreement, China has updated its design laws to increase the patent term from 10 to 15 years, and to include protection of partial designs. Prior to this update, the entire article of manufacture was required to be claimed in a Chinese design patent application. After May 5, applicants for Chinese design protection will be able to disclaim subject matter in broken line, allowing the claiming of only the desired portions of an article.

Subsequent speakers discussed suggestions for effective appeal briefs and examiner’s answers, particularly for obviousness rejections. For examiners, it was recommended to construe the claim when helpful, create a composite of multiple references, and address the differences and their effect on overall similarity. For practitioners, it was recommended to determine the differences and the overall visual impression created by the differences alone and when viewed in the composite of multiple references. The visual impression of the composite can then be compared to the claimed design and the difference between the two determined.

The Patent Trial and Appeal Board’s views on the obviousness of changes in proportion were also discussed. With respect to changes in proportion, many examiners have relied on In re Stevens, 173 F.2d 1015 (1949), which stated that changes in proportion as per se obvious. However, the PTAB has now been giving consideration as to how mere changes in proportion can create a significant difference in the overall visual impression of an article. In particular, in In re Salas, 2019 WL 7790867 (2019) the PTAB declined to view Stevens as a per se rule that all changes in arrangement and proportion are unpatentable. Rather, board referred to In re Blum, 364 F.2d 904 (1967) which stated that  there are no portions of a design that are immaterial or not important.

 In re Surgisil was a 2021 Federal Circuit decision that changed long-standing anticipation analysis for design patents. Prior to this case, examiners relied on In re Glavas, 230 F.2d 447 (1956), which stated that anticipation of a design does not require that the prior art and the claim design were from analogous art. In the Surgisil case, the examiner rejected the design of a lip implant based on the appearance of an art tool. The applicant appealed to the PTAB, which affirmed the rejection, stating that only minor differences exist between the two designs, and the article of manufacture can be ignored for the purposes of determining the claim scope. However, the Federal Circuit reversed, holding that the board decision was erroneous, and that the claim language should match the article that is identified. Consequently, the art tool could not anticipate a design of a lip implant. Subsequent to Surgisil, the test for applicable prior art for designs would now depend on the particular article of manufacture to which the design is applied.

In re Maatita: in this 2018 case, the Federal Circuit held that some designs, for example shoe bottoms, are capable of being enabled by a single plan view drawing. This has led to filings where complex, three-dimensional objects, such as ceiling fans, are depicted by a single, perspective-view drawing, with examiners rejecting those as non-enabled and indefinite. Board decisions have considered this scenario to be a different factual inquiry than that in Maatita. For example, foreshortening distortions due to perspective can introduce uncertainty to the design claim in certain circumstances. At this point, the sufficiency of a single perspective view is not dictated by Maatita, but rather is decided based on a case-by-case analysis.

For more information and analysis regarding design patent protection in the United States and abroad, as well as analysis regarding the impact of these recent developments on your IP rights, please feel free to reach out to us.

USPTO First Office Action Estimator Now Available

Maier & Maier

The United States Patent and Trademark Office (“USPTO”) has announced the availability of an online First Office Action Estimator tool to provide an estimate on when to expect a first Office Action for pending U.S. patent applications.

The estimator has been updated to account for the recent changes to the methodology for assigning patent applications to patent examiners.  In fiscal year 2001, the USPTO transitioned to using the Cooperative Patent Classification (CPC) to assign applications.

While the estimator can provide helpful insight, the estimates are not guaranteed by the USPTO.

You may access the First Office Action Estimator here.

USPTO Deferred Subject Matter Eligibility Response (DSMER) Pilot Program to Launch February 1, 2022

Maier & Maier

A new Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will launch at the USPTO on February 1, 2022. This Pilot Program is designed to address issues currently present in examination of applications for eligibility under 35 U.S.C. 101.

The Pilot Program will allow applicants to defer examination under Section 101, such that the application is first examined under all grounds of patentability under Sections 102, 103, and 112. Under the Pilot, applicants will first amend claims to overcome rejections under the more objective patentability standards of these Sections, which may also have the benefit of informing the examiner that the claims are eligible under Section 101 as well. Subsequent to examination under these Sections, the examiner will conduct an eligibility analysis under Section 101. It is intended that such an examination sequence will result in stronger, more reliable, and higher quality patents.

Participation in this program is by invitation only. The criteria for participating in this program are listed on the DSMER Pilot Program page of the USPTO website.

Additional Filing Fee for Non-DOCX Format Delayed Until 2023

Maier & Maier

An additional filing fee for any nonprovisional utility patent application filed under 35 U.S.C. 111, including continuing applications, that are not filed in DOCX format was set to take effect on January 1, 2022.  However, on November 22, 2021, the USPTO issued a final rule delaying the effective date of the new fee until January 1, 2023.  The reason for the delay is to give both the USPTO and applicants more time to adjust to DOCX filing procedures and to address known issues.

United States Patent and Trademark Office Expands Prioritized Examination (Track One) Program

Maier & Maier

The United States Patent and Trademark Office (USPTO) has further expanded their Track One prioritized examination program by increasing the annual limit on accepted requests. Previously, the USPTO only accepted 12,000 Track One requests per fiscal year, but this announcement increases the limit to 15,000 requests per year.

Track One expedites the patent prosecution process by allowing applicants to receive a final disposition (such as a notice of allowance or final rejection) of a patent application within twelve months from the date of the Track One request.

This is an important development, since Track One allows applicants to avoid lengthy prosecution with less requirements than other prioritized examination programs. An application under Track One typically receives a final disposition in under six months on average. Non-track one applications, however, don’t even receive a first office action for over 16 months, and remain pending for an average of 23.2 months.

At Maier & Maier we take pride in developing sophisticated patent portfolios for our clients and are well equipped to navigate and take advantage of the Track One, Patent Prosecution Highway, or other programs offered by the USPTO.

Arthrex: Supreme Court Upholds PTAB Judges

Maier & Maier

After facing extreme uncertainty at the Federal Circuit, the Patent Trial and Appeal Board’s (“PTAB”) judges have avoided calamity as the Supreme Court upheld their appointment process as constitutional in Arthrex v. Smith & Nephew. In their final decision, the Court held that while their appointment was upheld, the review process for their decisions was not and remanded the case down to the acting USPTO Director for further consideration.

The case began in an inter partes review proceeding at the PTAB and was appealed to the Federal Circuit on the basis that the Administrative Patent Judges comprising the Board are principal officers, who need Presidential appointment with the advice and consent of the Senate. This was premised on the lack of review their decisions receive from the USPTO Director, who is a duly appointed principal officer. According to 35 U. S. C. §6(c), “only the Patent Trial and Appeal Board may grant rehearings”. By insolating the APJs from Director’s review, Arthrex argued that they were converted to principal officers and their appointment was unconstitutional.

At the Federal Circuit, the panel agreed. Because the review process vested the APJ’s with power that exceeded that of an inferior officer, their appointment by the U.S. Secretary of Commerce was insufficient to satisfy the constitutional requirement. To cure this, the Federal Circuit declared that the tenure provision of the APJ’s was unconstitutional. This allowed the USPTO Director to fire them at their discretion and imbued the Director with a form of review over their processes. By giving the Director this authority, the Federal Circuit believed the APJ’s were satisfactorily inferior officers and their appointment could be upheld.

After the denied en banc rehearing, the Supreme Court disagreed in a splintered decision by the Justices. The opinion of the Court was authored by Justice Roberts and joined for Parts I and II by Justices Gorsuch, Alito, Barrett, and Kavanaugh. The crux of the decision rests on the review process itself being unconstitutional and curing it by remanding the case to the Director for their constitutionally mandated authority to review. As the Court explains, the statute “is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own. The Director may engage in such review and reach his own decision.”

By striking the limitation on the Director, the Supreme Court has upheld the validity of the PTAB and its proceedings and prevented what could have been an extreme period of uncertainty for patent owners with the review process in total flux.

If you have any questions or concerns about how this or any other recent news may affect your portfolio or interests, please reach out to one of our attorneys here.