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Patent Office Rules & Procedures

March 07, 2021

Sen. Tillis Sends Letter to President Regarding Next USPTO Director

Last month, Sen. Thom Tillis (R-NC), the Ranking Member of the Subcommittee on Intellectual Property of the Senate Committee on the Judiciary, sent a letter to President Biden regarding the selection of the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Sen. Tillis (at right) noted that "at this critical juncture in our nation's history, we cannot take our innovation and creative economy for granted," and urged the President to work together with Congress "to provide strong protections for our innovative and creative works." With respect to the next USPTO Director, Sen. Tillis outlined five characteristics that he believed any nominee "must possess":

• The nominee "must truly appreciate and value American intellectual property and must treat it for what it is -- a vested property right," and "should understand that clear, predictable, and enforceable intellectual property protections are absolutely critical, and must commit to do everything in their power to strengthen and protect those rights."

• The nominee must commit to continuing the administrative reforms made by the previous Director, Andrei Iancu. Pointing in particular to Director Iancu's reforms to the Patent Trial and Appeals Board (PTAB), Sen. Tillis noted that the prior Director's reforms "have ensured that all rights holders, from individual inventors to innovative startups to industry titans, receive fair and equitable treatment." Sen. Tillis indicated that the next Director must ensure that the USPTO "doesn't return to being viewed as a 'death squad' for intellectual property rights."

• The nominee "must understand the importance of critical and emerging technologies to America's innovation economy and national security," noting that such technologies include precision medicine, quantum computing, artificial intelligence, 5G, and the internet of things, which Sen. Tillis indicated "will be critical to maintaining America's global dominance, both from economic and security perspectives." According to Sen. Tillis, the next Director should ensure that "private actors have the incentive to invest in the research and development" of such technologies.

• The nominee "must be a consistent advocate for the inclusion of strong intellectual property protections in all of our future trade agreements." In particular, Sen. Tillis believes the next Director "should be an advocate and thought leader for new, modern, and ultimately stronger intellectual property protection standards in all international agreements."

• The nominee "must be committed to increasing diversity in our nation's intellectual property system." Sen. Tillis declared that "[f]or too long, too many women and people of color have been underrepresented in our innovation ecosystem," stating that "[t]hese individuals often face unique barriers to engaging in the intellectual property system and their lack of access costs our economy billions of dollars every year." Sen. Tillis believes the next Director should be "committed to increasing the voluntary participation of underrepresented groups in our innovation ecosystem."

Sen. Tillis concluded his letter by noting that "given the importance of strong intellectual property protections to our nation's innovation and creative economy, our trade relationships, and our national security, it is vital that whomever you select for this critical position meets all of these qualifications and truly appreciates and values intellectual property as a right." And the Senator indicated that "[a]nyone who fails to meet these standards will not receive my vote."

Posted at 11:14 PM in Patent Office Rules & Procedures | Permalink | Comments (0)

January 21, 2021

USPTO Responds to Congressional Request for Information Regarding Criteria for Registration Examination for Admission to Patent Bar

By Donald Zuhn –-

On Tuesday, U.S. Patent and Trademark Office Director Andrei Iancu, in one of his last acts before stepping down from the post, sent a letter to Senators Thom Tillis (R-NC), Christopher Coons (D-DE), and Mazie Hirono (D-HI) of the Subcommittee on Intellectual Property for the Senate Judiciary Committee, responding to the Senators' letter of December 11, 2020 seeking information regarding the criteria for the registration examination for admission to the patent bar. The letter from the Senators sought the Office's response to the following six questions:

1. What percentage of registered patent practitioners are women? To the extent the USPTO does not currently have this data, do you commit to collecting it?

2. Has the USPTO performed or is the USPTO aware of any studies regarding the impact of its criteria/or admission to the patent bar on the diversity of patent practitioners?

3. When did the USPTO last evaluate its criteria for admission to the patent bar? Please provide the USPTO's reasons for either changing or maintaining the admission criteria at that time, including any proposed changes considered and objective arguments or data considered.

4. Over the past 5 years, has the USPTO received requests to change the criteria for admission to the patent bar? If so, describe each request and the USPTO's response to the request, including the USPTO's reasons for its response.

5. How many individuals have qualified to take the patent bar over the past 5 years? Please indicate the number of individuals, by gender, who qualified under each of Categories A, B, and C. And, for those individuals qualifying under Categories B and C, please provide a list of their undergraduate and graduate degrees.

6. How many individuals, broken down by gender, have requested to take the patent bar exam who did not qualify under Categories A, B, or C? Of those, how many individuals, broken down by gender, did the USPTO permit to take the patent bar exam? Please provide separate lists of the undergraduate and graduate degrees for those who were permitted to take the patent bar exam and those who were not, respectively.

Before addressing the questions posed by the Senators, Director Iancu noted that the Office continuously evaluates the criteria for the registration examination, and stated that "[t]hese criteria serve the important function of ensuring that those who practice before the USPTO have the requisite scientific and technical knowledge to competently represent our nation's inventors." The Director also acknowledged that the Office shared the Senators' belief that the criteria "not . . . act to discourage applications from women or individuals from other underrepresented groups."

For registered practitioners who may not be familiar with the categories referenced in the questions above, Categories A, B, and C relate to the different ways in which an applicant can demonstrate the scientific and technical training required by the Office in order to be allowed to take the examination for admission to the patent bar. In particular, applicants who possess a Bachelor's Degree in a recognized technical subject fall in Category A; applicants who possess a Bachelor's Degree in a subject other than a recognized technical subject, but who have completed a certain number of semester hours in specific courses or who have completed "other acceptable course work" fall in Category B; and applicants who do not qualify for Categories A or B, but who have passed the Fundamentals of Engineering (FE) test, fall in Category C.

With respect to the Senators' first question, the Office noted that while it has included a salutation field on the application for registration examination since FY2015, the Office only began accepting electronic applications in October 2019, and a manual review of the non-electronic applications "would be a lengthy process and was not able to be completed in the required timeframe for this response." However, in reviewing the 1,937 electronic applications that the Office had received since October 2019, the Office noted that of the 397 applicants in this group who passed the examination, 29.22% selected the "Ms." field on their applications and 70.78% selected the "Mr." field.

Turning to the second question, the Office noted that it had not undertaken nor was aware of any formal studies to evaluate the impact of admission criteria to the patent bar on the diversity of patent practitioners.

Regarding the third question, the Office noted that it "evaluates the criteria for applicants to sit for the registration examination on an ongoing basis," and that based on this ongoing evaluation, the Office was "currently looking into making a number of changes to the criteria." Among the possible changes would be to expand the list of Category A degrees, accept masters and doctoral degrees under Category A, and accept a combination of core sciences coursework under Category B.

In response to the fourth question, the Office noted that it had been contacted by a professor in 2019 who thought that changing the criteria for admission to the patent bar would result in more women being admitted, but received no further communication from the professor after directing the professor to the OED Director. The Office also indicated that after a review of petitions from applicants denied admission to take the registration examination, it identified three situations that appeared to be responsive to the Senators' letter. However, the Office explained that in two of the three situations, the applicant overcame the denial, and in the third, the applicant failed to provide supplemental information to the Office.

With respect to the fifth question, the Office noted that 8,540 applicants had applied to take the registration examination in the past five years, of which 8,049 (94.25%) had been approved to take the examination and 361 (4.23%) had been disapproved. Referring to the 1,937 applicants who filed electronic applications, the Office also noted that 65.67% of these applicants selected the "Mr." salutation and 34.33% chose the "Ms." salutation. As for the respective categories for these applicants, the Office pointed out that for Category A applicants, 67.45% were "Mr." and 32.55% were "Ms."; for Category B applicants, 59.37% were "Mr." and 40.63% were "Ms."; and for Category C applicants, 93.33% were "Mr." and 6.67% were "Ms." The Office did not provide a list of undergraduate and graduate degrees for the Category B and C applicants.

Finally, regarding the sixth question, the Office noted that of the 1,937 applicants who filed electronic applications, 31 of 1153 applicants (2.44%) who selected the "Mr." salutation were disapproved to take the registration examination and 25 of 585 applicants (3.76%) who selected the "Ms." salutation were disapproved to take the registration examination. The Office did not provide a list of undergraduate and graduate degrees for applicants who were permitted to take the registration examination and applicants who were not permitted to take the examination. The Office concluded its letter by indicating that "while the statistics based on the 'Mr./Ms.' field do not show the gender data for all currently registered practitioners, this data provides some insight into the possible gender breakdown for practitioners registered in the past 14 months." The Office also offered to provide technical assistance on legislation "[s]hould Congress desire that the USPTO collect more comprehensive data about the gender of applicants for the registration examination."

Posted at 11:59 PM in Patent Office Rules & Procedures | Permalink | Comments (2)

January 14, 2021

January 11, 2021

January 03, 2021

USPTO Provides Update on COVID-19 Prioritized Examination Pilot Program

By Donald Zuhn --

In an e-mail News Brief distributed last week, the U.S. Patent and Trademark Office reported on the participation to date in its COVID-19 Prioritized Examination Pilot Program. The pilot program, which was implemented last May, allows applicants that qualify for small or micro entity status to request prioritized examination without paying the fees typically associated with such prioritized examination (see "USPTO Announces COVID-19 Prioritized Examination Pilot Program"). In announcing the pilot program, the Office noted that it would endeavor to reach final disposition of applications within six months, provided that applicants respond promptly to Office communications.

In addition to providing expedited examination for qualifying applications, the pilot program also eliminates the requirement to pay the prioritized examination fee set forth in 37 C.F.R. § 1.17(c) ($1,050 for micro entities and $2,100 for small entities) or the processing fee set forth in 37 C.F.R. § 1.17(i)(1) ($35 for micro entities and $70 for small entities). In addition to the requirement that applicants qualify for small or micro entity status, the claims of a participating application must cover a product or process related to COVID–19, and such product or process must be subject to an applicable FDA approval for COVID–19 use. Such approvals may include, for example, an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA). When the pilot program was announced, the Office noted that it would accept up to 500 requests.

Other requirements for participating in the pilot program include making the request at the time of filing of a non-continuing original utility or plant nonprovisional application; at the time of filing of an original utility or plant nonprovisional application claiming the benefit of an earlier filing date under 35 U.S.C. §§ 120, 121, or 365(c) of one prior nonprovisional application or one prior international application designating the United States; or at the time of filing or after the filing of a Request for Continued Examination of a plant or utility application or a national stage of an international application. However, any application that claims the benefit of the filing date of two or more prior filed nonprovisional U.S. applications or international applications designating the United States under 35 U.S.C. §§ 120, 121, or 365(c) is not eligible for participation in the pilot program. In addition, requests to participate in the pilot program must include an Application Data Sheet, be made via the Office's patent electronic filing systems (EFS-Web or Patent Center), and qualifying applications cannot present more than four independent claims, more than 30 total claims, or any multiple dependent claims.

In its e-mail last week, the Office noted that 251 patent requests for prioritized examination under the pilot program have been granted to date, resulting in the allowance or issuance of 33 applications or patents. The Office also noted that more than half of the patent applications granted prioritized examination are directed to medical treatments, vaccines, and diagnostic technology, with the remainder being directed directed to ventilators, personal protective equipment (PPE), and other technology related to COVID-19. In commenting on the pilot program, USPTO Director Andrei Iancu stated that "[o]ver 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."

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October 27, 2020

New USPTO Study Shows Rapid Growth, Regional Spread of AI-Based Patenting

By Aaron Gin --

Today, the U.S. Patent and Trademark Office released a study entitled "Inventing AI", which highlights the increasing prevalence of artificial intelligence (AI)-based patent applications in the U.S. over the past few decades. The study, released by the Office of the Chief Economist of the USPTO, surveyed publicaly available granted U.S. patents and U.S. patent application pre-grant publications (PGPub) published from 1976 through 2018.

In a very "meta" analysis method, the study authors utilized a machine learning neural network classification model to identify patent documents relevant to AI. The author's neural network classifier identified patent documents that fit into one or more of eight "AI component technologies": Knowledge processing, Speech, AI hardware, Evolutionary computation, Natural language processing, Machine learning, Vision, and Planning and control. Once the relevant patent landscape was identified, the study examined various patent trends and diffusion across technologies, inventor-patentees, organizations, and geography.

Source: https://www.uspto.gov/sites/default/files/documents/OCE-ai-supplementary-materials.pdf

Interestingly, the study utilized text from patent document abstracts as well as from the corresponding claims to train its classifier system while previous research in this area had focused on the abstract text only. In describing its methodology, the authors claim that their machine learning model classifier achieved results comparable to that of a manual evaluator and more than 92% accurate in properly classifying patent documents into AI component technologies.

One of the main themes of the study is that AI-based patents are diffusing throughout the U.S. patent system. For example, while it may be perhaps unsurprising that the number of AI patent applications has increased by more than 100% between 2002 and 2018, the study found that the share of applications relating to AI grew from 9% to nearly 16% of all patent applications over that time period. That is, as of 2018, the study suggests that almost one out of every six patent applications relates to at least one AI component technology. Furthermore, the authors indicate that AI-related patent documents appeared in about 9% of all technology subclasses in 1976 while such documents spread to over 42% of all technology subclasses by 2018.

Source: https://www.uspto.gov/sites/default/files/documents/OCE-DH-AI.pdf

Infographics from the USPTO study indicated that AI-based technologies are also diffusing geographically throughout the U.S. For example, the study compared the location of inventor-patentees between two periods: 1976-2000 and 2001-2018, which indicates substantial growth of AI-based patenting in the Midwest and other "non-traditional" technology hubs.

Furthermore, the USPTO study found that a greater variety of companies seek to patent AI-based technologies. For example, while most of the group of the top 30 AI-based patent owners are in the information and communications technology (ICT) sector, AI technologies are now being increasingly adopted and patented by companies in other technology sectors, including multi-sector conglomerates (General Electric), aerospace (Boeing), and financial (Bank of America).

In its role to advise Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu on the economic implications of policies and programs affecting the U.S. intellectual property system, the Office of the Chief Economist apparently believes that AI-based patents are poised to continue their dramatic expansion. In closing, the study authors state that:

Whether AI turns out to be as revolutionary as electricity or the semiconductor depends, in part, on the ability of innovators and firm to successfully incorporate AI inventions into existing and new products, processes, and services. Our results suggest that AI has this potential.

Regardless of whether AI will become as revolutionary as electricity, however, it is clear that AI-based patents will remain an important part of the U.S. patent landscape going forward.

For additional information, please see:

• United States Patent and Trademark Office, Office of the Chief Economist, "Inventing AI; Tracing the diffusion of artificial intelligence with U.S. patents" Number 5, October 2020. https://www.uspto.gov/sites/default/files/documents/OCE-DH-AI.pdf
• United States Patent and Trademark Office, Office of the Chief Economist, "Supplementary Material; Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents" Number 5, October 2020. https://www.uspto.gov/sites/default/files/documents/OCE-ai-supplementary-materials.pdf
• Aaron Abood and Dave Feltenberger, "Automated patent landscaping" Artificial Intelligence and Law, June 2018. https://dl.acm.org/doi/abs/10.1007/s10506-018-9222-4

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October 11, 2020

USPTO Publishes Report on AI-Related Policies

By Michael Borella --

Last year, the U.S. Patent and Trademark Office (USPTO) issued a request for comments (RFC) on patenting artificial intelligence (AI) based inventions. Topics of the RFC included AI's impact on inventorship and ownership, patent eligibility, disclosure, prior art, and the level of ordinary skill in the art. The USPTO received 99 comments from a variety of stakeholders. In parallel to that effort, the USPTO also released a second RFC related to the impact of AI on copyright, trademark, database protections, and trade secret law. Stakeholders provided a similar number of comments.

With this feedback in hand, the USPTO collated it into a 56-page report. This article focuses on issues related to the drafting and prosecution of AI-related patent applications. Readers are encouraged to read the rest of the report to obtain the USPTO's summary of the remaining issues.

The report begins with a high level overview that can be expressed as three main points:

1. Most commenters agreed that AI-based inventions are a subset of computer-implemented software inventions, and thus the current framework for examining such inventions is suitable for examining AI-based inventions. Still, some commenters exhibited concern that it may be difficult to meet the requirements of 35 U.S.C. § 112(a) for certain AI-based inventions.

2. Most commenters agreed that AI may lead to changes in how the standard of a person of ordinary skill in the art (POSITA) is interpreted.

3. There were some concerns that AI would lead to a proliferation of prior art making it difficult for examiners to conduct searches for relevant prior art.

A brief list of issues of note follows.

Definitions

Interestingly, there was no clear consensus on what constitutes an AI-based invention. Of the definitions provided, the one that seems to be the most helpful (in my subjective opinion) states that:

AI inventions can be categorized (in no particular order) as follows:

(a) inventions that embody an advance in the field of AI (e.g., a new neural network structure of an improved machine learning (ML) model or algorithm)

(b) inventions that apply AI (to a field other than AI)

Patent Eligibility

As noted, the consensus is that, as a special form of computer-implemented invention, AI-based inventions can be fairly evaluated under the current patent-eligibility of 35 U.S.C. § 101 as interpreted by the courts. Some commenters indicated that AI-based inventions could be characterized as falling into the abstract idea subject matter exception, as a method of organizing human activity, a mental process, or a mathematical concept. But to the extent that these inventions provide technological improvements and "amount to significantly more than the abstract idea," they would be found to pass through the § 101 filter.

Indeed, this approach is consistent with the Supreme Court's refusal to draw a line between what is and is not eligible. Each invention is to be considered on its own merits, and there are no "magic words" or drafting techniques that can be used to guarantee a claim is eligible.

Written Description and Enablement

While many commenters did not believe that AI-based inventions had any special written description requirements, one commenter stated that "AI inventions can be difficult to fully disclose because even though the input and output may be known by the inventor, the logic in between is in some respects unknown." This is true, in the sense that a learning model can be viewed as a "black box" that receives input (e.g., words or images) and produces output (e.g., a classification). One can view the constituent elements that make up the model (e.g., nodes, connections, and weights), but these elements can number in the millions. As a consequence, they cannot be used to concisely characterize the invention, nor should they as the specific values of weights can be different each time the model is trained.

Regarding enablement, the USPTO notes that "the amount of guidance or direction needed in the specification to enable the invention is inversely related to the amount of knowledge in the state of the art, as well as the predictability in the art." But there is no clear understanding of the predictability of AI systems. Some contain an inherent amount of intentional randomness that allow these systems to produce superior results when compared to more deterministic systems. Others may be predictable if their training data and training technique is fixed.

One possible way of addressing both of these concerns is to allow AI models that involve machine learning to meet the written description and enablement requirements with proper specification of how the models can be trained. If, from the specification, a POSITA can glean enough knowledge to reasonably reproduce the training technique with their own data, the invention is likely to be well-described and enabled.

Level of Ordinary Skill in the Art

While the ubiquity of AI may impact the level of ordinary skill in the art, commenters seems to agree that the present legal framework is "adequate to determine the impact of AI-based tools in a given field." As the level of skill in the art generally increases over time, use of AI-based tools would be just another way for the level of skill to rise, albeit at a potentially faster rate than what we have seen in the past.

Prior Art Considerations

While most commenters believed that there are no specific concerns regarding prior art and AI-based inventions, some indicated that AI itself may be used to generate massive amounts of prior art that would be challenging to thoroughly search. Others pointed out that prior art unique to AI may eventually exist as AI systems evolve toward more general intelligence. A key to these considerations would be proper examiner training.

Data Protection

A critical component of AI goes beyond the algorithms and models, and is embodied in the data sets that the algorithms use to train the models. Currently, such data sets have relatively weak protection (mostly in the realm of trade secret law). Some commenters would like to have provisions that allow incumbent companies to maintain proprietary rights over data sets that they have collected, while still allowing newcomers to use these data sets to train their own models.

Examination

There were suggestions that the USPTO coordinate with the world's other patent offices when considering its approach to AI-based inventions. Of note was that the Japan Patent Office and Korean Intellectual Property Office have established specific and dedicated AI examination units. Further, the Intellectual Property Office of Singapore has "reportedly created an expedited examination path for AI technologies."

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September 17, 2020

USPTO Announces Deferred-Fee Provisional Application Pilot Program to Encourage COVID-19 Related Inventions

By Donald Zuhn --

In a notice published in the Federal Register (85 Fed. Reg. 58038) earlier today, the U.S. Patent and Trademark Office announced that it was implementing a deferred-fee provisional patent application pilot program in order to promote the expedited exchange of information about inventions designed to combat COVID–19. In the notice, the Office states that it recognizes that its charge to issue high-quality patents to inventors goes hand-in-hand with the dissemination of important technical information, and that the free-flow of such information is now more important than ever in view of the urgent challenges posed by COVID–19.

Applicants who participate in the pilot program will be allowed to defer payment of the provisional application filing fee (which is currently $280 for large entities) until the filing of a nonprovisional application claiming the benefit of the provisional application in exchange for permitting the Office to make the technical subject matter disclosed in the provisional application available to the public via a searchable collaboration database maintained on the Office's website. In order to qualify for participation in the pilot program, the subject matter disclosed in the provisional application must concern a product or process related to COVID–19, and such product or process must be subject to approval by the U.S. Food and Drug Administration (FDA) for COVID-19 use. According to the notice, a provisional application qualifies for participation in the pilot program if such FDA approval "has been obtained, is pending, or will be sought prior to marketing the subject matter for COVID–19." The notice indicates that such approvals include an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA). The notice also indicates that the subject requirement for participation in the deferred-fee provisional patent application pilot program is the same as that for participation in the COVID–19 prioritized examination pilot program, which was announced in May (see "USPTO Announces COVID-19 Prioritized Examination Pilot Program").

The requirements to participate in the pilot program are as follows:

1. Applicants must submit a certification and request for participation in the program using form PTO/SB/452.

2. The submission must be in the English language.

3. The submission must include a provisional application cover sheet pursuant to 37 C.F.R. § 1.51(c)(1) (or an Application Data Sheet, which may serve as the provisional application cover sheet).

4. The submission (i.e., provisional application specification, including any drawings, claims, and/or abstract, provisional application cover sheet (or ADS), and form PTO/SB/452) must be filed electronically via the Office's Patent Center, and the specification must be filed in DOCX format to facilitate making the text searchable.

5. The submission must meet the requirements for a provisional application under 35 U.S.C. § 111(b)(1) and 37 C.F.R. § 1.53(c), except for the payment of the basic filing fee, which would be deferred under the pilot program.

The notice indicates that a submission that does not include a legible specification in DOCX format will be handled as a provisional application and not a pilot program submission. However, if a submission does not include a provisional application cover sheet or application size fee (if the latter is required), the Office will give Applicants an extendable two-month time period to submit the missing items.

The technical subject matter of provisional applications accepted to the pilot program will be uploaded by the Office into a searchable public collaborative database, and the submission will be processed as a provisional application. The notice states that the database will also publish the name of the inventor or the first named joint inventor, the provisional application filing date, and the date the submission was placed in the database, but will not publish the provisional application cover sheet.

The notice explains that while a provisional application filing fee is a statutory requirement under 35 U.S.C. § 111(b)(3), the Director is authorized under that same section to allow Applicants to pay that fee after the filing date of the application. However, the notice also explains that the basic filing fee under 37 C.F.R. § 1.16(d) must be paid by the Applicant in order to rely on the provisional application in a later-filed nonprovisional application. Participants in the pilot program will receive a reminder from the Office 10 months after the provisional application filing date indicating that the basic filing fee must be paid not later than 12 months after the provisional application filing date in order to claim the benefit of the filing date of the provisional application in a nonprovisional application.

In a section of the notice entitled "Prior Art Considerations," the Office states that "[a]n inventor's technical disclosure published in the collaboration database cannot be used against the inventor's own corresponding later-filed nonprovisional application in the United States, provided that the later-filed application is filed within one year of the public disclosure." However, the notice also states that:

Special care should be taken where foreign patent protection is desired. Many foreign jurisdictions treat an inventor's public disclosure made within one year of filing as prior art against the inventor's own application unless that earlier disclosure is the subject of a proper priority claim in that jurisdiction. For this reason, applicants should be aware of the prior art implications of their submissions.

Making a submission under the program will result in a public disclosure of the technical subject matter via the Office's searchable collaboration database. Thus, such a public disclosure may be citable as prior art under 35 U.S.C. 102(a)(1) as of the date it publishes. In addition, the complete provisional patent application submitted under the program may become prior art under 35 U.S.C. 102(a)(2) as of the filing date, but only if there has been a proper benefit claim under 35 U.S.C. 119(e) in a later-filed nonprovisional application or international application and the later-filed application has been published or deemed published under 35 U.S.C. 122(b) or has issued as a U.S. patent.

The notice also explains that "[t]here is no provision for withdrawal from the program," and that "[o]nce the technical subject matter of a program submission is made available to the public in the searchable collaboration database on the USPTO's website, that public availability cannot be revoked."

The Office began accepting certifications and requests for participation in the pilot program today and will accept requests for the next 12 months, at which time the program may be extended or terminated by the Office. The notice also indicates that depending on feedback and interest in the pilot program, the technological scope may be expanded beyond COVID–19 to other areas that are the focus of pioneering or rapid innovation. Provisional applications filed prior to September 17, 2020 are not eligible for participation in the pilot program.

The Office will accept public comments regarding the pilot program, but such comments must be received by November 16, 2020 to be considered by the Office. Comments should be sent by e-mail and addressed to [email protected]

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September 07, 2020

USPTO News Briefs

By Donald Zuhn --

USPTO Extends Cancer Immunotherapy Pilot Program

In a notice published earlier this summer in the Federal Register (85 Fed. Reg. 41570), the U.S. Patent and Trademark Office announced that it was extending the Cancer Immunotherapy Pilot Program. According to the Office's notice, the Cancer Immunotherapy Pilot Program has been extended to June 30, 2022, and all parameters will remain the same as in the original pilot program.

The Cancer Immunotherapy Pilot Program was initiated on June 29, 2016 (see "USPTO Implements Pilot Program to Support President's National Cancer Moonshot") to provide for earlier review of patent applications pertaining to cancer immunotherapy in support of the "National Cancer Moonshot," an initiative of the Obama Administration to achieve ten years' worth of cancer research from 2016 to 2021 (see "FACT SHEET: Investing in the National Cancer Moonshot"). Under the Cancer Immunotherapy Pilot Program, applications containing at least one claim reciting a method of treating a cancer using immunotherapy are advanced out of turn for examination if the applicant files a grantable petition to make special, with the goal of completing examination of the application within twelve months of special status being granted. In order to participate in the Cancer Immunotherapy Pilot Program, an applicant must satisfy the following requirements:

(1) File a petition to make special under 37 C.F.R. § 1.102(d) in a non-reissue, nonprovisional utility application filed under 35 U.S.C. § 111(a), or an international application that has entered national stage under 35 U.S.C. § 371. The petition must be filed at least one day prior to the date that notice of a first Office action (which may be an Office action containing only a restriction requirement) appears on PAIR, or with a Request for Continued Examination (RCE). For applications in which the claimed cancer immunotherapy is the subject of an active Investigational New Drug (IND) application, a petition to make special may be accepted any time prior to appeal or final rejection. The Office recommends that applicants use form PTO/SB/443 for filing the petition, as the form contains check boxes that will allow the applicant to comply with several certification requirements under the pilot program.

(2) The application cannot contain more than three independent claims, more than twenty total claims, or any multiple dependent claims. For applications not meeting this requirement, an applicant must file a preliminary amendment to cancel the excess claims or multiple dependent claims at the time the petition to make special is filed.

(3) The application must include at least one claim to a method of treating a cancer using immunotherapy, and such claim must "encompass[] a method of ameliorating, treating, or preventing a malignancy in a human subject wherein the steps of the method assist or boost the immune system in eradicating cancerous cells." Examples of acceptable claims include those directed to "the administration of cells, antibodies, proteins, or nucleic acids that invoke an active (or achieve a passive) immune response to destroy cancerous cells," "the co-administration of biological adjuvants (e.g., interleukins, cytokines, Bacillus Comette-Guerin, monophosphoryl lipid A, etc.) in combination with conventional therapies for treating cancer such as chemotherapy, radiation, or surgery," "administering any vaccine that works by activating the immune system to prevent or destroy cancer cell growth," or "in vivo, ex vivo, and adoptive immunotherapies, including those using autologous and/or heterologous cells or immortalized cell lines."

(4) If restriction is required, the applicant must agree to make an election without traverse in a telephonic interview, and elect an invention directed to a method of treating a cancer using immunotherapy. The applicant will be given two working days to respond to an examiner's request for an election, and in the event that the applicant fails to respond within that period, the examiner will treat the first group of claims directed to a method of treating a cancer using immunotherapy as being constructively elected without traverse.

(5) The application cannot have been previously granted special status.

(6) The petition to make special must be filed electronically via the EFS-Web, and the document description "Petition for Cancer Immunotherapy Pilot" must be selected for the petition.

(7) If the application has not been published, the applicant must file a request for early publication in compliance with 37 C.F.R § 1.219 with the petition to make special (or a rescission of a nonpublication request if one was filed).

For the purposes of the pilot program, the fee for a petition to make special under 37 C.F.R. § 1.102(d) has been waived by the Office.

In its notice extending the Cancer Immunotherapy Pilot Program, the Office noted that as of the date of the notice, more than 500 petitions requesting participation in the pilot program have been filed, and 167 patents have been granted under the pilot program.

USPTO and IMPI Extend PPH Pilot Program

In a notice published earlier this summer in the Official Gazette (1476 OG 56), the U.S. Patent and Trademark Office announced that the USPTO and Mexican Institute of Industrial Property (IMPI) have agreed to extend the Patent Prosecution Highway (PPH) Pilot Program between the two offices until June 30, 2022. As a result of the extension, the USPTO will treat as timely any PPH request, based on IMPI work, filed with the USPTO on or before June 30, 2022.

INAPI Transitioning to Global PPH Pilot Program

In a notice issued by the U.S. Patent and Trademark Office earlier this summer, the USPTO announced that it had been informed by the National Institute of Industrial Property of Chile (INAPI) that INAPI would be participating in the Global PPH pilot program effective July 6, 2020. In November of 2018, the USPTO had commenced a Patent Prosecution Highway (PPH) pilot program in which an applicant whose claims were determined allowable/patentable in an application filed with INAPI could have the corresponding application filed with the USPTO advanced out of turn for examination. In January of 2014, the USPTO began participating in the Global PPH pilot program, which consolidated and replaced numerous prior PPH programs, streamlining and simplifying the PPH process for both applicants and Global PPH participating offices. INAPI's participation in the Global PPH pilot program will supersede the bilateral PPH pilot program that previously existed between the USPTO and INAPI.

USPTO Releases Revised MPEP

The U.S. Patent and Trademark Office announced via a Patent Alert e-mail distributed earlier this summer and a notice in the Federal Register (85 Fed. Reg. 41571) that it has released the latest version of the Manual of Patent Examining Procedure (MPEP). The new version of the MPEP -- the Ninth Edition, June 2020 Revision -- incorporates updated information on patent examination policy and procedure related to a number of issues, including subject matter eligibility and examination of computer-implemented functional claim limitations. In particular, chapters 100-1000, 1200-1500, and 1700-2800 of the MPEP have been revised. The Office notes that updated sections are indicated by a revision indicator of [R-10.2019], which means these sections have been updated to reflect USPTO patent practice and relevant case law as of October 31, 2019. The new version of the MPEP can be accessed here. Suggestions for improving the form and content of the MPEP can be submitted via e-mail to [email protected], via the IdeaScale® tool at https://uspto-mpep.ideascale.com/a/index, or by regular mail addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of the Editor, Manual of Patent Examining Procedure.

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August 11, 2020

USPTO Initiates Fast-Track Appeals Pilot Program

By Donald Zuhn --

In a notice published in the Federal Register last month (85 Fed. Reg. 39888), the U.S. Patent and Trademark Office announced that it was initiating a Fast-Track Appeals Pilot Program, to provide for the advancement of applications out of turn in ex parte appeals before the Patent Trial and Appeal Board. The new pilot program, which took effect on July 2, 2020, is scheduled to run until July 2, 2021 or until 500 petitions for inclusion in the program have been accepted, whichever occurs earlier.

In announcing the new pilot program, the Office noted that appeals to the PTAB are normally taken up for decision in the order in which they are docketed, with the exception of a small number of appeals (about 1.1%) that are advanced out of turn due to special status. In view of the success and popularity of prioritized examination, which the Office notes was granted for approximately 2.7% of the total number of applications filed in FY2019, the PTAB has decided to adopt a similar mechanism for according fast-track status to ex parte appeals.

Appeals advanced out of turn under the Fast-Track Appeals Pilot Program are expected to reach a decision within six months from the date an appeal is entered into the new program. The Office notes that the average appeal pendency is currently about 15 months. The Office also notes that the new pilot program is intended to "hasten patentability determinations on new inventions and the pace at which products or services embodying these inventions are brought to the marketplace, thus spurring follow-on innovation, economic growth, and job creation."

In order to request inclusion in the Fast-Track Appeals Pilot Program, appellants must satisfy the following requirements:

• The appeal must involve an original utility, design, or plant nonprovisional application that has not been already treated as special during appeal.

• Appellants must have received an appeal docketing notice from the PTAB.

• Appellants must file a petition under 37 C.F.R. § 41.3 and identify the application and appeal by application number and appeal number. The petition must also be signed by an applicant or registered practitioner having a power of attorney or authority to act. The Office notes that it has created a "Petition—Fast-Track Appeals Pilot Program" (Form PTO/SB/451) for use in satisfying this requirement.

• Appellants must pay a petition fee of $400.

Petitions for inclusion in the Fast-Track Appeals Pilot Program may be filed between the date when the PTAB issues a notice that the appeal has been docketed and the date on which the appellant withdraws the appeal, a final decision is rendered by the PTAB, or PTAB jurisdiction ends. The Office's notice also indicates that any request by an appellant that causes a delay in the conduct of the appeal will result in the removal of the appeal's fast-track status without refund of the petition fee.

The Office indicates that it will communicate the number of granted petitions for the Fast-Track Appeals Pilot Program here, and recommends that appellants take this information into account when deciding whether to file a petition. As of August 3, the Office had received 34 petitions and had granted 32 of those petitions. The Office also notes that it has a goal of rendering decisions on petitions to accord fast-track status to appeals within one month from the filing date of the petition.

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July 28, 2020

USPTO Issues Final Rule to Revise PTA Rules in View of Supernus v. Iancu

By Donald Zuhn --

Last month, the U.S. Patent and Trademark Office published a final rule in the Federal Register (85 Fed. Reg. 36335), in which the Office set forth revisions to the rules of practice concerning Patent Term Adjustment (PTA) in view of the Federal Circuit's decision in Supernus Pharm., Inc. v. Iancu. The final rule implements revisions that were previously discussed in a notice of proposed rulemaking published by the Office in May 2019 (see "USPTO Proposes Revisions to PTA Rules in View of Supernus v. Iancu"). With respect to the PTA rules being changed, the Office is revising the period of reduction of PTA in the following subsections of 37 C.F.R. § 1.704:

• Deferral of issuance of a patent (37 C.F.R. § 1.704(c)(2));
• Abandonment of an application (37 C.F.R. § 1.704(c)(3));
• Submission of a preliminary amendment (37 C.F.R. § 1.704(c)(6));
• Submission of papers after a decision by the Patent Trial and Appeal Board or by a Federal court (37 C.F.R. § 1.704(c)(9)); and
• Submission of papers after a notice of allowance under 35 U.S.C. § 151 (37 C.F.R. § 1.704(c)(10)).

According to the Office's notice, the revisions to the rules will specify a period of reduction corresponding to "the period from the beginning to the end of the applicant's failure to engage in reasonable efforts to conclude prosecution" as opposed to the consequences to the Office of applicant's failure to engage in reasonable efforts to conclude prosecution.

In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit reversed the entry of summary judgment by the District Court for the Eastern District of Virginia, which concluded that the U.S. Patent and Trademark Office had not erred in calculating the PTA for U.S. Patent No. 8,747,897. During prosecution of U.S. Application No. 11/412,100, which issued as the '897 patent, the Examiner issued a final Office Action, and Supernus responded by filing a Request for Continued Examination (RCE). After filing the RCE, Supernus was notified that an opposition had been filed in related European Patent No. EP 2 010 189 (which had issued from a European application corresponding to an International application that claimed priority from the '100 application). One hundred days after the European Patent Office's notification of the opposition, Supernus filed a supplemental Information Disclosure Statement (IDS) citing the Notice of Opposition and other documents concerning the opposition. The USPTO ultimately issued the '100 application as the '897 patent, determining that the '897 patent was entitled to 1,260 days of PTA. The Office's PTA determination included an assessment of 886 days of applicant delay, of which 646 days were assessed for the time between the filing of the RCE and the submission of the supplemental IDS. Supernus filed a request for Reconsideration of Patent Term Adjustment, but the Office rejected Supernus' request, concluding that the 646-day reduction in PTA was proper.

Supernus challenged the Office's PTA determination in the Eastern District of Virginia, contending that it was entitled to at least 546 of the 646 days of PTA reduction (i.e., the period of time between the filing of the RCE and the EPO notification of opposition). The District Court granted summary judgment in favor of the USPTO, finding that the USPTO did not err in the PTA calculation for the '897 patent.

In January of 2019, the Federal Circuit reversed the District Court's grant of summary judgment in favor of the USPTO, finding that because there were "no identifiable efforts" that Supernus could have undertaken in the time period between the filing of an RCE during prosecution of the application that issued as the '897 patent and the mailing of an EPO notification of opposition for a European counterpart patent (which resulted in Supernus filing a supplemental Information Disclosure Statement during prosecution of the '897 patent), Supernus had not failed to engage in reasonable efforts to conclude prosecution during that time period. The Federal Circuit noted in Supernus that "Congress expressly granted the USPTO authority to determine what constitutes reasonable efforts [under 35 U.S.C. § 154(b)(2)(C)(i)], but the USPTO lacks any authority to exceed the statutory 'equal to' limitation by including the 546-day time period during which it does not contend that Supernus failed to undertake reasonable efforts to conclude prosecution." The Court therefore found the USPTO's PTA reduction for the '897 patent to be inconsistent with the PTA statute, accorded no deference to the USPTO's application of the regulations at issue in the circumstances of this case, and reversed and remanded the District Court's summary judgment order.

In the final rule, the Office points out that "[t]he Federal Circuit in Supernus held that a reduction of patent term adjustment under 35 U.S.C. 154(b)(2)(C) must be equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application." As a result, the final rule revises certain provisions of 37 C.F.R § 1.704 for consistency with the Federal Circuit's decision in Supernus. The final rule explains that "[w]hile the Federal Circuit decision in Supernus involved 37 CFR 1.704(c)(8), there are several provisions in 37 CFR 1.704(c)(1) through (c)(14) whose period of reduction corresponds to or includes the consequences to the USPTO of the applicant's failure to engage in reasonable efforts to conclude prosecution, rather than 'the period from the beginning to the end of the applicant's failure to engage in reasonable efforts to conclude prosecution.'" Therefore, the final rule addresses that issue with respect to 37 C.F.R. § 1.704(c)(2), (3), (6), (9), and (10).

One addition to the rules revisions discussed in the Office's notice of proposed rulemaking involves after-allowance amendments or other after-allowance papers that are "expressly requested by the Office." In the final changes to 37 C.F.R. § 1.704(c)(10), the Office has excluded after-allowance amendments or other after-allowance papers that are "expressly requested by the Office" from the after-allowance amendments or other after-allowance papers that will result in a reduction of PTA under § 1.704(c)(10). Thus, the final rule states that "an amendment under § 1.312 or other paper not expressly requested by the USPTO (i.e., a 'voluntary' amendment under § 1.312 or other paper) after the notice of allowance will result in a reduction of patent term adjustment under § 1.704(c)(10)." The notice also indicates that "[a]n amendment under § 1.312 or other paper going beyond what was requested by the USPTO (i.e., including material not expressly requested by the USPTO in addition to what was requested by the USPTO) would not be considered 'an amendment under § 1.312 or other paper expressly requested by the Office' under § 1.704(c)(10)" (emphasis added).

The notice points out that the phrase "expressly requested by the Office" in § 1.704(c)(10) "requires a specific request in an Office action or notice, or in an Examiner's Interview Summary (PTOL–413), for the amendment under § 1.312 or other paper" (emphasis added), and explains that:

[G]eneric language in an Office action or notice, such as a statement in a notice of allowability containing an examiner's amendment indicating that if the changes and/or additions are unacceptable to applicant, an amendment may be filed as provided by § 1.312 (section 1302.04 of the Manual of Patent Examining Procedure (MPEP)), is not a basis for considering an amendment under § 1.312 to be "expressly requested by the Office" within the meaning of § 1.704(c)(10) as adopted in this final rule. Similarly, the provisions of §§ 1.56, 1.97, and 1.98 are not a basis for considering an information disclosure statement including information that has come to the attention of the applicant after a notice of allowance has been given or mailed to be a paper "expressly requested by the Office" within the meaning of § 1.704(c)(10). An information disclosure statement in compliance with §§ 1.97 and 1.98, however, will not be considered a failure to engage in reasonable efforts to conclude prosecution of the application under § 1.704(c)(10) (or § 1.704(c)(6), (8), or (9) if the information disclosure statement is accompanied by a statement under § 1.704(d)).

Significantly, the notice indicates that even if an amendment under § 1.312 or other paper is expressly requested by the USPTO, if the amendment or other paper is not filed within three months from the date of mailing or transmission of the USPTO communication notifying the applicant of such request, the submission will result in a reduction of PTA under § 1.704(b).

According to the Office's notice, the final rule took effect on July 16, 2020, and the final rule applies to original utility and plant patents issuing from applications filed on or after May 29, 2000, in which a notice of allowance was mailed on or after July 16, 2020. The notice also indicates that the Office is currently modifying its PTA computer program, which uses information recorded in the USPTO's Patent Application Locating and Monitoring (PALM) system to make an initial PTA determination, to implement the changes in the final rule. The Office notes that it will decide any timely request for reconsideration of such PTA determinations provided that the request complies with 37 C.F.R. § 1.705(b) (i.e., is made within seven months of patent issuance), regardless of whether the notice of allowance was mailed on or after July 16, 2020.

In addressing the seven comments the Office received in response to its notice of proposed rulemaking, the final rule also indicates that nothing in the revisions to 37 C.F.R. § 1.704(c)(10) has changed the list of papers that can be submitted after a notice of allowance is mailed without adversely impacting PTA. In particular, the Office has explained that the following papers may be submitted after a notice of allowance is mailed without resulting in a reduction of PTA under § 1.704(c)(10):

(1) Fee(s) Transmittal (PTOL–85B); (2) power of attorney; (3) power to inspect; (4) change of address; (5) change of entity status (micro/small/not small entity status); (6) a response to the examiner's reasons for allowance or a request to correct an error or omission in the "Notice of Allowance" or "Notice of Allowability"; (7) status letters; (8) requests for a refund; (9) an inventor's oath or declaration; (10) an information disclosure statement with a statement in compliance with § 1.704(d); (11) the resubmission by the applicant of unlocatable paper(s) previously filed in the application (§ 1.251); (12) a request for acknowledgment of an information disclosure statement in compliance with §§ 1.97 and 1.98, provided that the applicant had requested that the examiner acknowledge the information disclosure statement prior to the notice of allowance, or the request for acknowledgement was the applicant's first opportunity to request that the examiner acknowledge the information disclosure statement; (13) comments on the substance of an interview where the applicant-initiated interview resulted in a notice of allowance; and (14) letters related to government interests (e.g., those between NASA and the USPTO).

In addition, as discussed above, the Office has now added "an amendment under § 1.312 or other paper expressly requested by the Office" to the list of documents above.

Marked-up versions of the rules that the Office has revised are set forth below (note: subsections of 37 C.F.R. § 1.704(c) in which the term "mailing date" was changed to "date of mailing," but where no changes were made to the period of reduction of PTA, are not included below; a complete version of the revised rule can be found in the Federal Register notice for the final rule; bold, underlined text indicates changes to the rules since the Office's notice of proposed rulemaking).

1.704 Reduction of period of adjustment of patent term.

* * *

(c) * * *

(2) Deferral of issuance of a patent under § 1.314, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under § 1.314 was filed and ending on the earlier of the date a request to terminate the deferral was filed or the date the patent was issued;

(3) Abandonment of the application or late payment of the issue fee, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the date after the date the issue fee was due and ending on the earlier of:
    (i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
    (ii) The date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed;

* * *

(6) Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the mailing date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the original Office action or notice of allowance national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of the supplemental Office action or notice of allowance; the preliminary amendment or
    (ii) Four months other preliminary paper was filed;

* * *

(9) Submission of an amendment or other paper after a decision by the Board of Patent Appeals Trial and Interferences Appeal Board, other than a decision designated as containing a new ground of rejection under § 1.19641.50(b) of this title or statement under § 1.19641.50(c) of this title, or a decision by a Federal court, less than one month before the mailing of an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or supplemental notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the mailing date of the original Office action decision by the Patent Trial and Appeal Board or notice of allowance by a Federal court and ending on the mailing date of the supplemental Office action or notice of allowance; amendment or
    (ii) Four months other paper was filed;

(10) Submission of an amendment under § 1.312 or other paper, other than an amendment under § 1.312 or other paper expressly requested by the Office or a request for continued examination in compliance with § 1.114, after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the amendment under § 1.312 or other paper was filed and ending on the mailing date of the Office action or notice in response to the amendment under § 1.312 or such other paper; or
  (ii) Four months;

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June 29, 2020

USPTO Announces Additional Extension of Certain Patent Deadlines for Small and Micro Entities

Impact of COVID-19 Pandemic on Patent Offices – June 29 Update

By Donald Zuhn –-

In a notice posted on its website earlier today, the U.S. Patent and Trademark Office announced that it was further extending the time to pay certain required fees, but only for certain types of entities. As with the initial extensions announced by the Office on March 31, 2020 (see "USPTO Announces Extension of Certain Patent Deadlines"), the extension of those deadlines announced by the Office on April 28, 2020 (see "USPTO Announces Further Extension of Certain Patent Deadlines"), and the further extension of those deadlines announced by the Office on May 27, 2020 (see "USPTO Announces Further Extension of Certain Patent Deadlines for Small and Micro Entities"), the additional extensions are the result of the temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which was signed by President Trump on March 27, 2020.

According to the Office's latest notice, the additional extensions apply to deadlines for the payment of certain required fees that would have been otherwise due between March 27 and September 29, 2020, which "will be considered timely if paid on or before September 30, 2020," provided that the payment is accompanied by a statement that the delay in payment was due to the COVID-19 outbreak, as defined in the Office's April 28, 2020 notice. However, as in the Office's May 27, 2020 notice, the Office's latest notice makes it clear that the additional extensions are "[f]or small and micro entities only" (emphasis added). The Office's latest notice also restricts the extensions to the deadlines for the payment of the following required fees:

a) basic filing fee, search fee, examination fee, and late filing surcharge (37 CFR § 1.16(f), 1.16(g), or 1.492(h)) due in reply to an Office notice issued during pre-examination processing;
b) basic national fee;
c) issue fee; or
d) maintenance fee;

In addition to the fee deadline extensions listed above, the Office's notice states that "other extensions of time and other relief remain available to those who need it on a case-by-case basis." According to the notice, Applicants can submit one of three petitions together with the applicable petition fee (unless the fee is waived):

a) extensions of time under 37 CFR § 1.136 remain available for filing replies to Office actions and notices issued during patent application processing or examination;

b) petitions under 37 CFR § 1.137 to revive an application remain available if an inability to file or pay patent-related documents or fees by their due date has resulted in the abandonment of an application or termination or limiting of prosecution in a reexamination proceeding; and

c) petitions under 37 CFR § 1.378 to accept a delayed maintenance payment remain available if a maintenance fee has not been paid by its due date.

For petitions to revive, the Office notes that for all entities, the Office will continue to provide relief in the form of a waiver of the petition fee for the revival of applications that became abandoned, or reexamination proceedings that became terminated or limited, as a result of the COVID-19 outbreak. However, the Office's latest notice sets a deadline of July 31, 2020, for the submission of any petition under 37 CFR § 1.137 that will be eligible for the fee waiver. Applicants will still have to file a statement with their petition to revive indicating that the delay in filing or payment was due to the COVID-19 outbreak as defined in the April 28, 2020 notice.

The Office's latest notice also indicates that for proceedings before the Patent Trial and Appeal Board, requests for an extension of time where the COVID-19 outbreak has prevented or interfered with a PTAB filing can be made by contacting the PTAB at 571-272-9797 or by e-mail at [email protected] (for AIA trials), [email protected] (for PTAB appeals), or [email protected] (for interferences).

The Office's latest notice concludes by stating that "[t]he USPTO recognizes that the COVID-19 pandemic continues to impose various hardships, especially on small businesses and individuals, and will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the USPTO's operations and stakeholders." Nevertheless, the Office notes that it "does not anticipate any further broad-based extensions beyond what is outlined in this Notice."

Patent-related inquiries regarding the Office's latest notice can be directed by e-mail to [email protected] or by telephone to the Office of Patent Legal Administration at 571-272-7704.

Patent Docs will continue to monitor and report on patent-related developments related to the COVID-19 pandemic. In addition, we encourage our readers to let us know about developments related to the COVID-19 pandemic at other patent offices.

For additional information regarding this and other related topics, please see:

Posted at 11:59 PM in Patent Office Rules & Procedures | Permalink | Comments (0)

June 18, 2020

USPTO Director Updates Congress Regarding Impact of COVID-19 Pandemic on USPTO Operations

By Donald Zuhn --

Last week, U.S. Patent and Trademark Office Director Andrei Iancu sent a letter to the Chairmen and Ranking Members of the Senate and House Committees on the Judiciary, Senate Subcommittee on Intellectual Property, and House Subcommittee on Courts, Intellectual Property, and the Internet, responding to an April 14, 2020 request to provide information regarding the Office's transition to full time telework, status of patent and trademark filings and fee collections, and cost saving measures taken by the Office in response to the COVID-19 pandemic-related economic downturn. In particular, the letter was sent to Sen. Lindsey Graham (R-SC) and Dianne Feinstein (D-CA), Chairman and Ranking Member, respectively, of the Senate Committee on the Judiciary; Sen. Thom Tillis (R-NC) and Sen. Christopher Coons (D-DE), Chairman and Ranking Member, respectively, of the Senate Subcommittee on Intellectual Property; Rep. Jerrold Nadler (D-NY) and Rep. Jim Jordan (R-OH), Chairman and Ranking Member, resoectively, of the House Committee on the Judiciary; and Rep. Henry C. "Hank" Johnson, Jr. (D-GA) and Rep. Martha Roby (R-AL), Chairman and Ranking Member, respectively, of the House Subcommittee on Courts, Intellectual Property and the Internet.

With respect to the Office's transition to mandatory telework, Director Iancu noted that prior to the COVID-19 pandemic, about 88% of the USPTO's workforce had been working from home at least one day per week, and of the approximately 11,185 employees working from home at least one day per week, about 7,200 had been working from home full-time. On March 23, 2020, in response to guidance from federal, state, and local authorities, the USPTO announced that it would be operating under mandatory telework. Since transitioning to mandatory telework, Director Iancu noted that more than 14,000 USPTO employees and contractors use the Office's network, which was upgraded in January 2020, to connect to the campus daily from a remote location to perform their jobs. And using secure videoconferencing tools to conduct meetings, patent and trademark applicant interviews, and hearings before both the Patent and Trademark Trial and Appeal Boards, the USPTO has had more than 1,200 virtual meetings with more than 6,600 participants per day since moving to mandatory telework.

Acknowledging that the transition to mandatory telework "involved a tremendous amount of change for our employees," who "were facing challenges at home and new challenges at work," the Office provided "reasonable relief to production requirements for patent and trademark examiners during the first weeks of the transition when additional leave for federal employees had not yet been enacted into law." And for the "very limited number" of employees who still needed to report to USPTO headquarters, the Office established strict safety protocols, limited access and the number of employees at various critical IT centers, and provided those employees with personal protective equipment such as masks and gloves.

Turning to the status of trademark filings and fee collections, Director Iancu informed the Chairmen and Ranking Members that USPTO trademark activity traditionally correlates with the overall state of the economy, and given the domestic and global economic conditions resulting from the COVID-19 pandemic, trademark revenues had not surprisingly been lower than planned for FY 2020. The lower revenues were the result of a 4.4% drop in Q2 trademark application filings for FY 2020 as compared with FY 2019. The potentially good news was that preliminary data for May 1-14, 2020 showed a 2.9% increase in trademark application filings as compared to the same period in May 2019.

As for trademark revenue, year-to-date fee collections (including preliminary data through May 2020) were down 9.2% from projected revenue of $369 million to collected revenue of approximately $335 million. Although Director Iancu noted that May fee collections were stronger than those for April (when collected revenue was 9.4% lower than the Office's projection), he indicated that "it is too soon to say that this is a sign of continued recovery." The Director also suggested that the Office anticipates revenue for FY 2021 to be lower than previously estimated. As a result of the drop in trademark revenue, the USPTO has been using its trademark operating reserve to satisfy trademark obligations and expenditures, with the current $95 million trademark reserve capable of funding the Office's trademark operations for 13 weeks in the absence of additional fee collections.

With respect to patent filings and fee collections, Director Iancu noted that while patent activity is also correlated with the overall state of the economy, "the impacts of economic shocks on patent application filings and fee collections usually take longer to manifest than with trademarks." While Q1 patent application filings for FY 2020 were 4.7% higher as compared with FY 2019, Q2 filings were down 2.9% in FY 2020 as compared with FY 2019. In April 2020, filings were 3.7% lower as compared with April 2019, and preliminary data for May 1-14, 2020, indicated that filings were 3.8% lower than the same period in 2019.

As for patent fee collections, the Office averaged $11.8 million in collections per day during the first half of May 2020, which was 7% lower than projected daily collections of $12.7 million. And through May 2020, the patent operating reserve was $356 million, which the Director indicated could fund patent operations for approximately six weeks in the absence of additional fee collections. He also noted, however, that "a prolonged economic downturn could force us to draw down the reserve below our published minimum of $300 million to unsustainable levels, which is less than four weeks of operations funding." The Director stated that "[t]hese trends are troubling and the current economic uncertainty could lead us to revise FY 2020 and FY 2021 revenue estimates further downward."

The Director also noted that while the USPTO promptly provided relief to intellectual property owners under The Coronavirus Aid, Relief, and Economic Security Act (CARES Act) "to help mitigate U.S. intellectual property loss and abandonment during these uncertain times," because Congress did not allocate additional funds to the USPTO, "any fee relief provided by the USPTO to applicants is funded by our reserves." The Director informed the Chairmen and Ranking Members that "[t]he current relief has begun to impact patent revenues." And according to the Director, it may take some time to fully understand the ultimate impact of such relief, when the Office will have a better grasp as to "how much this reduced revenue is attributable to a general reduction in patent application and patent maintenance activity due to the economic downturn (in which case it will never be paid) and how much is attributable to individuals simply deferring fee payments to a later date (in which case it will ultimately be paid)."

The Director closed his letter to the Chairmen and Ranking Members by pointing out that "additional funds may be needed to supplement the USPTO's internal reserves and support operations," and suggesting that Congress could make available to the Office user fees and surcharges previously collected by the Office between 1990 and 2011, which the USPTO does not currently have the authority to spend.

Posted at 11:59 PM in Patent Office Rules & Procedures | Permalink | Comments (3)

June 14, 2020

USPTO Announces Extension for Petitioning for Restoration of Right of Priority or Benefit

Impact of COVID-19 Pandemic on Patent Offices – June 14 Update

By Donald Zuhn --

In a notice posted on its website on Thursday, June 11, the U.S. Patent and Trademark Office announced that it was extending the time period for petitioning for certain rights of priority or benefit, as well as waiving the corresponding petition fee. As the result of the President's declaration on March 13, 2020 of a national emergency under the National Emergencies Act due to the COVID-19 pandemic, the notice indicates that USPTO Director Andrei Iancu "determined that the emergency prejudiced the rights of applicants, patent owners, or others appearing before the USPTO in patent matters and may have prevented them from filing documents or fees with the Office," and that the effects of the COVID-19 pandemic created an extraordinary situation for affected patent applicants and patentees. Therefore, the USPTO, pursuant to the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) and 37 C.F.R. § 1.183, is providing an extension for petitioning for the restoration of certain rights of priority or benefit.

The notice explains that to be entitled to a claim of priority to or benefit of a prior-filed foreign or provisional application, an application seeking priority or benefit must be filed within twelve months (or six months in the case of a design application claiming foreign priority) of the prior-filed foreign or provisional application. After that period expires, U.S. patent law allows an applicant to two more months to file an application seeking priority or benefit along with a petition for restoration of the right to claim priority to or benefit of a prior-filed foreign or provisional application under 37 C.F.R. §§ 1.55(c) or 1.78(b), provided that the delay in filing the application seeking priority or benefit was unintentional.

The notice extends the two-month period described above such that for certain nonprovisional applications claiming the benefit of a prior-filed foreign application under 35 U.S.C. § 119(a) or claiming the benefit of a prior-filed provisional application under 35 U.S.C. § 119(e), the two-month period under §§ 119(a) or 119(e) will run until the later of July 31, 2020, or the expiration of the two-month period set forth in §§ 119(a) or 119(e). The extension provided by the notice only applies to nonprovisional applications for which the 12-month time period under 35 U.S.C. §§ 119(a) or 119(e) ended or will end between March 27, 2020, and July 30, 2020, inclusive of both dates, and provided that the nonprovisional application seeking priority of a prior-filed foreign or provisional application is accompanied by either a petition under 37 C.F.R. § 1.55(c) or a petition under 37 C.F.R. § 1.78(b), and a statement that the failure to timely file the application was due to the COVID-19 outbreak as defined in the Office's notice of April 28, 2020. The notice also indicates that if the above requirements are met, the Office will waive the petition fee under 37 C.F.R. § 1.17(m) (currently $2,000 for large entities) for the petition under 37 C.F.R. § 1.55(c) or § 1.78(b).

As we reported with respect to the Office's notice of April 28, 2020, the Office defines a delay in filing or payment as being "due to the COVID-19 outbreak":

[I]f a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

(see "USPTO Announces Further Extension of Certain Patent Deadlines").

In addition to the relief described above for certain nonprovisional applications claiming the benefit of a prior-filed foreign or provisional application under 35 U.S.C. §§ 119(e) or 119(a), the Office is also providing some relief for certain International applications in which a petition under 37 C.F.R. § 1.452 has been filed to restore the right of priority. In particular, with respect to International applications for which the time period for filing the International application ended or will end between March 27, 2020, and July 30, 2020, inclusive of both dates, if the application is filed within the two-month period set forth in 37 C.F.R. § 1.452, and is accompanied by a petition under 37 C.F.R. § 1.452 and a statement that the failure to timely file the application was due to the COVID-19 outbreak as defined in the Office's notice of April 28, 2020, the Office will waive the petition fee under 37 C.F.R. § 1.17(m).

The notice advises applicants who file a petition under 37 C.F.R. §§ 1.55(c), 1.78(b), or 1.452 in accordance with the above provisions via the USPTO's patent electronic filing systems (EFS-Web or Patent Center) to use document code PET.RELIEF for the petition. The Office also highly recommends that applicants use form PTO/SB/449 to make the required statement that the delay in filing was due to the COVID-19 outbreak.

Comments and inquiries regarding the notice can be directed by e-mail to [email protected] or by telephone (if e-mail submission of comments is not feasible) to the Office of Patent Legal Administration at 571-272-7704.

For additional information regarding this and other related topics, please see:

Posted at 11:59 PM in Patent Office Rules & Procedures | Permalink | Comments (1)

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