USPTO Leadership

• On April 13, Kathi Vidal was sworn in as the new Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). Director Vidal offered remarks at her swearing-in and the USPTO issued a press release welcoming her to the Office.

USPTO News

• The USPTO made changes to the interim process for Director review webpage to increase transparency, including by adding a new webpage detailing the status of pending Director review requests.
• On April 21, the USPTO issued a report summarizing public views received in response to a request for comment on the article of manufacture requirement of 35 U.S.C. § 171 for design patents. Director Vidal wrote a blog post on the Director’s Form discussing the summary. She also discussed design patents more generally in her remarks for the 15th Annual Design Day.
• On April 27, Director Vidal, Acting Commissioner for Patents Andrew Faile, and Chief Information Officer Jamie Holcombe wrote a blog post on the Director’s Forum discussing the switch to patent filings in DOCX format and a new temporary PDF submission option (see Notices, Guidance, and Requests below).
• The PTAB Legal Experience and Advancement Program (LEAP) will host a Preparing for your America Invents Act (AIA) argument webinar on Friday, May 6 and AIA oral arguments encore webinar on Friday, May 20.
• The USPTO will host its virtual Trade Secrets Symposium 2022: Trending cross-border issues on Wednesday, May 11 and Thursday, May 12. Registration is available online.

Notices, Guidance, and Requests

• Filing Patent Applications in DOCX Format, 87 Fed. Reg. 82 (Apr. 29, 2022) [“[P]roviding applicants with the option, on a temporary basis, to submit an applicant-generated PDF version of the application along with the DOCX file(s) when filing an application in Patent Center.”].
• Expanded Collaborative Search Pilot Program—New Combined Petition Option For Participation; Withdrawal, 87 Fed. Reg. 70 (Apr. 12, 2022) [withdrawing prior notice published Mach 29, 2022 at 87 Fed. Reg 60].
• Termination of Global Patent Prosecution Highway With Rospatent, 87 Fed. Reg. 64 (Apr. 4, 2022). 

Final Rules

• There are no new final rules.

Interim Rules

• There are no interim rules.

Proposed Rules

• There are no proposed rules.

Legislation

• On April 27, the House of Representatives passed the Patents for Humanity Act of 2021 (H.R. 5796), which would codify the USPTO’s Patents for Humanity competition. The competition recognizes inventions that address global humanitarian issues and offers accelerated proceedings at the USPTO for award recipients. 

PTAB Decisions

• New Precedential PTAB Decisions

• There are no new precedential PTAB decisions.

• New Informative PTAB Decisions

• There are no new informative PTAB decisions.

New Requests for POP Review

• PNC Bank, NA v. U.S. Services Auto. Ass’n (IPR2021-01381, IPR2021-01399) [Requesting POP review of Institution Decision presenting the question of “[w]hether the Board erred in denying institution of inter partes review when it applied an incorrect legal standard to find written description support for the claimed subject matter because ‘a person of ordinary skill in the art would have understood’ the genus from disclosure of only a single enumerated species, contrary to controlling Federal Circuit precedent confirming that ‘the four corners’ of the specification must demonstrate that ‘the inventor actually invented the invention claimed.” (emphasis in original)].
• Samsung Elecs. Co., Ltd. v. LED Wafer Sols. LLC (IPR2021-01506) [Requesting POP review of Institution Decision presenting the question of “[w]hen the challenged claim (i) only differs from the prior art based on a limitation that is admitted as prior art by the challenged patent and lacks any significance to any inventive aspects of the purported invention, (ii) there is unchallenged expert testimony that the challenged claim only unites old elements with no change in their respective functions, and (iii) the prior art combination would not yield any unexpected result, must the Board find a reasonable likelihood that Petitioner would prevail in demonstrating obviousness?”].
• Google, LLC v. EcoFactor, Inc. (IPR2021-01578) [Requesting POP review of Institution Decision presenting the questions of “(1) Whether portions of the Board’s precedential decision in Fintiv relating to co-pending investigations by the International Trade Commission (extending from page 8, line 5 to page 9, line 6) were invalidly issued as a rule, or are dicta in an adjudication, and thus non-binding? (2) Whether portions of the Board’s precedential decision in Fintiv relating to co-pending investigations by the International Trade Commission should be designated non-precedential? (3) Whether portions of the Board’s precedential decision in Fintiv relating to co-pending investigations by the International Trade Commission, even if they were binding, require the Board to determine first ‘whether the patentability disputes before the ITC will resolve all or substantially all of the patentability disputes between the parties’ (Fintiv, p. 9), and then to determine whether there is any specific, concrete reason why it will be difficult for the patent owner to maintain an action for infringement in district court after an ITC determination of invalidity? (4) Whether portions of the Board’s precedential decision in Fintiv relating to co-pending investigations by the International Trade Commission should be replaced with a policy that the Board should not consider the timing of ITC investigations when applying Fintiv?”].