USPTO Leadership

• In May, USPTO Director Kathi Vidal delivered official remarks at the International Trademark Association (INTA) Annual Convention, the Patent Public Advisory Committee (PPAC), and the Advanced Research Projects Agency–Energy (ARPA-E) Energy Innovation Summit. 

USPTO News

• On May 25, the USPTO fully reopened all locations to employees and resumed some in-person events and appointments for the public.
• The USPTO adopted an interim process for PTAB decision circulation and internal PTAB review modeled after similar processes adopted by the Federal Circuit. According to the USPTO, the interim process makes clear that the Director is not involved, pre-issuance, in directing or otherwise influencing panel decisions, and the PTAB panel has final authority and responsibility for the content of a decision. The USPTO also updated its interim process for Director review to make clear that although the USPTO does not accept requests for Director review of institution decisions in AIA proceedings, the Director has always retained and continues to retain the authority to review such decisions sua sponte after issuance (at the Director’s discretion).
• The USPTO announced the recipients of the 2021 Patent Pro Bono Achievement Certificate, which recognizes individuals and law firms that have volunteered significant time and effort to help financially under-resourced inventors and small businesses.
• The USPTO began publishing a new webpage entitled “Inclusive innovation”, which provides a centralized location for information on the USPTO’s efforts to broaden participation in innovation.

USPTO Engagement in Russia 

• On June 1, the USPTO notified the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) of the USPTO’s intent to terminate their agreement concerning Rospatent functioning as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications received by the USPTO as a Receiving Office under the Patent Cooperation Treaty (PCT). The termination will be effective December 1, 2022.
• The US Department of Treasury’s Office of Foreign Assets Control (OFAC) authorized certain intellectual property-related transactions in Russia, including the filing and prosecution of any application to obtain a patent, trademark, or copyright, as well as the payment of renewal and maintenance fees.

Notices, Guidance, and Requests

• Requests for Nominations: Patent and Trademark Public Advisory Committees, 87 Fed. Reg. 31861 (May 25, 2022) [Nominations due by July 1, 2022] (USPTO is seeking nominations for up to three members of its Patent Public Advisory Committee (PPAC) to advise the Director of the USPTO on patent policy and for up to three members of its Trademark Public Advisory Committee (TPAC) to advise the Director on trademark policy).
• Electronic Trademark Registration Certificates, 87 Fed. Reg. 25623 (original notice) (May 2, 2022) and 87 Fed. Reg. 31533 (May 24, 2022) (follow-up notice) (Pursuant to these notices, the USPTO began issuing electronic trademark registration certificates on May 24).

Final Rules

• There are no new final rules.

Interim Rules

• There are no interim rules.

Proposed Rules

• Establishing Permanent Electronic Filing for Patent Term Extension Applications, 87 Fed. Reg. 27043 (May 6, 2022) [Comments period closes July 5, 2022] (proposing to amend the Rules of Practice in Patent Cases to require that patent term extension (PTE) applications, interim PTE applications, and any related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system (EFS-Web or Patent Center)).

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

• SolarEdge Technologies Ltd. v. Koolbridge Solar, Inc. (IPR2022-00008 et al.) [Requesting POP review of Institution Decision, presenting following questions:
  • (1) “Whether the panel erred in denying institution of parallel petitions where the parties’ course of dealings show mutual intent to resolve validity at the PTAB following a dismissal without prejudice of a district court litigation, and where the parallel petitions rely on different sets of prior art, each of which may be most relevant depending on the different possible claim constructions the Board may eventually adopt.”
  • (2) “Whether the Consolidated Trial Practice Guide’s (CTPG) guidance (see CTPG at 59-61) compelling petitioners to rank parallel petitions before the parties join on issues of importance (e.g., claim construction, priority, and public availability of references) facilitates “trial by ambush” by allowing patent owners to use petitioners’ ranking as a roadmap for its own positions, and is contrary to due process.”
  • (3) “Whether the CTPG’s guidance (see CTPG at 59-61) that disproportionately weighs the number of parallel petitions against other more important factors—by stating “one petition should be sufficient to challenge the claims of a patent in most situations,” “two petitions… should be rare,” and “the Board finds it unlikely that circumstances will arise where three or more petitions…will be appropriate”—is arbitrary or capricious in violation of the Administrative Procedure Act (APA) and due process.”
  • (4) “Whether the promulgation of the CTPG’s guidance on parallel petitions including compelling petitioners to rank petitions before the parties join on the issues (see CTPG at 59-61), or the Board’s reliance on such guidance in a decision denying institution of inter partes review, is a violation of the notice and comment requirements of the APA and due process.”
  • (5) “Whether the CTPG’s guidance on parallel petitions including compelling petitioners to rank petitions before the parties join on the issues (see CTPG at 59-61), or the Board’s reliance on such guidance in a decision denying institution of inter partes review, exceeds the Director’s authority under the America Invents Act (AIA), particularly 35 U.S.C. §§ 314, 316(a)(2), and 316(b), in violation of the APA.”] 
• Patent Quality Assurance, LLC v. VLSI Technology LLC (IPR2021-01229) [Requesting POP review of Institution Decision, presenting the questions of (1) whether the “Board should [institute IPRs filed by] entities formed after [a trial] verdict and facing no infringement threat” and (2) whether refiled expert declarations from other IPR proceedings are “inadmissible hearsay [that] should not be relied upon for purposes of institution.”]
• New requests for POP review were also filed in Esdec, Inc. et al. v. Unirac, Inc. (IPR2021-01566) and Infineon Technologies AG v. AmaTech Group Limited (IPR2022-00235 and IPR2022-00417). These requests are no longer pending.