USPTO Guidance

•  On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the inventorship analysis “should focus on human contributions, as patents function to incentivize and reward human ingenuity.” The USPTO invites stakeholders to submit comments on the guidance by May 13, 2024, and indicates that it will revise or issue new guidance related to inventorship and AI as the law and technology continue to evolve.

• On February 27, the USPTO issued updated guidance for determining obviousness. The updated guidance focuses on post-KSR precedential cases of the Federal Circuit and is intended to clarify how the Supreme Court’s directives should be applied. The guidance “highlight[s] the requirement for a flexible approach to the obviousness determination” and “emphasizes the need for a reasoned explanation when reaching a conclusion that a claimed invention would have been obvious.”

USPTO Leadership

• On February 20, USPTO Deputy Director Derrick Brent delivered remarks at the 2024 AUTM Annual Meeting.

USPTO News

• The USPTO is seeking nominations for the 2024 National Medal of Technology and Innovation, which is the nation’s highest honor for technological achievement and is presented to recipients by the President of the United States. The deadline for nominations is May 3, 2024.

• On February 23, the USPTO announced plans to expand the number of Patent and Trademark Resource Centers (PTRCs) at Historically Black Colleges and Universities (HBCUs). PTRCs are part of a national network of public, state, and academic libraries designated by the USPTO to offer trademark and patent assistance to the public. Currently, four HBCU libraries have been designated as PTRCs. This month, Director Vidal issued letters to all HBCUs inviting each institution to consider becoming PTRCs to assist their local innovators.

Final Rules

• There are no new final rules.

Interim Rules

• There are no new interim rules.

Proposed Rules

• Expanding Opportunities To Appear Before the Patent Trial and Appeal Board, 89 Fed. Reg. 13017 (Feb. 21, 2014) (written comments due by May 21, 2024) [proposing to amend the rules of practice in AIA proceedings to expand the participation of non-registered practitioners who are recognized pro hac vice]

• Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 89 Fed. Reg. 15531 (March 4, 2024) (written comments due by May 3, 2024) [proposing to amend the rules governing amendment practice in AIA proceedings to make permanent certain provisions of the Office’s motion to amend pilot program (MTA pilot program) and to revise the rules that allocate burdens of persuasion in connection with motions to amend (MTAs).]

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 Director Review Decisions

  • DK Crown Holdings Inc. v. Diogenes Limited, IPR2023-00268              

    • Decision subject to Director Review – Paper 9 (August 11, 2023) [Institution Decision denying institution]

    • Order delegating Director Review to a Delegated Rehearing Panel – Paper 11 (November 7, 2023) [ordering review by an independent Delegated Rehearing Panel, selected from a pool of senior judges excluding those who issued the reviewed decision, to “review the fact-intensive issues presented in this case ... and to determine whether to grant rehearing”]

    • (NEW) Delegated Rehearing Panel Decision granting DRP Review, vacating decision denying institution, and remanding for further proceedings – Paper 14 (February 21, 2024) [vacating decision denying institution on the basis that “the Board misapprehended the meaning of the claim term ‘continuously’ and misapprehended both the Petitioner’s mapping of the claim to the prior art and the scope and content of the prior art.” The case is remanded to the original panel to reconsider institution in accordance with the Delegated Rehearing Panel decision.]