USPTO Leadership

• On November 12, USPTO Director Kathi Vidal announced in a post on LinkedIn and a letter to friends and colleagues that she would be stepping down the second week in December. Deputy Director Derrick Brent will take over until a new Director is appointed.
• On November 18, the USPTO announced the appointment of Daniel Modricker as Director of the USPTO’s Northern New England Community Outreach Office, which is temporarily located at the University of New Hampshire in Durham.
• In a November 22, 2024 post on the Director’s Blog, Director Kathi Vidal reflected on proceedings before the Patent Trial and Appeal Board.

USPTO News

• On November 15, 2024 the USPTO announced a final rule setting new trademark fees, effective January 18, 2025.
• On November 20, 2024 the USPTO announced a final rule setting new patent fees, effective January 18, 2025. According to the announcement, the final rule differs from the fees in the April 3, 2024 notice of proposed rulemaking and does not implement the proposals for a new fee for the After Final Consideration Pilot 2.0 (the Pilot is set to expire on December 14, 2024), an increase to the fee for patent term adjustment, new tiered fees for terminal disclaimers, and a new fee for filing third and fourth requests for continued examination. The rule also differs by revising the timing and amount for new fees for continuation applications and reducing the proposed increase in fees for patent term extension.
• On November 20, 2024, USPTO Historian Rebekah Oakes authored a post on the Director’s Blog thanking inventors for innovations related to preparing a Thanksgiving meal.

Notices

• Manual of Patent Examining Procedure, Ninth Edition, Revision January 2024, 89 FR 88737 (November 8, 2024) [providing notice of revisions to Manual of Patent Examining Procedure (MPEP) chapters 200-700, 900-1600, 1800, and 2100-2900], including to incorporate the PTO’s guidance relating to assessing enablement in view of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024), hints for compliance with WIPO Standard ST.26 regarding sequence listings, language to clarify that prior art references need to be analogous art to the claimed invention, not to each other, language to clarify what Office personnel must consider to establish and maintain a prima facie case of obviousness, the PTO’s guidance relating to the new design patent practitioner bar, the PTO’s guidance regarding computer-generated images in design patents, and case law requiring inventors to be natural persons.
• United States Postal Service Interruption and Emergency Under 35 U.S.C. 21(a), 1528 OG 541 (November 26, 2024 [“[D]esignating the interruption in service of the United States Postal Service (USPS) in the areas affected by Hurricane Milton in Florida, beginning on Tuesday, October 8, 2024, as a postal service interruption and emergency within the meaning of 35 U.S.C. 21(a) and 37 CFR 1.l0(i) and 2.195(d).”].
• United States Postal Service Interruption and Emergency Under 35 U.S.C. 21(a), 1528 OG 123 (November 5, 2024) [“[D]esignating the interruption in service of the United States Postal Service (USPS) in the areas affected by Hurricane Helene in Florida, Georgia, North Carolina, South Carolina, and Tennessee, beginning on Wednesday, September 25, 2024, as a postal service interruption and emergency within the meaning of 35 U.S.C. 21(a) and 37 CFR 1.10(i) and 2.195(d).”].

Final Rules

• Setting and Adjusting Trademark Fees During Fiscal Year 2025, 89 FR 91062 (November 18, 2024) [Effective January 18, 2025].
• Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 (November 20, 2024) [Effective January 19, 2025].

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

Legislation

• On November 8, Representatives Darrell Issa (R-CA) and Scott Fitzgerald (R-WI) introduced the TRIPS Waivers Act to “require the submission of a report to Congress before the negotiation of any international agreement relating to an intellectual property right, and for other purposes.”
• On November 14, the Senate Committee on the Judiciary reported the IDEA Act favorably without amendment, and the bill will move forward for a full vote. The Act has been placed on the Senate Legislative Calendar under General Orders on November 18. The Act would “require the voluntary collection of demographic information for patent inventors, and for other purposes.”
• On November 21, the Senate Committee on the Judiciary reported the PREVAIL Act favorably with amendment, and the bill will move forward for a full vote. The Act proposes changes to the Patent Trial and Appeal Board, inter partes review proceedings, and post-grant review proceedings, including provisions regarding standing, burdens of proof, discretionary denials of institution, joinder, and the intersection between such proceedings and parallel proceedings before U.S. District Courts and the International Trade Commission.
• On November 21, the No Stolen Trademarks Honored in America Act of 2023 was reported to the President. The bill would prohibit U.S. courts and executive agencies from enforcing or validating trademarks that were confiscated by the Cuban government.

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
  • Luminex International Co., Ltd. v. Signify Holdings B.V., IPR2024-00101
    • Decision subject to Director Review – Paper 10 (May 9, 2024) [Decision Denying Institution on the basis “that § 315(b) bars institution because Petitioner filed the Petition more than one year after the date on which a real party in interest was served with a complaint alleging infringement of the ’336 patent.”]
    • Order Granting Director Review, Vacating the Decision Denying Institution, and Remanding to the Patent Trial and Appear Board for Further Proceedings – Paper 12 (August 20, 2024) [determining that institution of inter partes review was not barred under 35 U.S.C. § 315(b) because Menard, Inc. – which had been served with a complaint alleging infringement of the subject patent and had subsequently filed a third party complaint for indemnification against Petitioner – was neither a real party in interest nor a privy of Petitioner, and remanding “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a)”]
    • Director Review Supplemental Opinion – Paper 20 (November 21, 2024) [“[S]et[ting] forth [Director Vidal’s] analysis and reasons for the determinations in [the] Director Review Order of August 20, 2024,” including determining that “a customer-indemnitee’s request for indemnification by a manufacturer-indemnitor under a standard, non-exclusive, manufacturer-customer indemnification agreement relating to patent infringement” is not, by itself, “sufficient to support a finding of real party in interest and trigger the one-year time bar” and that such agreement is not, by itself, sufficient to support a finding of privity between the manufacturer and customer].