USPTO and the new Trump Administration

• New Acting Director of USPTO – On January 20, the same day Donald Trump was sworn in as president, Coke Morgan Stewart was sworn in as the Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director of the United States Patent and Trademark Office (USPTO). Ms. Stewart replaces Derrick Brent, who had assumed the role of Acting Director in mid-December 2024 when Director Kathi Vidal resigned and returned to private practice. 
  • Ms. Stewart can remain as Acting Director for 300 days (5 U.S.C. Sec. 3349a), so it is likely that the Administration will nominate a Director of the USPTO at a later date. Under the Federal Vacancies Reform Act of 1998, there is a general prohibition against an Acting Director concurrently being a nominee for Director.
  • A recent WilmerHale client alert provides further details on the transition.
• Return to in-person work – In accordance with President Trump’s Presidential Memorandum, Return to In-Person Work, the Department of Commerce, under which the USPTO sits, rescinded their remote work policy but listed the USPTO as part of an organizational exemption. Additionally, the return to in-person work policy does not supersede collective bargaining agreements. These may be factors that keep USPTO employees working remotely as employees of other agencies return to the office. The USPTO has not yet made an announcement about the return to in-person work policy.

USPTO News

• On January 17, then-Acting Director Derrick Brent published a blog post outlining the USPTO’s patent pendency goals. The post discusses several aspects of the agency’s multiyear plan to reduce patent pendency, including its focus on reducing pendency of first office actions by increasing the number sent, investment in artificial intelligence (AI) tools, and increased hiring and retention of examiners.
• On January 16, the USPTO released a report to Congress, as required by the Unleashing American Innovators Act of 2022 (UAIA), assessing the agency’s fee structure. The study looked at several areas including the potential impact on small and micro entities, whether fee structure changes are needed, and recommendations for administrative and legislative action. Pursuant to final rules announced in November, the USPTO’s new patent and trademark fees became effective on January 18.
• On January 15, the USPTO and the National Treasury Employees Union Chapter 243 (NTEU 243) signed a new collective bargaining agreement (CBA). The NTEU 243 represents approximately 1,303 non-professional employees across the agency including paralegals, IT specialists, IT project managers, customer service representatives, legal instrument examiners, budget analysts, and other support staff.
• On January 15, the USPTO announced that it had established a temporary Northern New England Community Outreach Office on the University of New Hampshire (UNH) campus in Durham, New Hampshire. The goal of the office is to support entrepreneurs and innovators in the New England area with resources and information to protect their intellectual property.
• On January 14, the USPTO announced a new Artificial Intelligence (AI) Strategy to guide the agency’s use of AI technology within USPTO operations and across the intellectual property (IP) ecosystem. The strategy is published here.
• On January 3, the 2024 recipients of the USTPO’s National Medal of Technology and Innovation (NMTI) were honored with a medal ceremony at the White House. The recipients were: 
  • Martin Cooper (Illinois Institute of Technology and Dyna LLC)
  • Jennifer A. Doudna (Innovative Genomics Institute)
  • Eric R. Fossum (Dartmouth College)
  • Paula T. Hammond (Massachusetts Institute of Technology)
  • Kristina M. Johnson (Johnson Energy Holdings, LLC)
  • Victor B. Lawrence (Bell Labs and Stevens Institute of Technology)
  • David R. Walt (Harvard Medical School)
  • Paul G. Yock (Stanford University)
  • Feng Zhang (Massachusetts Institute of Technology)
  • Moderna, Inc.
  • Pfizer, Inc.

Final Rules

• There are no new final rules

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

General Notices

• Request for Comments and Testimony on the World Intellectual Property Organization Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, 90 Fed. Reg. 5828 (Jan. 17, 2025) [Written comments due March 18, 2025; hybrid hearing will be held April 29, 2025] (requesting input from all interested parties on the World Intellectual Property Organization (WIPO) Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge adopted by WIPO Member States in Geneva, Switzerland on May 24, 2024)
  • See also Tribal Consultation: World Intellectual Property Organization Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, 90 Fed. Reg. 5827 (Jan. 17, 2025) [Virtual webinars will be held on March 19 and 27, 2025; written comments due April 28, 2025] (announcing a Tribal Consultation and request for written comments on the treaty)

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
  • Samsung Display Co., Ltd. v. Pictiva Displays International Ltd., IPR2024-00855
    • Decision denying institution and modifying a prior decision denying institution – Paper 13 (Brent, January 10, 2025) [maintaining the Board’s denial of institution under Fintiv, but modifying the Board’s analysis of Fintiv Factor 6; in its original analysis, the Board had found that the “complicated” factual circumstances surrounding a swear-behind issue favored resolution in District Court “where live testimony is the norm”; Acting Director Brent found this analysis to be erroneous for two reasons: First, the prior art reference in question was unambiguously prior art under § 102(b) so there was no swear-behind issue; Second, the Board “has rules and the tools” to engage in appropriate fact-finding, including the ability to allow live testimony, so it was erroneous to conclude that the District Court would be better suited for resolving the swear-behind issue]