PTAB/USPTO Update - August 2023

• David Cavanaugh, Jason Kipnis, Heather Petruzzi, Brian Lambson, Akkad Moussa, Alexander Nemtzow, Gilbert Smolenski
• 8.7.2023

USPTO News

• On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset.

• On July 24, the USPTO announced updated procedures for the interim Director Review of PTAB decisions. Notable changes include (a) retiring the Precedential Opinion Panel (POP), (b) expanding Director Review to decisions on institution in America Invents Act (AIA) proceedings, (c) creating a new Appeal Review Panel to review PTAB appeal decision, (d) creating an Advisory Committee to provide recommendations to the Director on whether review should be instituted, and (e) creating a new Delegated Rehearing Panel to which the Director may delegate review.   

• On July 26, USPTO Director Kathi Vidal testified before the Senate Judiciary Subcommittee on Intellectual Property on “Oversight of the United States Patent and Trademark Office.” In her testimony, Director Vidal (a) highlighted the USPTO’s focus on artificial intelligence, as related to both patent and copyright protections, (b) called for stronger global enforcement of IP rights, and (c) reemphasized her commitment to working with other federal agencies to leverage IP rights to catalyze US economic competitiveness and national security. A full video of the hearing and Director Vidal’s testimony is available on the Senate Judiciary Committee’s website.  

Notices, Guidance, and Requests

• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Response to Office Action and Voluntary Amendment Forms, 88 FR 42699 (July 3, 2023) (requesting comments by September 1, 2023, regarding the information collection on PTAB appeals ahead of submission to OMB)

• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Trial and Appeal Board (PTAB) Appeals, 88 FR 42699 (July 3, 2023) (requesting comments by September 1, 2023, regarding the information collection on PTAB appeals ahead of submission to OMB)

• Trademarks for Humanity Awards Competition Program, 88 FR 47484 (July 24, 2023) (extending to September 15, 2023, the deadline to apply for a pilot awards program to promote and incentivize the use of trademarks in the connection with humanitarian efforts) 

• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Global Intellectual Property Academy (GIPA) Surveys, 88 FR 48209 (July 26, 2023) (requesting comments by September 25, 2023, regarding the information collection on the Global Intellectual Property Academy ahead of submission to OMB)

• Performance Review Board, 88 FR 52131 (August 7, 2023) (announcing the appointment of persons to serve as members of the USPTO’s Performance Review Board)

Final Rules

• Changes to the Representation of Others Before the United States Patent and Trademark Office, 88 FR 45078 (July 14, 2023) (effective August 14, 2023, amending the rules of practice in patent cases to formalize the Diversion Pilot Program for practitioners whose health issue or law practice management issues resulted in minor misconduct)

• International Trademark Classification Changes, 88 FR 50767 (August 2, 2023) (effective January 1, 2024, incorporating the trademark classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks)

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

Proposed Legislation

• Commerce, Justice, Science, and Related Agencies Appropriations Act, 2024 (bill providing the FY2024 appropriations to several federal agencies, including the USPTO)

• Increasing Prescription Drug Competition Act (bill introduced by Rep. Slotkin (D-MI) to amend the Food, Drug, and Cosmetic Act to prevent the use of patents, trade secrets, or other IP to inhibit competition by limiting the remedy for infringement to damages)

• Trademark Licensing Protection Act of 2023 (bill introduced by Sen. King (I-ME) to amend the Trademark Act to provide that the licensing of a mark for use by a related company may not be construed as establishing an employment relationship)

PTAB Decisions

• New Precedential PTAB Decisions

  • In announcing the retirement of the Precedential Opinion Panel, the Director de-designated Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2018-00914, Paper 38, from precedential status.

• New Informative PTAB Decisions

  • There are no new informative PTAB decisions.

• Director Review Decisions

  • Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc. (PGR2021-00088 & PGR2022-00025), (Director finding that the Board in stating that the Petitioner may not rely on results from a reference as evidence of inherent properties where the reference itself is not prior art, vacating the PTAB’s decision denying institution, and remanding further proceedings)

  • Keysight Technologies, Inc. v. Centripetal Networks, Inc. (IPR2022-01421), (Director granting sua sponte director review of PTAB’s discretionary denial of institution)

New Requests for POP Review

• There are no noteworthy POP Review Requests from July 2023.