USPTO News

• David Berdan has been appointed USPTO’s General Counsel. As General Counsel, Mr. Berdan will serve as the principal legal advisor to the Director. He will also supervise the Office of General Counsel and its three component offices: the Office of the Solicitor, the Office of General Law and the Office of Enrollment and Discipline.

• The PTAB introduced a new online form that allows individuals to submit an amicus request supporting or opposing a pending request for POP review in a particular case. Summaries of the currently pending requests for POP review are provided below.

• The 2020 Patent Public Advisory Committee (PPAC) Annual Report has been released. The report includes information on patent policies, goals, performance, budget, and user fees. It will be transmitted to the President, Secretary of Commerce and the judiciary committees of the Senate and House of Representatives within 60 days following the end of each fiscal year.

Notices, Guidance and Requests

• Development of a National Consumer Awareness Campaign on Combating the Trafficking in Counterfeit and Pirated Products, 85 Fed. Reg. 222 (November 17, 2020) [Written comments period closes January 4, 2021.]

• Secondary Trademark Infringement Liability in the E-Commerce Setting, 85 Fed. Reg. 220 (November 13, 2020) [Written comments period closes December 28, 2020.]

• Sovereign Immunity Study, 85 Fed. Reg. 215 (November 5, 2020) [Written comment period closes December 21, 2020.]

• Proposed Continuing Legal Education Guidelines, 85 Fed. Reg. 197 (October 9, 2020) [Written comment period closes January 7, 2021.]

Final Rules

• Trademark Fee Adjustment, 85 Fed. Reg. 222 (November 17, 2020) [Summary available here.]

• International Trademark Classification Changes, 85 Fed. Reg. 213 (November 3, 2020) [No summary provided.]

Interim Rules

• There are no new interim rules.

Proposed Rules

• Discretion to Institute Trials Before the Patent Trial and Appeal Board, 85 Fed. Reg. 223 (November 18, 2020) [Written comment period closed on December 3, 2020.]

• Changes to Representation of Others Before the United States Patent and Trademark Office, 45812–45834 (July 30, 2020) [Written comment period closed on September 28, 2020.]

• Trademark Fee Adjustment, 37040–37057 (June 19, 2020) [Written comment period closed on August 3, 2020.]

• PTAB Rules of Practice: Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 31728–31732 (May 27, 2020) [Written comment period closed on June 26, 2020.]

• Small Entity Government Use License Exception, 6476–6482 (February 5, 2020) [Written comment period closed on March 23, 2020.]

• Facilitating the Use of WIPO's ePCT System to Prepare International Applications for Filing with the United States Receiving Office, 85 Fed. Reg. 20 (January 30, 2020) [Written comment period closed on March 30, 2020.]

PTAB Decisions

• There are no new Precedential or Informative PTAB Decisions.

Pending Requests for POP Review

• Atlas Copco Tools and Assembly Systems LLC et al v. Wildcat Licensing WI LLC (IPR2020-00891 and IPR2020-00892) [Notification of Receipt of POP Request issued November 19, 2020] [Patent Owner requests rehearing of Institution Decisions, contending, inter alia, that the Board “rel[ied] on new theories not presented in the Petition, and inviting Petitioners to further develop these new theories during trial” and “fail[ed] to apply Advanced Bionics’ binding precedent … where, as here, it is undisputed that the ‘same or substantially the same art’ was previously presented to the Office and the Petition did not (nor even attempt to) show the Office erred.”]

• Intel Corporation v. VLSI Technology LLC (IPR2020-00112, IPR2020-00113, IPR2020-00114, IPR2020-00582, and IPR2020-00583) [Notification of Receipt of POP Request issued November 18, 2020] [Petitioner requests rehearing of Institution Decisions, presenting the questions of “[w]hether the Board erred in its precedential decisions in NHK and Fintiv, which together give the Board discretion to deny institution of inter partes review under 35 U.S.C. § 314(a) solely because parallel district court litigation is likely to resolve the patentability issue before the deadline for the Board’s Final Written Decision” and “[w]hether—as part of the Fintiv analysis—the Board must at least consider (a) the identity and prior conduct of the Patent Owner and (b) the likelihood that the validity of all claims challenged in the petition will ultimately be resolved in a district court trial.”]

• Samsung Electronics America, Inc. v. Kannuu Pty, Ltd. (IPR2020-00737 and IPR2020-00738) [Notification of Receipt of POP Request issued October 15, 2020] [Patent Owner requests rehearing of Institution Decisions, contending that “[Petitioner] is precluded from requesting review of [Patent Owner]’s patents in [the PTAB] because the parties entered into a valid and enforceable nondisclosure agreement (NDA) with a forum selection clause that requires that [Petitioner] bring any disputes relating to the NDA or transactions contemplated by the NDA—such contemplated transactions including [Petitioner]'s license of [Patent Owner]'s patents—in the courts of New York.”]