USPTO News

• On September 9, 2021, Senators Patrick Leahy and Thom Tillis wrote a letter to Acting Director Andrew Hirshfeld requesting that the USPTO “take steps to reduce patent applicants’ making inappropriate conflicting statements in submissions to the PTO and other federal agencies.”
• On September 10, 2021, pursuant to Executive Order 14036, the Food and Drug Administration’s (FDA) Acting Commissioner of Food and Drugs Dr. Janet Woodcock wrote a letter to Acting Director Hirshfeld “in the hope of further developing the … FDA[’s] engagement with the [USPTO].” The letter recognized that “patents are critical to fostering innovation,” but also expressed concern that certain practices before the USPTO could “forestall access to lower cost medicines.” The letter concluded with some suggestions and questions to address that concern.
• The USPTO posted an on-demand video training and is offering virtual trainings on how to file DOCX documents.
• In a guest blog post on the USPTO’s Director’s Forum, Acting Commissioner for Patents Andrew Faile discussed how to ensure the validity of micro entity certifications in patent application filings.

Legislation

• On September 21, 2021, Senators Patrick Leahy and Thomas Tillis introduced two bills: the Unleashing American Innovators Act of 2021 and the Pride in Patent Ownership Act. According to Senator Leahy’s press release, the Unleashing American Innovators Act of 2021 is “aimed at improving the participation of Americans from all backgrounds in the patent system,” while the Pride in Patent Ownership Act would “require[] patent owners to disclose their identity with the Patent Office when a patent issues and whenever it changes hands so that the public can easily look up a patent’s owner and the owner’s ultimate parent entity.”
• On September 26, 2021, Representatives Jerrold Nadler, Darrell Issa, Henry Johnson, and Ben Cline introduced the SHOP SAFE Act “to amend the Trademark Act of 1946 to provide for contributory liability for certain electronic commerce platforms for use of a counterfeit mark by a third party on such platforms, and for other purposes.”
• On September 29, 2021, Senators Patrick Leahy and John Cornyn introduced the Restoring the America Invents Act, which addresses numerous topics, including Director review of final PTAB decisions, the scope of prior art and grounds for challenge in IPR proceedings, discretionary institution denials, the one-year time bar for filing IPR petitions, considerations for issuing a stay of civil actions pending post-grant proceedings and interlocutory appeals relating to the same, multiple proceedings involving the same patent before the Office, IPR estoppel, claim amendments in post-grant proceedings, timing for rehearing decisions, and standing for appeals from the PTAB.

Notices, Guidance, and Requests

• The USPTO is still seeking input on the interim Director review process following the Supreme Court’s decision in United States v. Arthrex, Inc. Input may be submitted to [email protected].
• Administrative Updates to the General Requirements Bulletin for Admission to the Examination for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 86 Fed. Reg. 181 (September 22, 2021) (“provid[ing] information relating to the implementation of … three proposals” “to change the criteria for sitting for the registration examination: (1) Adding common Category B degrees to Category A, (2) accepting advanced degrees (i.e., master’s and doctor of philosophy degrees) under Category A, and (3) accepting a combination of core sciences under Category B, Options 2 and 4, so long as one of the core science courses has a lab component”).
• Extension of the Motion To Amend Pilot Program in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 86 Fed. Reg. 177 (September 16, 2021) (extending the Motion to Amend (“MTA”) Pilot Program until September 16, 2022)
• Modification of COVID–19 Prioritized Examination Pilot Program, 86 Fed. Reg. 169 (September 3, 2021) (“modifying the COVID–19 Prioritized Examination Pilot Program to accept applications until December 31, 2021”).
• Patent Eligibility Jurisprudence Study, 86 Fed. Reg. 169 (September 3, 2021) [Written comment period closes October 15, 2021] (“extending the period for public comment” for the “July 9, 2021 … request for public input on a study it is conducting on the current state of patent eligibility jurisprudence in the United States and on how that jurisprudence has impacted investment and innovation” “until October 15, 2021”).

Final Rules

• There are no final rules.

Interim Rules

• 2021 Increase of the Annual Limit on Accepted Requests for Track One Prioritized Examination, 86 Fed. Reg. 183 (September 24, 2021) [Written comment period closes November 23, 2021].

Proposed Rules

• There are no proposed rules.

PTAB Decisions

• New Precedential PTAB Decisions

• There are no new informative PTAB decisions.

• New Informative PTAB Decisions

• There are no new informative PTAB decisions.

New Requests for POP Review

There were 6 new requests for POP review, including, for example:

• Chemco Sys., LP v. RDP Techs., Inc. (IPR2019-01563) [Notice of Receipt of POP Request issued September 7, 2021] [Petitioner requests review of Rehearing Decision, presenting the question of whether decisions on rehearing under 37 C.F.R. § 42.71(d) to modify a Final Written Decision can be “limited to issues that would result in full reversals of a decision” rather than all “properly presented requests” for modification.]
• Apple Inv. V. Corephotonics Ltd. (IPR2020-00489) [Notice of Receipt of POP Request issued September 7, 2021] [Petitioner requests review of Final Written Decision, presenting the questions of (1) “[w]hether the Board must reverse given the panel’s reliance on one party’s representations as to the state of the art made in briefing and at oral hearing, when mere days after securing a favorable result before this tribunal, the party made contradictory admissions in its briefing before another tribunal”, (2) “[w]hether the Board may, consistent with its judicial role and requirements of due process, announce sua sponte in its Decision an inapposite exclusionary rule drawn from prosecution history estoppel/claim construction and apply same to deem ‘unrelated’ two US patent documents … that published/issued from the same provisional application and which each claim priority of, and incorporate by reference, the very same provisional application”, and (3) “[w]hether the Board, consistent with its judicial role and requirements of due process and without opportunity to be heard pursuant to the Board’s precedential decision in Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, IPR2018-00816, paper 19 (2019) and corresponding provisions of Trial Practice Guide, may simply deny (without reasoned basis necessary for meaningful appellate review of agency decisionmaking) Petitioner’s request for a conference call to demonstrate good cause to admit a new evidentiary exhibit.”]
• Global Tel*Link Corp. v. HLFIP Holding, Inc. (IPR2021-00444) [Notice of Receipt of POP Request issued September 7, 2021] [Petitioner requests review of Institution Decision, presenting the question of “[w]hether a panel should be permitted to deny institution under Section 314(a) and Fintiv based solely on copending litigation to which petitioner is not a party, and where patent owner has continually sought to delay the litigation and trial.”]
• Mercedes-Benz USA, LLC v. Stragent, LLC (IPR2021-00425, -00426, -00427) [Notice of Receipt of POP Request issued September 8, 2021] [Petitioner requests review of Institution Decision, presenting the questions of (1) whether “deni[al of] institution pursuant to the discretionary powers granted under 35 U.S.C. § 325(d)” is proper where “multiple interviews” were held during prosecution and the references relied upon in the Petition were listed on an IDS but “were [not] discussed by either applicant or Examiner, nor were they the subject of any rejection” and (2) whether denial of institution pursuant to 35 U.S.C. § 325(d) is proper where a terminal disclaimer was filed between challenged claims and another patent with similar, but not identical claims that were previously found to be invalid.]
• Intel Corp. v. Koninklijke Philips N.V. (IPR2021-00328) [Notice of Receipt of POP Request issued September 14, 2021] [Petitioner requests review of Institution Decision, presenting the questions of (1) “[w]hether 37 C.F.R. § 42.71(c) is unconstitutional to the extent it specifies that a panel, and thus not the Director, decides rehearing requests and to the extent that it requires deference to the original panel when the Director re-hears a decision whether to institute IPR”, and (2) “[w]hether the six-factor test set forth in Apple Inc. v Fintiv, Inc., IPR2020-00019 Paper No. 11 (PTAB Mar. 20, 2020) (precedential) should apply to IPR proceedings involving a parallel ITC investigation, and if so, whether additional or different factors should apply in such instances and whether this modified Fintiv framework should consider all related co-pending matters, including those pending at the Board and in district court.”]

Requests for Director Review

• Parties have submitted 53 requests for Director review under the USPTO’s interim process in light of the Supreme Court’s decision in U.S. v. Arthrex. Of those requests, a total of 20 have been denied and 33 are pending. No request has been granted.