On Dec. 18, 2020, the USPTO published a Final Rule regarding burdens of persuasion on motions to amend in AIA trial proceedings before the PTAB. According to the Final Rule, the patent owner has the burden of showing that a motion to amend complies with statutory and regulatory requirements for such a motion, and the petitioner has the burden of showing unpatentability of substitute claims proposed in a motion to amend.
PTO released new guidelines relating to AIA trial proceedings: (1) If PTAB institutes a review, trial will proceed on all challenged claims and on all asserted grounds of unpatentability; (2) provides automatic sur-replies; (3) eliminates the presumption that a genuine issue of material fact is viewed in light most favorable to petitioner for deciding institution; (4) forbids filing new evidence with a sur-reply, except for deposition transcripts of cross-exam of any reply witness. The rules do not apply retroactively.
On Oct. 28, 2020, the PTO issued a new examination guide regarding procedures for examining applications for generic.com terms, which are any combination of a generic term and generic top-level domain such as .com, .biz etc. The procedures were updated in light of the Supreme Court's Booking.com decision in June 2020.
On June 30, 2020, the U.S. Supreme Court held that the addition of ".com" to a generic term can create a protectable trademark. Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020). In affirming the Fourth Circuit's decision, the Court rejected the PTO's "nearly per se rule" that when a generic term is combined with a generic top-level domain the resulting combination is generic. Full text of the opinion is available here.
1. On May 8, 2020, PTO announced a new Prioritized Examination Pilot Program for small and micro entities without payment of the typical fees associated with other prioritized examination.
2. On May 8, 2020, PTO allowed filing of plant patent applications via EFS.
3. On May 6, 2020, PTO launched a web-based platform to identify patents that may be useful in technologies to combat COVD-19.
4. On May 5, 2020, PTO released a form to assist with making a statement of delay due to COVID-19.
On April 27, 2020, the PTO denied a request by Stephen Thaler to name DABUS, an artificial intelligence (AI) system that "invents", as the sole inventor in a patent application filing. In denying the request, the PTO relied on the statutory text ("whoever invents or discovers...may obtain a patent") and a court decision holding that only natural persons could be inventors under U.S. law.
On November 20, 2019, the USPTO published a new, consolidated edition of the AIA Trial Practice Guide. The updates include--institution of trial after SAS; use of sur-replies in lieu of observations; use of word counts; default protective order; sample scheduling order for derivation proceedings; and how parties may contact the Board to request an initial conference call.
Consolidated Edition is available here.
On January 4, 2019, the USPTO announced revised examination guidelines on Sections 101 and 112, evaluating subject matter eligibility and application of Section 112 to computer-implemented inventions, respectively. The guidelines go into effect on Jan. 7, 2019.
Under the guidelines, examiners are instructed to determine whether a patent claim is directed to a judicial exception under the first step of the U.S. Supreme Court's Alice/Mayo test and whether the abstract idea can be grouped as mathematical concepts, certain methods of organizing human activity, or mental processes. Examiners are to determine whether a claim recites a judicial exception and if the exception is integrated into a practical application. A claim that meets these conditions will be determined to be not directed to a judicial exception. On the other hand, a claim that recites a judicial exception, but is not integrated into a practical application, will be evaluated for inventive concept (Step 2B) to determine subject matter eligibility.
The abstract idea grouping includes: (1) mathematical concepts--mathematical relationships, mathematical formulas/equations, mathematical calculations; (2) certain methods of organizing human activity--fundamental economic principles or practices (hedging, insurance, mitigating risk), commercial or legal interactions (agreements in the form of contracts, legal obligations, advertising, marketing/sales activities/behaviors, business relations), managing personal behavior/relationships/interactions between people (social activities, teaching, following rules/instructions); (3) mental processes--concepts performed in human mind (observation, evaluation, judgment, opinion)
The practical application may be shown as: (1) an improvement in the functioning of a computer or improvement to other technology or technical field; (2) effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements a judicial exception in conjunction with a particular machine or manufacture that is integral to claim; (4) effects a transformation or reduction of particular article to a different state or thing; and (5) applies or uses the judicial exception in some other meaningful way beyond linking the use of the judicial exception to a particular technological environment.
The Section 112 guidance emphasizes various issues with regard to 112 analysis as it relates to computer-implemented inventions. Specifically, it addresses proper application of means-plus-function claiming under 112(f), of the definiteness requirement under 112(b), and of the written description and enablement requirements under 112(a).
Full texts of the guidelines are available here--Section 101, Section 112
Effective 11/13/18, the PTAB's claim construction standard changes to Phillips from the broadest reasonable interpretation (BRI) for all IPR, PGR and CBM petitions filed on or after 11/13/18.
On August 20, 2018, a Federal Circuit panel, in a unanimous decision regarding a design patent application for a shoe bottom design, ruled that Section 112 requirements of enablement and definiteness may be satisfied by a single, 2D plan-view drawing as the ornamental design is capable of being disclosed and judged from such 2D view. In re Maatita, No. 17-2037 (Fed. Cir. Aug. 20, 2018). Applicant Ron Maatita filed a design patent application covering the design of an athletic shoe bottom with two figures showing a plan view of the claimed design. Examiner objected that the two figures were identical except for the unclaimed surrounding environment and rejected the single claim for failing to satisfy the enablement and definiteness requirements of 35 USC 112. Applicant responded that the figures represented the same embodiment and that the omission of certain design elements only affected the breadth of the claim. The examiner again rejected the claim reasoning that the examiner prepared four 3D rendering show different implementation of the 2D view and therefore, the claim failed to satisfy Section 112. The Board affirmed the examiner's decision. In reversing the Board decision, the Federal Circuit reasoned that the shoe design is similar to that of a rug, which is capable of being viewed and understood in two-dimensions through a plan-view illustration.
Full text of the opinion is available here.
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.