On July 1, 2018, USPTO, EPO, JPO, KIPO, and SIPO (collectively, the "IP5") launched a new PCT Collaboration Search and Examination Pilot that allows examiners from all five offices to collaborate on the search and examination of a single international application. The result is an international search report and written opinion from the chosen international searching authority based on contributions from all participating offices. Applicants will have the benefit of search conducted by multiple examiners in different languages with no extra cost.
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On May 30, 2018, the USPTO proposed rules to mandate e-filing of trademark applications based on Section 1 and Section 44 of the Lanham Act, and to require the designation of an e-mail address for receiving USPTO correspondence. The proposed rule also requires e-filing of all submissions including responses to Office Actions, maintenance declarations, renewal applications, international applications, subsequent designations, and direct filings with the USPTO relating to extensions of protection through the international registration system. More details are available here.
On May 8, 2018, the USPTO announced its proposed rulemaking for claim construction standard in PTAB proceedings. The PTO proposed to amend the rules to require the PTAB to interpret the claims in IPR/PGR/CBM proceedings using the same standard as applied in federal district courts and the USITC, and to consider any prior claim construction determination concerning a term of involved claim in a civil action or ITC proceeding that is timely made in the PTAB proceeding. The proposed changes would replace the BRI standard with the claim construction standard used in federal district courts and would be consistent with the PTO's current approach for interpreting claims in an expired patent. Full text of the notice is available here.
On April 26, 2018, USPTO issued guidance on the impact of the Supreme Court's decision in SAS Institute Inc. v. Iancu on AIA trial proceedings. According to the guidance, PTAB will proceed as follows: (1) it will institute as to all claims or none; if it institutes a trial, it will institute on all challenges raised in the petition; (2) for pending trials in which panel instituted trial on all challenges raised in the petition, panel will continue with the proceeding in normal course; (3) for pending trial in which a panel instituted trial only on some of the challenges raised in the petition, panel will issue a supplemental order on all challenges raised in the petition, and take action to manage trial proceeding including permitting additional time, briefing, discovery and/or oral argument, depending on the stage of the proceeding.
Full text is available here. On April 19, 2018, the USPTO issued a memorandum to address changes in patent examination procedure in light of the Federal Circuit's decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, the Federal Circuit held that the question of whether certain claim limitations represent well-understood, routine, conventional activity is a question of fact; the court reaffirmed this standard in subsequent cases regarding judgment on the pleadings and judgment as a matter of law.
USPTO now requires an examiner to conclude that an element or combination of elements represent well-understood, routine, conventional activity only when the element(s) is widely prevalent or in common use in the relevant industry. This determination is distinct from patentability over 102/103 prior art. The examination procedure now requires: (1) a citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s); it cannot be based on the fact that the specification is silent with respect to describing such element; (2) a citation to one or more court decisions noting the well-understood, routine, conventional nature of the additional element(s); (3) a citation to a publication (book, manual, review article, or other source); (4) statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s); this option should be used only when the examiner is certain based upon his/her personal knowledge. Full text of the memo is available here. On Nov. 16, 2017, the USPTO issued new procedures for cases remanded from the Federal Circuit. The Standard Operating Procedure (SOP) provides guidance for panels in preparing for remand meetings and guidance to parties on remand procedures. The potential topics for such remand meetings may include the procedural history, issues on remand, any contemplated procedures for the proceedings on remand, and policy considerations. The SOP suggests parties in remanded trial cases are to contact the Board within 10 days and encourages parties to seek agreement on, among others, additional briefing, length of briefing, subject matter limitations on briefing, and briefing schedule. Full text is available here.
On Nov. 14, 2017, the USPTO issued a final rule revising certain patent fees including increasing the fees for inter partes review. Effective Jan. 16, 2018, the PTO will increase a majority of fees including filing fees for utility patents, patent search filing fees, post allowance fees and PTAB fees. The IPR review request fee for up to 20 claims will be $15,500 and IPR post-institution fee for up to 15 claims will be $15,000. More information is available here.
On Nov. 7, 2017, the USPTO issued a final rule, set to take effect on December 7, 2017, on attorney-client privilege for PTAB trials. Under the rule, communications between a client and a USPTO patent practitioner/foreign jurisdiction patent practitioner will be privileged just as attorney-client communications. 37 CFR 42.57. Information on the final rule is available here.
The US Patent and Trademark Office released a testing version of the Citation List, as part of the Global Dossier Initiative, a service that provides a list of relevant citations in related applications that share a common priority claim. The Citation List can also be used to view all references cited in the patent family of an application.
In Ex parte McAward, the Board explained that the Supreme Court's decision in Nautilus does not change the PTO's "long-standing approach to indefiniteness" in pre-issuance examination. The Board will continue to apply Packard, i.e., whether a claim is "cast in clear--as opposed to ambiguous, vague, indefinite--terms." The threshold for proving indefiniteness in a district court litigation, however, would be whether the claims define the inventive subject matter with "reasonable certainty," as required under Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The Board did not address the approach to indefiniteness that the PTO may follow in a post-grant trial proceedings under the AIA.
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Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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