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New Year, New Fees: PTO Issues 2025 Fee Schedule

by Amol Parikh | Dec 5, 2024 | Patents

The US Patent & Trademark Office (PTO) issued its final rule setting and adjusting patent fees that will take effect on January 19, 2025. 89 Fed. Reg. 91898 (Nov. 20, 2024).

The final rule sets or adjusts 433 patent fees for undiscounted, small, and micro entities, including the introduction of 52 new fees. The fee adjustments are grouped into three categories:

Across-the-board adjustment to patent fees.
Adjustment to front-end fees.
Targeted fees.

Fees not covered by the targeted adjustments will increase by approximately 7.5%. Front-end fees to obtain a patent (i.e., filing, search, examination, and issue fees) are set to increase by an additional 2.5% on top of the 7.5% across-the-board adjustment. Targeted adjustments include increasing fees related to continuing applications, design patent applications, filing excess claims, extensions of time for provisional applications, information disclosure statement sizes, patent term adjustments, patent term extensions, requests for continued examinations, suspension of actions, terminal disclaimers, unintentional delay petitions, and Requests for Director Review of a Patent Trial & Appeal Board decision.

More information, including the new fee schedule, is available on the PTO’s website.

Trademark Fee Increases: The TEAS Party Is Over

by Abigail A. Rubinstein | Dec 5, 2024 | Trademarks

After a lengthy public comment and review process, the US Patent & Trademark Office (PTO) announced trademark fee increases effective January 18, 2025. The goal of PTO fee setting is to provide sufficient financial resources to facilitate the effective administration of the US intellectual property system. The PTO aspires to recover aggregate costs to:

Finance the PTO’s mission, strategic goals, and priorities.
Enable financial sustainability.
Promote efficient operations and filing behaviors.
Align fees with the costs of services provided.
Encourage access to the trademark system for all stakeholders.

The fees for filing a new trademark application via either the Trademark Electronic Application System (TEAS) or TEAS Plus will remain unchanged: $350 per class for a TEAS standard application and $250 per class for a TEAS Plus application for as long as TEAS remains available (and then using the Beta site discussed below). However, the PTO will institute surcharges for applications that are incomplete or contain custom identifications of goods or services. These application surcharges are intended to encourage more complete applications, which will improve examination efficiency and help reduce pendency.

Description Surcharge Insufficient information (Sections 1 and 44), per class $100 Using the free-form text box instead of the Trademark ID Manual within the Trademark Center to identify goods and services (Sections 1 and 44), per class $200 Each additional group of 1,000 characters in the free-form text box beyond the first 1,000 (Sections 1 and 44), per affected class $200

Since the World Intellectual Property Organization (WIPO) is currently unable to collect surcharges, the PTO will raise the fee for WIPO Madrid Trademark Applications to $600 per class.

The PTO will also raise the fees for post-registration filings to offset higher processing costs for these filings and continue balancing the cost of base applications.

Filing Current Fee Fee as of January 18, 2025 Section 9 registration renewal application, per class $300 $325 Section 8 declaration, per class $225 $325 Section 15 declaration, per class $200 $250 Section 71 declaration, per class $225 $325

The PTO has not increased the filing fees in connection with intent to use filings since 2002, although the time to examine such filings has increased exponentially because of the need to examine questionable specimens. Those fees are now set to increase as follows:

Description Current Fee Fee as of January 18, 2025 Amendment to allege use (AAU), per class $100 $150 Statement of use (SOU), per class $100 $150

The fees for requesting an extension of time are unchanged.

Finally, the number of petitions and protests have increased. The PTO will attempt to recover more of the cost of processing petitions and protests as follows:

Description Current Fee Fee as of January 18, 2025 Petition to the Director $250 $400 Petition to revive an application $150 $250 Letter of protest $50 $150

For further details, including a complete list of the fee increases, click here.

The PTO also announced that as of January 18, 2025, filers [...]

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A Lesson in Judicial Principles: No Dismissal After Decision

by Connor M. Larson | Dec 5, 2024 | Patents

The US Court of Appeals for the Federal Circuit denied a patent owner’s motion to voluntarily dismiss the appeal following the Federal Circuit’s decision to vacate and remand the case to the Patent Trial & Appeal Board but before the mandate issued. Cisco Sys., Inc. v. K.Mizra LLC, Case No. 22-2290 (Fed. Cir. Nov. 19, 2024) (Dyk, Reyna, Stoll, JJ.)

Computer networking companies Cisco, Forescout, and Hewlett Packard filed a petition for inter partes review (IPR) to challenge the patentability of several claims of a patent owned by K.Mizra. The Board found that the petitioners failed to show that the challenged claims were unpatentable. Cisco and Hewlett Packard appealed.

After full briefing and oral argument, the Federal Circuit issued an opinion vacating the Board’s decision and remanding with further instructions. Before the Court’s mandate issued, the parties reached a settlement and moved to voluntarily dismiss the appeal without submitting a request to vacate the Federal Circuit opinion. The motions were unopposed.

The Federal Circuit stayed the issuance of the mandate while it considered the motions and invited the US Patent & Trademark Office (PTO) to comment. The PTO requested that the Federal Circuit deny the motions because it had already entered its opinion and judgment and denied rehearing. The Court agreed, declining to depart from its principle that granting a motion to dismiss the appeal at such a late stage (days before the issuance of the mandate) would result in a modification or vacatur of its judgment that was neither required nor a proper use of the judicial system.

The Federal Circuit also emphasized that appeals from the Board require additional consideration in terms of the PTO Director’s unconditional right to intervene. The Court concluded with a reminder that the parties were free to seek dismissal from the Board on remand.

UPC Court of Appeal Rules on Suspending First Instance Enforcement, Managing Director Liability

by Lisa Nassi | Nov 21, 2024 | EU Update, Patents

The Court of Appeal (CoA) of the Unified Patent Court (UPC) addressed a request for suspensive effect of an appeal and ruled that managing directors of an alleged patent-infringing company cannot be held liable as “intermediaries” under Article 63 of the Agreement on a Unified Patent Court (UPCA). Koninklijke Philips NV v. Belkin GmbH, UPC_CoA_579/2024, ORD_53377/2024 (UPC CoA Oct. 29, 2024) (Rombach, J.)

In contrast to German law (for example), appeals before the UPC generally do not have suspensive effect (See Article 74(1) of the UPCA). Thus, first instance decisions are immediately enforceable under Article 82 of the UPCA and Rule 354 of the UPC Rules of Procedure (RoP), which can have significant economic implications, particularly in the context of injunctions against the affected companies. To mitigate such effects, an application for suspensive effect may be filed under Rule 223.1 of the RoP.

In the present case, Philips initiated an infringement action against the Belkin Group before the Local Division Munich (CFI_390/2024), targeting not only the Belkin Group but also its subsidiaries’ managing directors. In its first instance decision, the Munich court ruled in favor of Philips and granted an injunction against Belkin and its subsidiaries’ managing directors, classifying the latter as “intermediaries” within the meaning of Article 63(1), Section 2 of the UPCA. Belkin appealed and requested suspensive effect under Rule 223.1 of the RoP.

The CoA partially granted this request, ordering suspensive effect with regard to the injunction against the managing directors. The CoA ruled that the suspensive effect of an appeal is an exception that can only be ordered in special circumstances. This involves determining whether the appellant’s interest in maintaining the status quo until the decision of the appeal exceptionally outweighs the respondent’s interest in enforcement. The CoA clarified that such circumstances exist where the decision being appealed is manifestly wrong. Whether this is the case – and whether there is, therefore, an evident violation of the law – is assessed on the basis of the factual findings and legal considerations of the first instance decision. If these findings or legal considerations prove to be untenable on summary examination, suspensive effect must be ordered.

In the present case, the CoA found a manifest error of law in the classification of the managing directors as “intermediaries” within the meaning of Article 63 of the UPCA and Article 11 of Directive 2004/48. It reasoned that managing directors, acting in their official capacity, represent the company itself and are not external to it. Therefore, the appellant company cannot be a “third party” in relation to its CEO. Accordingly, liability under Article 63(1), Section 2 of the UPCA as an intermediary cannot arise solely from the CEO functioning as a managing director.

Consequently, the CoA granted suspensive effect for the injunction against the managing directors but dismissed the application for suspensive effect in all other respects.

Practice Note: Practitioners should carefully consider the rule exception framework when applying for suspensive effect before the UPC. To be successful, a convincing, case-specific justification [...]

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Moving to Recuse? Too Little, Too Late

by Lois D. Mermelstein | Nov 14, 2024 | Patents

The US Court of Appeals for the Federal Circuit ruled that waiting until well after an adverse summary judgment motion to move for a district court judge’s recusal is untimely and moot, especially where an appeal from the adverse decision is already filed and where the recusal motion is based on public information. Cellspin Soft, Inc. v. Fitbit LLC, et al., Case No. 22-1526 (Fed Cir. Nov. 1, 2024) (Taranto, Prost, Reyna, JJ.) (nonprecedential).

Cellspin filed a complaint for patent infringement against Fitbit and others in October 2017. In February 2021, Fitbit amended its corporate disclosure statement to reflect the completion of its acquisition by Google (an indirect subsidiary of Alphabet). Almost a year later, in January 2022, Fitbit and the other defendants moved for summary judgment of noninfringement in their respective cases, and in June 2022, the district court granted summary judgment.

Months later, in January 2023, after the grant of summary judgment and the filing of notices of appeal from that grant, Cellspin filed a motion to recuse the district court judge based on the judge’s mutual fund investments that were likely to invest in Google. The consulting firm for which the judge’s husband worked also sold Google services, but the judge’s spouse did not do work for Google. The district court denied the motion on the merits as untimely and because the district court lacked authority to vacate the summary judgment that was already on appeal.

Applying Ninth Circuit law and reviewing for abuse of discretion, the Federal Circuit found that Cellspin’s behavior in waiting until well after it had lost on summary judgment, and almost two years after Google’s acquisition of Fitbit became final, “raises obvious concerns of lack of equity and strategic misuse of recusal.” The sources Fitbit cited for the judge’s spouse and the activities of the spouse’s employer were also public well before the summary judgment motion was granted, as were the judge’s financial disclosures.

While there is no specific time limit for seeking recusal, the Federal Circuit (citing its 1989 decision in Polaroid v. Eastman Kodak) noted that “timeliness is a well-established consideration in application of the [recusal] statute. In deciding motions to vacate orders issued by an allegedly disqualified judge, the courts have used ‘untimely’ as a synonym for ‘unfair’ when the circumstances, like those present here, are such that a grant of the motion would produce a result inequitable, unjust, and unfair.”

The Federal Circuit also noted that the risk of injustice to the parties from denying vacatur would also be essentially nonexistent here because the Federal Circuit’s concurrent holding on the summary judgment appeal against other defendants had preclusive effect, resolving Cellspin’s infringement assertions against Fitbit as well.

Practice Note: Any motion for recusal should be promptly filed when grounds for the motion become apparent.

PTO Proposes Additional Audits to Put “Specimen Farms” Out to Pasture

by Taylor MacDonald | Nov 14, 2024 | Trademarks

In response to reports that some registrants use fraudulent specimens to prove continued use in commerce, the US Patent & Trademark Office (PTO) proposed an update to its post-registration audit process. Changes in Post-Registration Audit Selection for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases, 89 Fed. Reg. 85,435 (Oct. 28, 2024).

Since its institution in 2017, the PTO’s post-registration audit process has been essentially random. Pursuant to Section 8 of the Trademark Act, trademark owners are required to file documentation in the form of affidavits of continued use indicating that the marks remain in use in connection with goods or services covered by the registration. In turn, the public relies on the trademark register for notice of marks that may be available for use and registration. The PTO conducts random audits of submitted documentation to ensure its reliability.

Since encountering various filings that revealed “systemic efforts to subvert” a trademark’s use in commerce requirement, the PTO has taken steps to expand its audit program. For example, in 2019, the office amended its examination procedures to highlight “digitally created/altered or mockup specimens” that fraudulently indicate continued use in commerce. In 2021, the PTO became aware of “specimen farms,” which are websites designed to create the illusion of commerce without providing actual sales. To combat deceptive maintenance of obsolete marks, the PTO will no longer perform only randomized audits but will also conduct audits “directed” at items that show tell-tale signs of digital alteration or specimen farm website use.

The objective of the directed audit program is “to promote the accuracy and integrity” of the trademark register. This proposed policy is open for public comments on the Federal eRulemaking Portal until November 27, 2024.

Equivalence Requires Element-by-Element Proof With Linking Argument

by Tessa Kroll | Nov 7, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court determination that a patent owner had not provided the “particularized testimony and linking argument” required to demonstrate equivalence under the doctrine of equivalents. NexStep, Inc. v. Comcast Cable Commc’ns, LLC, Case No. 2022-1815 (Fed. Cir. Oct. 24, 2024) (Chen, Taranto, JJ.) (Reyna, J., concurring in part and dissenting in part). In his dissent, Judge Reyna criticized the majority for ignoring the totality of the evidence presented by the patent owner and imposing a new rule requiring patentees to always present expert testimony to prove infringement under the doctrine of equivalents.

NexStep owns a patent directed to a “concierge device” for assisting users with obtaining customer support for smart devices. The claims are directed to a concierge device that initiates a technical support session in response to “a single action” (i.e., a single button press) by a user. After the claimed “single action,” the concierge device conveys consumer device identification information for the product at issue, identifies an appropriate technical support team for the product, and causes the home gateway to initiate a support session for the device and forward the consumer device information during the session.

NexStep sued Comcast for patent infringement, asserting that three tools in Comcast’s mobile smartphone application infringed the concierge device patent: Xfinity Assistant, Troubleshooting Card, and Diagnostic Check. Each of these tools assists users with troubleshooting a given device in response to the user pressing a series of buttons on a smartphone’s display. At trial, NexStep argued that pressing a series of buttons literally met the single action limitation because a single action could comprise a series of steps. By way of illustration, NexStep’s expert explained that throwing a baseball – a single action – required multiple steps: “[W]hen you throw a baseball, you pick it up, you orient it, you get it in your palm, you throw it.”

The jury returned a verdict of no literal infringement but found infringement under the doctrine of equivalents. Comcast moved for judgment as a matter of law, which the district court granted after finding that NexStep had failed to offer the “particularized testimony and linking argument” required to demonstrate equivalence. NexStep appealed.

The Federal Circuit emphasized that the doctrine of equivalents provides a “limited exception” to the principle that the claim defines the scope of the patentee’s exclusivity rights, and that a finding under the doctrine of equivalents is “exceptional.” To guard against overbroad applications of this exception, the Court’s precedent imposes specific evidentiary requirements necessary to prove infringement under the doctrine. The patent owner must provide proof on an element-by-element basis and from the perspective of someone skilled in the art, “for example through testimony of experts or others versed in the technology; by documents . . . and . . . by the disclosures of the prior art.” Finally, the patent owner must provide “particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the [...]

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Can’t Stop the FRAND: Navigating SEP Licensing Disputes

by Lois D. Mermelstein | Nov 7, 2024 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court’s decision to deny an antisuit injunction prohibiting a patent owner from enforcing injunctions that it obtained in Columbia and Brazil on standard essential patents (SEPs). Telefonaktiebolaget LM Ericsson, et al. v. Lenovo (United States), Inc., Case No. 24-1515 (Fed. Cir. Oct. 24, 2024) (Prost, Lourie, Reyna, JJ.)

Lenovo and Ericsson entered into negotiations to cross-license their SEPs to each other. SEPs are patents declared essential to complying with a technical standard. Because SEPs by definition must be practiced to comply with a given standard, SEP holders wield significant power over standard implementers during licensing negotiations. Standard setting organizations therefore typically have an intellectual property policy under which SEP holders agree to license their SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms. Here, the parties agreed that the FRAND commitment was a contract, governed by French law, that each party could enforce against the other, and that the FRAND commitment included an obligation to negotiate in good faith over licenses to SEPs.

After the parties were unsuccessful in reaching agreement, Ericsson sued Lenovo in US district court alleging that Lenovo infringed four of Ericsson’s US SEPs related to the 5G wireless communication standard. Ericsson also alleged that Lenovo breached its FRAND commitment by failing to negotiate in good faith and asked the district court to determine a FRAND rate for a global cross-license between the parties. Lenovo counterclaimed, alleging that Ericsson infringed four of Lenovo’s 5G US SEPs and asking for a similar outcome. Lenovo also asked the district court to enter an antisuit injunction prohibiting Ericsson from enforcing the preliminary injunctions Ericsson obtained in Colombia and Brazil that prohibited Lenovo from infringing Ericsson’s Columbian and Brazilian 5G SEPs. The district court denied Lenovo’s motion, following the antisuit injunction framework in the Ninth Circuit’s 2012 decision in Microsoft v. Motorola. The district court concluded that the instant suit was not dispositive of the foreign action, which was a threshold requirement to enter such an injunction. Lenovo appealed.

The Federal Circuit disagreed with the district court’s determination, finding that a party with a FRAND commitment must negotiate in good faith over a license to its SEPs before it pursues injunctive relief based on those SEPs. Interpreting the “dispositive” requirement, the Court concluded that the “requirement can be met even though a foreign antisuit injunction would resolve only a foreign injunction (and not the entire foreign proceeding), and even though the relevant resolution depends on the potential that one party’s view of the facts or law prevails in the domestic suit.” Here, the Court found that the requirement was met because the “FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs.” If the district court were to determine that Ericsson had not complied with that obligation, that determination would dictate the impropriety of Ericsson pursuing SEP-based injunctive relief. Accordingly, the [...]

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Pre-Markman Claim Construction Is OK, Within Limits

by Sydney E. McDermott | Oct 31, 2024 | Patents

In an appeal stemming from the denial of a preliminary injunction and dismissal of the complaint, the US Court of Appeals for the Federal Circuit clarified its precedent and explained that a district court may construe claims at the motion to dismiss Rule 12(b)(6) stage, but only to the extent necessary to decide the motion. UTTO Inc. v. Metrotech Corp., Case No. 23-1435 (Fed. Cir. Oct. 18, 2024) (Prost, Taranto, Hughes, JJ.)

UTTO sued Metrotech in the US District Court for the Northern District of California for patent infringement and tortious interference with prospective economic advantage under California law. UTTO also moved for a preliminary injunction. The asserted patent describes and claims methods for detecting and identifying “buried assets,” which refers to underground utility lines. The district court denied the preliminary injunction because of UTTO’s failure to show a likelihood of success on the merits for infringement based on the district court’s construction. The district court adopted a construction of the term “group” as requiring at least two data points per buried asset. The district court then dismissed the original complaint for failure to state a claim on which relief could be granted but allowed UTTO to amend, explaining that infringement of the claims as construed at the preliminary injunction stage was not pled.

UTTO then filed an amended complaint, which the district court also dismissed, noting that UTTO failed to plead facts supporting infringement of other limitations under the claim construction issued at the preliminary injunction stage. The district court again granted UTTO leave to amend, which UTTO did. But the district court dismissed that third complaint as well, this time with prejudice, citing the claim construction in its order at the preliminary injunction stage.

On appeal, UTTO (citing 2018 Federal Circuit precedent Nalco v. Chem-Mod) challenged the district court’s claim construction and its reliance on a claim construction in an order denying summary judgment to dismiss a complaint. The Federal Circuit explained that claim construction by a district court “to resolve . . . particular claim construction issues in [a] case” may be necessary and is not categorically barred at the Rule 12(b)(6) stage. The Court explained that there is a “logical relationship of claim construction” between “infringement and the normal function of courts deciding whether to grant a Rule 12(b)(6) motion.” An infringement analysis first requires an analysis of the scope and meaning of the claims asserted and then the “properly construed claims” are compared to the accused device or method. Often, claims are construed based on intrinsic evidence alone, which the Federal Circuit concluded “is not different in kind from the interpretation of other legal standards, which is proper and routine in ruling on a motion under Rule 12(b)(6).” As an example, the Court cited its routine dismissals under Rule 12(b)(6) in connection with motions under 35 U.S.C. § 101.

The Federal Circuit cautioned that not all claim construction issues need to be construed at the Rule 12(b)(6) stage, but only those issues necessary to decide a [...]

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No Need to Call for Backup at the PTAB (Sometimes)

by Sydney E. McDermott | Oct 24, 2024 | America Invents Act

The US Patent & Trademark Office (PTO) published a final rule entitled, Expanding Opportunities to Appear Before the Patent Trial & Appeal Board; 89 Fed. Reg. 82172 (Oct. 10, 2024).

The new rule, set to take effect on November 12, 2024, will apply to America Invents Act (AIA) proceedings, which, until now, have required that a party designate lead counsel and backup counsel. Lead counsel was required to be a registered practitioner, and non-registered practitioners could be backup counsel upon a showing of good cause.

The PTO filed a notice of proposed rulemaking on February 21, 2024, in which it proposed amending the regulations to allow the Board to permit a party to proceed without separate backup counsel as long as lead counsel is a registered practitioner. The PTO also proposed to allow a non-registered practitioner admitted pro hac vice to serve as either lead or backup counsel for a party as long as a registered practitioner was also counsel of record for that party, and to allow a non-registered practitioner who was previously recognized pro hac vice in an AIA proceeding to be considered a Board-recognized practitioner and eligible for automatic pro hac vice admission in subsequent proceedings via a simplified and expedited process.

Citing the benefits of flexibility where good cause is shown while ensuring parties are well represented, the PTO has now issued a final rule that will allow parties to proceed without backup counsel. The PTO noted that a party may demonstrate good cause, for example, by demonstrating lack of financial resources to retain both lead and backup counsel. However, the Board will question any claim of lack of financial resources where a party has also elected to pursue litigation involving the challenged patents in other forums. As a result, this rule is more likely to benefit patentees than patent challengers. The PTO also explained that the good cause analysis will center on the party, not on the counsel’s preferences. For example, the PTO is unlikely to find good cause where the lead counsel is a solo practitioner who prefers to work alone.

The PTO also issued a final rule simplifying the process for attorneys who were previously admitted to practice before the Board pro hac vice to gain admission for subsequent matters and to do so without a fee. Any attorney seeking subsequent pro hac vice admission must file a declaration or affidavit stating that all the requirements set out by the Board are met. Opposing counsel also has the opportunity to object.

Finally, the PTO rejected an amendment that would allow non-registered attorneys to serve as lead counsel.