Patent & Trademark Office/PTO Archives - Page 7 of 19

Patent & Trademark Office/PTO

Contingent Statement Doesn’t Unequivocally Abandon Defense of Challenged Claims

by Cecilia Choy, Ph.D. | Jan 12, 2023 | Patents

The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director ultimately ordered that the judgments be vacated and remanded for further consideration. Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124; -01125; -01126; -01129 (Dec. 21, 2022) (Vidal, Dir.)

Apple filed six petitions for IPR, all of which were instituted and assigned to the same panel of Administrative Patent Judges. After institution, Zipit filed responses to two of the IPRs, but not the other four companion IPRs. The Board held a hearing in the two IPRs for which Zipit filed responses. At the end of the hearing, Zipit’s counsel was asked with reference to the four companion IPRs whether Zipit was “not contesting if a final written decision or adverse judgment was entered with respect to those IPRs.” The counsel responded, “correct . . . if the board determines that [Apple has] met their burden of proof with respect to those claims Zipit hasn’t filed any opposition.” Based on this exchange, the Board determined that Zipit abandoned the contests and entered adverse judgments.

The PTO Director initiated review under the interim process for Director review §§ 13, 22, which allows sua sponte Director review, explaining that notice would be given to parties of the proceedings if such a review was initiated. Upon review, the PTO Director did not consider the counsel’s statements to be an “unequivocal abandonment of the contest of these proceedings.” In an IPR, a petitioner has the “burden of proving a proposition of unpatentability by a preponderance of the evidence” and the “burden from the onset to show with particularity why the patent it challenges is unpatentable.” The PTO Director’s interpretation of Zipit’s statements was that “non-opposition was contingent on the Board determining that [Apple] met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.”

The PTO Director thus vacated the Board’s adverse judgments and remanded the proceedings to the panel to issue either an order clarifying whether Zipit indeed abandoned the contest or a final written decision addressing the patentability of the challenged claims.

PTO Update: COVID-19 Prioritized Examination Extended, Non-DOCX Filing Fee Deferred and More

by Amol Parikh | Jan 5, 2023 | Patents

On December 22, 2022, the US Patent & Trademark Office (PTO) announced the fifth extension of the Modified COVID-19 Prioritized Examination Pilot Program. The pilot program had been set to terminate on December 31, 2022, and is now extended to February 15, 2023. The program was implemented to support the acceleration of innovations in the fight against COVID-19. Under the pilot program, an applicant may request prioritized examination without payment of the prioritized examination fee and associated processing fee if the following criteria are met:

The patent application’s claim(s) cover a product or process related to COVID-19.
The product or process is subject to an applicable US Food & Drug Administration approval for COVID-19 use.
The applicant meets other requirements noted in the COVID-19 Track One Notice.

For more information, see the Federal Register notice.

The PTO also announced on December 29, 2022, that the new fee for filing nonprovisional utility patent applications that do not conform to the PTO requirements for submission in DOCX format will be deferred to the new effective date of April 3, 2023. The fee was originally scheduled to become effective on January 1, 2023. For more information, see the Federal Register notice.

The PTO and the US Copyright Office announced on December 23, 2022, that the deadline for submitting written comments on intellectual property considerations related to non-fungible tokens (NFTs) has been extended from January 9, 2023, to February 3, 2023. The dates for the public roundtables directed to patents, trademarks and copyrights, respectively, also have changed as follows:

The first roundtable, Trademarks and NFTs, is now set for January 24, 2023 (originally scheduled for January 12, 2023).
The second roundtable, Patents and NFTs, has been moved to January 26, 2023 (originally scheduled for January 10, 2023).
The third roundtable, Copyrights and NFTs, has been moved to January 31, 2023.

The roundtables will be livestreamed, and the PTO and Copyright Office will post instructions for the public to register to view them live. Click here for more information about the topics that will be discussed. For more information about the schedule change, see the Federal Register notice.

The PTO also announced that small entity filing fee discounts are increased from 50% to 60% and micro entity filing fee discounts are increased from 75% to 80%. The discount increases went into effect on December 29, 2022, when US President Joe Biden signed into law the Consolidated Appropriations Act, 2023, which included the Unleashing American Innovators Act of 2022. The new PTO fee schedule can be found here.

PTO Announces Cancer Moonshot Expedited Examination Pilot Program

by Amol Parikh | Dec 15, 2022 | Patents

On December 8, 2022, the US Patent & Trademark Office (PTO) announced the launch of the Cancer Moonshot Expedited Examination Pilot Program (Cancer Moonshot Pilot). This program begins on February 1, 2023, and replaces the Cancer Immunotherapy Pilot Program. The Cancer Moonshot Pilot is scheduled to run until either January 31, 2025, or the date the PTO accepts a total of 1,000 grantable petitions, whichever comes first.

The Cancer Moonshot Pilot expands the scope of technologies that are eligible for expedited examination. The Cancer Immunotherapy Pilot Program required that applications contain a claim to a method of treating a cancer using immunotherapy. To be eligible for the Cancer Moonshot Pilot, original applications must be in the field of oncology or smoking cessation and must contain at least one method claim that falls into one of the following six categories:

A method of treating or reducing the incidence of a cancer using an immunotherapeutic compound or composition
A method of treating a cancer by targeting specific genetic markers or mutations using a specific pharmaceutical composition
A method of treating a rare or childhood cancer using a specific pharmaceutical composition
A method of detecting or treating a cancer using a medical device specifically adapted to detect or treat the cancer
A method of treating a cancer by administering a specific pharmaceutical composition wherein the method comprises a step to diagnose the cancer
A method of treating nicotine dependency and promoting smoking cessation by administering a specific pharmaceutical composition.

Eligible patent applications must have or be amended to have no more than three independent claims and 20 claims total, and no multiple dependent claims. If a petition for expedited examination under the pilot is granted, the application will be treated as special until a first Office Action, including a restriction requirement, issues. After the first Office Action issues, the application will no longer be treated as special. There is no expedited examination fee for eligible applications.

For further details about the Cancer Moonshot Pilot, see the Federal Register notice.

No Mulligans Here: PTO Rewinds Reexamination Based on Estoppel

by James M. Oehler | Dec 8, 2022 | Patents

The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR). In re Tyler, Reexam. No. 90/014,950 (PTO Nov. 15, 2022).

In 2017, GITS Manufacturing filed two IPR petitions against a patent owned by G.W. Lisk after Lisk asserted the patent against GITS in district court. In 2018, the Patent Trial & Appeal Board issued final written decisions in each IPR, finding some claims unpatentable and maintaining the patentability of other claims. The Federal Circuit affirmed both IPR decisions in 2021.

In February 2022, the PTO initiated an ex parte reexamination of one of the patents based on a request filed by GITS. The reexamination proposed multiple grounds of unpatentability based on four prior art references that were not involved in the IPRs. GITS included a lengthy discussion and an expert declaration describing the prior art searches GITS performed in support of the certification that it was not estopped under 35 U.S.C. § 315(e)(l) from asserting the grounds in the reexamination. Lisk filed a petition to vacate the reexamination proceeding, alleging that GITS was estopped because the reexamination references reasonably could have been raised in the previous IPRs. Lisk’s petition was supported by its own expert declaration describing prior art searches that a skilled searcher would have conducted.

A party is estopped under § 315(e)(1) from requesting a reexamination proceeding based on grounds that the party “raised or reasonably could have raised” during an IPR. The legislative history of § 315(e) defines “reasonably could have raised” as “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.” The PTO cited legislative history stating that “reasonably could have raised” does not require a “scorched-earth search,” leaving open the possibility that a diligent search may not discover a particular reference. But the PTO also distinguished the search an examiner or lawyer may conduct from the more robust search that a skilled searcher is assumed to conduct prior to filing a petition for a IPR proceeding.

The PTO evaluated each of the four references in GITS’s reexamination grounds based on the criteria described above. Two of the references were patent documents available in commercial databases that a skilled searcher could be expected to find. The third reference was a “seminal textbook” that GITS itself stated was used in the field to train those of skill in the art. The textbook reference was also found through standard citation searching of the patent at issue. The fourth reference was provided by a publisher that GITS stated “was an established publisher that was well known to those interested in the field,” and which maintained an online searchable database of its publications. The PTO determined that the fourth reference would have been found by a reasonably diligent search, despite the fact that a subscription fee was required to search the database.

The PTO also weighed [...]

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Court Uncorks New Way to Serve Trademark Complaints

by Amol Parikh | Nov 29, 2022 | Trademarks

The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent & Trademark Office (PTO). San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., Case No. 21-56036 (9th Cir. Nov. 14, 2022) (Siler, Callahan, Thomas, JJ.)

San Antonio Winery is a Los Angeles-based winery best known for its Stella Rosa brand of wines. The winery is owned and operated by the Riboli family. San Antonio has registered the trademarks RIBOLI and RIBOLI FAMILY, which it has used since at least 1998 to market its wines and other products.

Jiaxing is a Chinese company that has sold products using the Riboli name. In 2018, Jiaxing registered the mark RIBOLI for use in connection with articles of clothing and shoes. In 2020, Jiaxing applied to register the mark RIBOLI for use with additional types of products, including wine pourers, bottle stands, containers, cocktail shakers, dishware and various other kitchen and household items.

After learning that Jiaxing was using the Riboli name to sell products in the United States, San Antonio filed a complaint asserting Lanham Act claims for trademark infringement, trademark dilution and false designation of origin, as well as related state-law claims. San Antonio also sought an injunction prohibiting Jiaxing from using the RIBOLI mark in connection with its products, an order canceling Jiaxing’s 2018 registration of the RIBOLI mark, and an order either directing Jiaxing to abandon its 2020 application to register RIBOLI for additional uses or prohibiting the PTO from granting the application.

Because Jiaxing is a Chinese company, San Antonio’s service of process was governed by rules for serving parties abroad, such as by the Hague Convention. Concerned with the amount of time it might take to effect service under the Hague Convention, San Antonio instead sought to serve Jiaxing under Section 1051(e) of the Lanham Act, which applies to foreign domiciliaries who apply to register a trademark. Section 1051(e) states that if a trademark applicant is not domiciled in the United States, the applicant may designate the name and address of a person in the United States who may be served with notices or processes in proceedings affecting the mark. If the designated person cannot be found at the address, the notices or processes may be served on the PTO Director.

Seeking to avail itself of Section 1051(e), San Antonio inquired whether the US-based lawyer who had represented Jiaxing in connection with its trademark applications would accept service on Jiaxing’s behalf. When the lawyer did not respond, San Antonio served the district court complaint on the PTO Director, who then sent a letter to Jiaxing confirming service of process was effectuated pursuant to Section 1051(e).

After Jiaxing did not appear to defend itself in the action, San Antonio filed a motion for default judgment. The district court denied the motion on the ground that Jiaxing had not [...]

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Another Kind of Term Limit: Delay Resulting from After-Allowance Amendments Deducted from PTA

by Kyle Sorenson, PhD | Nov 17, 2022 | Patents

The US Court of Appeals for the Federal Circuit affirmed the US Patent & Trademark Office’s (PTO) decision on a patent term adjustment (PTA), finding that it was appropriate to deduct days from a patent term when the applicant files an amendment after notice of allowance and could have completed prosecution earlier by withdrawing the amendment or abstaining from filing it in first instance. Eurica Califorrniaa v. Vidal, Case No. 22-1640 (Fed. Cir. Nov. 7, 2022) (Lourie, Dyk, Hughes, JJ.) (per curiam) (non-precedential).

Eurica Califorrniaa is the sole inventor of a patent application entitled “nondestructive means of ectopic pregnancy management,” which was filed on March 15, 2014. Near the close of an extended patent prosecution, the examiner identified minor additional changes to the claim language of the patent application that would place it in position for allowance. The examiner unilaterally made the amendments and provided Califorrniaa a notice of allowance. In response, Califorrniaa requested an interview with the examiner and provided a list of further proposed amendments that included changes to the examiner’s amended claim limitations as well as substantive changes unrelated to the Examiner’s Amendments. Following the interview, Califorrniaa formally submitted his proposed amendments for the examiner’s consideration. As a result, the PTO deducted 51 days from the adjusted patent term of the patent to account for the time it took the examiner to consider and accept Califorrniaa’s post-allowance amendments. Califorrniaa appealed the PTO’s calculations, first to the district court (which affirmed the PTO) and then to the Federal Circuit.

The PTO may extend the nominal 20-years-from-filing patent terms to account for each day of delay attributable to the PTO, minus the number of days of delay attributable to an applicant’s failure to engage in reasonable efforts to conclude prosecution. Congress has granted the PTO authority to define when this “reasonable efforts” standard is not met, and the PTO has created regulations to address the issue. In 2019, the Federal Circuit issued its decision in Supernus v. Iancu, finding that the PTO failed to properly consider whether the applicant reasonably engaged in efforts to conclude prosecution. In response, the PTO adjusted its regulations to distinguish between post-allowance amendments expressly requested by the PTO and those voluntarily made by the applicant, and to change the relevant timeframe for the calculation of a reduction in PTA. The PTO’s regulations state, in part, that an applicant’s decision to amend their patent application after the examiner has issued a notice of allowance is not a reasonable effort to conclude prosecution.

Unlike its ruling in Supernus, where no identifiable effort to conclude prosecution existed, here the Federal Circuit agreed with the PTO’s finding that Califorrniaa could have, at any time, withdrawn his post-allowance amendments and accepted the examiner’s amendments to conclude prosecution. As such, an “identifiable effort” existed by which Califorrniaa could have avoided additional delay and concluded prosecution. Therefore, the Court affirmed the 51-day deduction of the patent term.

The Federal Circuit also found that the PTO’s post-Supernus updates to [...]

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PTO Extends Deadline for Comments on Initiatives to Ensure Patent Robustness, Reliability

by Amol Parikh | Nov 3, 2022 | Patents

On November 3, 2022, the US Patent & Trademark Office (PTO) announced that it is extending the deadline for public input on its proposed initiatives aimed at ensuring the robustness and reliability of patent rights from January 3, 2023, to February 1, 2023.

For further details about the extension of the deadline, check out the notice here.

PTO Requests Comments on Initiatives to Expand Board Opportunities, Registration to Practice Criteria

by Amol Parikh | Oct 20, 2022 | Patents

In a pair of notices, the US Patent & Trademark Office (PTO) announced on October 18, 2022, that it is seeking public input on proposed initiatives directed at expanding opportunities to appear before the Patent Trial & Appeal Board, (Board) and expanding admission criteria for registration to practice in patent cases before the PTO. PTO Director Kathi Vidal explained that “[t]hese proposals are part of our broader initiatives to improve quality and participation.”

Regarding the expansion of opportunities to appear before the Board, the PTO requested comments on the following six questions:

Are there any changes to Board rules or procedures that the PTO or the Board should make to increase opportunities to appear and/or serve as counsel and/or the lead counsel in America Invents Act (AIA) proceedings?
1. If “yes” to question 1 as to the lead counsel, should the rules require that a non-registered practitioner have prior experience in AIA proceedings and/or have completed training before being designated as the lead counsel? What level of experience and/or type of training should be required?
Should any rule or procedure revised by the PTO that permits a non-registered practitioner to be designated as the lead counsel in an AIA proceeding also require that any such non-registered practitioner be accompanied by a registered practitioner as backup counsel? If not, are there any circumstances or events that might occur during an AIA proceeding (g., the contemplated or actual filing of a motion to amend) that might warrant requiring a registered practitioner to then appear as backup counsel?
Would a rule requiring that the lead counsel or backup counsel in an AIA proceeding be a registered practitioner have a significant impact on the cost of such a proceeding? If so, what would the impact be and would the impact be justified?
Should any of the changes discussed above, if adopted, be implemented as a pilot program?
Are there additional training and/or development programs the PTO should offer to increase opportunities for less experienced practitioners to appear as counsel and/or serve as the lead counsel in AIA proceedings?
Are there any changes to the Legal Experience and Advancement Program (LEAP) that the PTO should make to increase opportunities to appear and/or serve as the lead counsel in AIA proceedings?

Regarding expanding the admission requirements to practice in patent matters before the PTO, comments on the following five topics were requested:

The General Requirements Bulletin (GRB) lists three categories of scientific and technical qualifications typically used for eligibility for admission to the registration examination: (1) Category A, for specified bachelor’s, master’s and PhD degrees; (2) Category B, for other bachelor’s, master’s and PhD degrees with technical and scientific training; and (3) Category C, for individuals who rely on practical engineering or scientific experience and have passed the Fundamentals of Engineering test. The PTO is seeking comments as to acceptable degrees and whether it should add Category B degrees on a predetermined timeframe (g., every three years).
Should the PTO accept [...]

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Cloudy Skies: PTO Director Finds Abuse and Sanctionable Conduct

by Alexander Piala, PhD | Oct 13, 2022 | Patents

The US Patent & Trademark Office (PTO) Director issued a precedential opinion finding that filing an inter partes review (IPR) solely to extract payment in a settlement—without the intent to prosecute the IPR to completion—is a sanctionable abuse of process. OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064 (Oct. 4, 2022) (Vidal, Dir.)

In 2019, VLSI asserted two patents against Intel. In response, Intel filed two IPRs against the allegedly infringed patents, but both IPRs were discretionally denied by the Patent Trial & Appeal Board (Board) based on the advanced stage of the underlying litigation and overlapping issues. The suit proceeded, and a jury awarded VLSI more than $600 million in damages in 2021.

OpenSky Industries was founded two months after the judgment. OpenSky filed a “copycat” IPR petition based on Intel’s previous petitions (including refiling the declarations of Intel’s expert without his knowledge) targeting VLSI’s two allegedly infringed patents. The Board instituted over VLSI’s argument, noting that patentability issues were raised that had not been resolved in the district court case. Initially, OpenSky attempted to settle the IPRs with VLSI, but VLSI refused. OpenSky then reached out to Intel, offering to let Intel collaborate if it agreed to pay a success fee. Intel refused and later filed its own IPR petition and joinder motion. After Intel’s refusal, OpenSky pivoted back to VLSI, offering to “refuse[] to pay [the] expert for time at deposition so [the] expert does not appear at deposition” in return for payment. VLSI reported the scheme to the Board.

Intel was joined as a party to the OpenSky IPR proceeding in June 2022 based on its later-filed petition. Once Intel joined, OpenSky threatened to forego both deposing VLSI’s expert and filing its reply brief unless Intel paid it for its “prior work in the IPR” plus “additional remuneration.” Intel refused. While OpenSky did notice VLSI’s expert, it declined to file a Petitioner Reply brief, forcing Intel to draft the reply. Later, at VLSI’s request (OpenSky missed the request date), oral argument in the proceeding took place before the Board. OpenSky did not meaningfully participate.

While all this was unfolding, the Director sua sponte initiated an investigation to determine “[w]hat actions the Director . . . should take when faced with evidence of an abuse of process or conduct that otherwise thwarts . . . the goals of the Office and/or the AIA.” To begin the investigation, the Director sent discovery requests to each of the three parties. VLSI and Intel complied. OpenSky, by comparison, either incompletely complied with or directly refused each request. Based on those evasions, the Director sanctioned OpenSky for discovery misconduct, applying adverse inferences against OpenSky on each request.

Discovery sanctions in place, the Director moved to the central question: Did OpenSky abuse the IPR process? The Director answered yes.

First, the Director found that OpenSky’s conduct violated its duty of candor and good faith to the Board. In its negotiations with VLSI, OpenSky offered to deliberately sabotage its own petition to hinder Intel. In its negotiations with Intel, OpenSky did [...]

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PTO Requests Comments on Initiatives to Ensure Patent Robustness, Reliability

by Amol Parikh | Oct 13, 2022 | Patents

The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US President Joe Biden’s July 9, 2021, executive order on Promoting Competition in the American Economy, and a June 8, 2022, letter from Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun raising concerns about patent thickets.

The PTO identified four broad topics and initiatives that it is considering:

Prior Art Searching
Support for Patent Claims
Request for Continued Examination (RCE) Practice
Restriction, Divisional, Rejoinder and Non-Statutory Double Patenting Practice.

The PTO seeks comments on 11 main questions and several sub-questions. The first five questions are directed to the PTO initiatives while questions six through 11 address concerns raised by the senators.

PTO Initiatives

How should the PTO facilitate an applicant’s submission of prior art that is not accessible in the Patents End-to-End Search system (e.g., “on sale” or prior public use)?

How, if at all, should the PTO change claim support requirements and/or continuation practice?

How, if at all, should the PTO change RCE practice?

How, if at all, should the PTO limit or change restriction, divisional, rejoinder and/or non-statutory double patenting practice?

Provide any other input on any of the proposals listed under the PTO initiatives.

Senator Inquiries

How would eliminating terminal disclaimers, thus prohibiting patents that are obvious variants of one another, affect patent prosecution strategies and overall patent quality?

Should patents that are tied together by a terminal disclaimer because of an obviousness-type double patenting rejection stand or fall together if their validity is subsequently challenged?

Should the PTO require a second look by a team of patent quality specialists before issuing a continuation patent on a first office action?

Should there be heightened examination requirements for continuation patents?

Should the PTO implement a rule change that requires any continuation application to be filed within a set timeframe of the ultimate parent application?

If filing fees were increased to cover the actual cost of obtaining a patent, would this increase patent quality? And if the fees for continuation applications were increased, would applicants be less likely to file continuations for obvious variants?

Among the proposals under consideration are whether to require applicants to identify corresponding support in the original disclosure for each claim in a continuation application, whether applications should be reassigned to a different examiner after a set number of RCEs are filed, whether the PTO should adopt the unity of invention standard, and whether divisionals should be filed within a set time period.

Click here for further details on the PTO initiatives.

Comments must be received by January 3, 2023, to ensure consideration.