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PTO Seeks Comments on Proposed Rulemaking for Denying Patent Reviews

The US Patent and Trademark Office (PTO) requested public comments on considerations for instituting trials under the Leahy-Smith America Invents Act (AIA). Comments are due by November 19, 2020. Patent practitioners have grown accustomed to reviewing the PTO Patent Trial and Appeal Board (Board) administrative guide, precedential or informative opinions, and other published filings and decisions to discern best practices for filing petitions for and defending against inter partes review, post-grant review, covered business method and derivation proceedings before the Board. For example, the latest Board Consolidated Trial Practice Guide (Nov. 2019) (CTPG) is available here. The PTO is considering codifying or modifying its current policies and practices through formal rulemaking and wishes to gather public comments on its current approach and other approaches suggested by stakeholders. PTO policies and Board decisions such as General Plastic, Valve Corp. I,...

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Senator Tillis Urges USPTO to Adopt Patent Reform Proposals

On August 10, 2020, Senator Thom Tillis of North Carolina urged the Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, to adopt two patent reform proposals suggested by Lisa Larrimore Ouellete and Heidi Williams. Senator Tillis is the Chairman of the Senate Judiciary Committee’s Subcommittee on Intellectual Property. Stanford University professors Lisa Larrimore Ouellete and Heidi Williams proposed the reforms in a paper, Reforming the Patent System, The Hamilton Project, Policy Proposal 2020-12 (June 2020). The first proposed reform would require patent applicants to more clearly distinguish between hypothetical experimental results and actual experimental results. The USPTO allows applicants to include so-called “prophetic examples” in a patent application. The patent applicant is supposed to distinguish between prophetic examples and actual working examples by the verb tense used to describe the example. Prophetic examples...

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Eighth Circuit Cools Off Antitrust Claims Based on Alleged Patent Fraud

The US Court of Appeals for the Eighth Circuit affirmed a grant of summary judgment dismissing antitrust and tortious interference claims based on fraudulent procurement of patents where the plaintiff failed to show a knowing and willful intent to deceive the US Patent and Trademark Office (PTO). Inline Packaging, LLC v. Graphic Packaging International, LLC, Case No. 18-3167 (8th Cir. June 18, 2020) (Smith, J.). Inline Packaging and Graphic Packaging are manufacturers of susceptor packaging, a specialized food packaging used for microwaving frozen foods. Graphic developed the susceptor design in partnership with Nestlé in 2005. The packaging was redesigned from a prior patent obtained several years earlier. Although Graphic’s computer-aided design drafter was listed as the sole inventor of the redesigned packaging claimed in the asserted patent, Nestlé’s engineer provided feedback that was implemented into the design, including the addition and deletion of...

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PTO Extends Time for Small and Micro Entities to Pay Certain Fees

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the US Patent and Trademark Office (PTO) extended the time for small and micro entities to make certain fee payments until September 30, 2020. Also pursuant to the CARES Act, the PTO waived the petition fees for petitions to revive until July 31, 2020. For small and micro entities only, the following fees due between, and inclusive of both, March 27, 2020, and September 29, 2020, will be considered timely if paid on or before September 30, 2020, if the payment is filed with a statement that the failure to timely pay the fee was due to the Coronavirus (COVID-19) outbreak: The basic filing fee, search fee, examination fee and late filing surcharge due in response to a PTO notice issued during the pre-examination processing Basic national fee Issue fee Maintenance fee. The PTO will also waive the petition fee under 37 CFR § 1.17(m) for petitions to revive filed by July 31, 2020, if the failure...

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Announcement: USPTO COVID-19 Prioritized Examination Program

The United States Patent and Trademark Office (USPTO) has announced a new prioritized examination program to expedite the examination of applications for marks used to identify qualifying COVID-19 medical products and services. Applications that qualify for the program will immediately be assigned to an examining attorney for review, which expedites examination by approximately two months. The USPTO will not charge additional fees for applications that qualify for the program because it considers the COVID-19 outbreak to be an “extraordinary situation” for trademark applicants. To qualify for prioritized examination, the trademark or service mark application must cover a product that is subject to the United States Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19, or a medical service (including medical research) for the prevention and/or treatment of COVID-19. The USPTO started accepting petitions to advance...

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Fee Shifting Under § 285 Does Not Apply to Conduct Solely Arising in IPR

Considering for the first time whether fee shifting of § 285 applies to exceptional conduct arising solely from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit held that § 285 does not authorize an award of fees based on conduct at the United States Patent and Trademark Office (USPTO) during the course of an IPR proceeding. Amneal Pharma. LLC v. Almirall, LLC, Case No. 2020-1106 (Fed. Cir. June 4, 2020) (Dyk, J.). Almirall owns certain Orange Book-listed patent rights to medication used to treat acne. Its competitor, Amneal, planned to market a generic version of the acne medication. Before seeking approval to do so, Amneal filed an IPR petition challenging the validity of certain claims of Almirall’s patents. Amneal then filed an Abbreviated New Drug Application (ANDA), identifying Almirall’s patents in the Paragraph IV certification. Almirall subsequently filed a district court action against Amneal for infringement....

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USPTO Proposes New Rules for Post-Grant Proceedings

The United States Patent and Trademark Office (USPTO) proposed changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB) in accordance with the 2018 Supreme Court decision in SAS Institute Inc. v. Iancu, IP Update, Vol. 21, No. 5 (SAS). Additionally, the USPTO proposed changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a Patent Owner response and reply may respond to a decision on institution. The USPTO further proposed a change to eliminate the presumption that a genuine issue of material fact created by the Patent Owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether...

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CBD Products in the Time of COVID-19: Best Practices for Making Your (Trade)mark

In the midst of an unprecedented and unsettling global pandemic, one constant remains: certain entrepreneurial-minded folks will not miss the opportunity to file trademark applications for new “brands” that align with the latest news cycle. COVID-19 is no different. The United States Patent and Trademark Office (USPTO) has experienced a swell of new US trademark applications for COVID-related trademarks, with many of the marks using descriptive terms or phrases that have become commonplace in a shelter-in-place, #wfh and social distancing world. Unfortunately for the applicants of these pandemic-related trademarks, very few are likely to achieve registration. In many cases, applicants of “news cycle” trademarks are unable to demonstrate the requisite bona fide intent to use a trademark, or they never get around to actually using the mark in commerce. In other cases, the USPTO might find a COVID-related trademark to be “merely descriptive” of the applied-for...

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Federal Circuit Confirms Color Marks of Certain “Character” Can Be Inherently Distinctive for Product Packaging

Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product packaging, and relied on Supreme Court precedent in concluding that color marks can be inherently distinctive when used on product packaging “depending upon the character of the color design.” In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. Apr. 8, 2020) (O’Malley, J.)[precedential]. Background Metalworking company Forney Industries, Inc., appealed a decision of the Trademark Trial and Appeal Board, which affirmed the USPTO Examining Attorney’s refusal to register Forney’s applied-for trademark consisting of a “solid black stripe …[atop]… the color yellow which fades into the color red… located on… packaging and/or labels” for various welding and machining goods. Citing an amalgamation...

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US Copyright Office, USPTO Act to Assist Those Affected by COVID-19

On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain statutory deadlines. Prior to the CARES Act, the USPTO and USCO had sought to provide relief to intellectual property owners by waiving certain fees (including, for example, fees associated with petitions to revive abandoned applications), but had been limited by their inability to modify statutory deadlines. The extensions will undoubtedly provide needed relief for certain rights holders during this tumultuous time. Nonetheless, if possible, adhering to original deadlines is the safest route, and parties should first carefully review the USPTO and USCO notices with a lawyer to determine whether the extensions are applicable and legally prudent. USPTO Section 12004 of the CARES Act allows the USPTO to...

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