“Were patent filings for FY2019 an anomaly in a trend of decrease in patent filings, or was the decrease in filings from FY2019 to FY2020 a repercussion of the pandemic? It will be interesting to see what classifications will have declined/increased as applications are published over the next year and a half.”
Novel and non-obvious can be easily used to describe the events of 2020, both here in the United States and around the world. Despite all the challenges, there have been positive developments in the way we conduct business—and that certainly was true at the U.S. Patent and Trademark Office (USPTO).
Below we recap some of the most significant developments at the USPTO in 2020 and topics to keep an eye on in 2021.
The USPTO’s Response to the COVID-19 Pandemic
The pandemic pervaded every aspect of our lives and did not spare innovation and intellectual property. The USPTO recognized that many were impacted, through lockdowns, financial hardship, or illness, by the pandemic and undertook several initiatives accordingly, as have other patent offices throughout the world. The USPTO announced various programs throughout the year, from fee deferrals to waiving handwritten signatures to even putting together a licensing platform for COVID-19 related patents.
Beginning in March, the USPTO began conducting all meetings and interviews by video or telephone and closed all offices to the public. The USPTO then released a notice allowing those affected by the coronavirus to file a petition to revive an abandoned patent or trademark application. The last vestige of handwritten signatures for certain correspondence with the Office of Enrollment and Discipline was waived. As the pandemic worsened, the USPTO announced free prioritized examination for COVID-19 related applications for small and micro entities. Over 300 patent applicants and 170 trademark applicants have requested prioritized examination. The USPTO also announced deferred filing fees for provisional applications related to COVID-19.
Additionally, the USPTO announced a platform, Patents4Partnership, for listing COVID-19 related patents for potential license or other use. While the website has been populated with 892 patents over the last seven months, it appears that the website has not been well-utilized, as most of these patents are still available. The USPTO has announced similar COVID-19-related trademark programs.
In 2021, the USPTO has promised the implementation of new patent examination programs, such as the Patents End-to-End (PE2E) Search Tool, an AI-based auto-classification system, and continuation of the Peer Search Collaboration Pilot program.
Patent Filings and Trends for 2020
Mitigating the effects of the pandemic on innovation was a goal of the USPTO, particularly for those directly affected. FY2019 saw an increase in utility applications by a little over 3% as compared to filings of utility applications from FY2016 through FY2018. However, as expected, filings for FY2020 have decreased, with 603,764 utility applications, which is closer to the FY2017 numbers. It is also worth noting that requests for continued examination (RCEs) were down significantly, by about 13,000 under last fiscal year’s total.
While the number of utility filings were down, the number of design patent application filings were up by about 1,800 in FY2020 over FY2019.
Current data shows that filings in October 2020 are down in comparison to October 2019 and October 2018. Were filings for FY2019 an anomaly in a trend of decrease in patent filings or was the decrease in filings from FY2019 to FY2020 a repercussion of the pandemic? It will be interesting to see what classifications will have declined/increased as applications are published over the next year and a half.
The Federal Circuit has continued to hold that state sovereignty does not apply to inter partes proceedings. The USPTO is undertaking a study regarding which IP rights holders are experiencing infringement by state entities without adequate remedies under state law, and the extent to which such infringements appear to be based on intentional or reckless conduct. Public comments were due December 21, 2020. Look for a report from the USPTO at some point in FY2021.
Trademark Filings and Trends for 2020
Despite the pandemic, trademark filings were up about 10% over the last fiscal year. While some business segments struggled, online retail and technology continue to grow.
For example, several of the applicants with the most trademark filings for 2020 were major retailers, such as Walmart, Amazon, and Target, to name a few. In particular, while the trademark filings for the first two quarters for FY2020 were at or below FY2019 numbers, the final quarter for FY2020 was the largest filing quarter for the USTPO ever, with about 247,000 filings, and putting FY2020 over the highest FY trademark filing in the history of the USPTO. Registrations were up slightly from 396,000 to a little over 400,000.
Further, the USPTO continues to attempt to fight scams and misleading solicitations by continuing to highlight their third-party solicitation program, along with the World Intellectual Property Organization (WIPO). The USPTO recently launched an anti-counterfeiting campaign, in conjunction with the National Crime Prevention Council.
In addition, the USPTO U.S. counsel rule appears to be helping to reduce illegitimate filings and a MyUSPTO.gov account is now required to file a trademark. Other projects appear to still be in development to prevent fraudulent filings, such as an AI-assisted image matching database to detect re-use of the same images.
For 2021, look out for increased trademark fees. The USPTO has announced a series of increases, some of them significant. For example, filing an electronic trademark application form now will cost $250-350, up from $225-275. A petition to the director will cost $250 to file, up from $100, and the USPTO has added a $50 fee for filing a letter of protest. The Trademark Trial and Appeal Board also has added $200 fees for filing an appeals brief and $500 for requesting an oral hearing.
Similar to the initiatives on the patent side, the USPTO is bringing more search tools to the game—an Image Search tool and an Automated Specimen Analysis Project. as of now, examination of a patent or trademark application continues to be a human endeavor, similar to invention.
Here’s to keeping the best of 2020 and moving forward to a productive year of innovations in 2021.