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Posts Tagged: "federal register"

USPTO Publishes Final Rule Codifying Significant Trademark Fee Increases

The USPTO recently published a Final Rule setting new fees for trademark filings and TTAB proceedings, which will be effective January 2, 2021. The last time trademark fees were adjusted was about three years ago. The increases range from modest to fairly substantial. To file an application using the TEAS Plus option, the fee has increased from $225 per class to $250 per class, and the processing fee for failing to meet the TEAS Plus requirements has been reduced from $125 per class to $100 per class. However, the fee for TEAS Standard per class has jumped $75, from $275 to $350, which many trademark owners who commented found unreasonable.

USPTO Seeks Comments on Discretion to Institute Trials Before the PTAB

On October 20, the United States Patent and Trademark Office (USPTO) published a “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” in the Federal Register. In particular, the USPTO is considering the codification or modification of its current policies and practices with respect to instituting trials before the Office under the Leahy-Smith America Invents Act (AIA). The Office submitted a proposed rulemaking to the White House’s Office of Management and Budget (OMB) last month with the aim of formalizing recent practices under precedential opinions including Apple Inc. v. Fintiv, Inc; General Plastic Industries Co. Ltd. v. Canon Kabushiki Kaisha; and Becton, Dickinson & Co. v. B. Braun Melsungen AG.

U.S. Copyright Office Publishes Federal Register Notice Announcing State Sovereign Immunity Study

On June 3, the U.S. Copyright Office published a Federal Register notice regarding a study it is initiating to “evaluate the degree to which copyright owners are experiencing infringement by state entities without adequate remedies under state law, as well as the extent to which such infringements appear to be based on intentional or reckless conduct.” The Office requested public input in the form of written comments on or before August 3, 2020 to assist the Office in preparing a report to Congress on the study.

New DMCA Exemptions Including Use of Motion Picture Clips in Narrative Films for Parody or Historical Significance

One of the new exemptions for motion pictures includes the expansion of the exemption of TPMs protecting motion picture clips on DVDs, Blu-Rays and streaming services to include fictional films; the prior exemption only protected documentary filmmakers circumventing TPMs on those tech platforms to capture movie clips. Fictional filmmakers are now able to circumvent TPMs on the same platforms where the circumvention is intended to capture a clip for use in parody or where the clip is significant for biographical or historical reasons.

USPTO Announces Access to Relevant Prior Art Initiative to Import Prior Art Citations into Patent Applications

The USPTO recently announced the implementation of the first phase of the Access to Relevant Prior Art (RPA) Initiative. The initiative is being designed to reduce the burden placed upon patent applicants to comply with their duty of disclosure through the use of automated tools which import relevant prior art and other pertinent information into pending U.S. patent applications as quickly as possible.

USPTO Publishes Final Rule Adopting Phillips Standard at PTAB

The United States Patent and Trademark Office (USPTO) has published a final rule in the Federal Register changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings before the Patent Trial and Appeal Board (PTAB). This final rule replaces the broadest reasonable interpretation standard the USPTO has used to interpret claims since AIA administrative trial proceedings came online effective September 16, 2012 with the Phillips standard, which is the same claim construction standard used to construe patent claims in patent infringement litigation in federal district courts.

Patent Office amends PTAB Trial Practice Rules

Last week, on Friday, April 1, 2016, the United States Patent and Trademark Office published a final rules in the Federal Register. These newly minted final rules, which become effective on May 2, 2016, amend the existing trial practice rules pertaining to inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review, and derivation proceedings brought into being by provisions of the America Invents Act (AIA). In a nutshell, these new rules change existing practice by allowing new testimonial evidence to be submitted with a patent owner’s preliminary response, adding a Rule 11-type certification for papers filed in a proceeding, allowing a claim construction approach that emulates the approach used by a district court following Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) for claims of patents that will expire before entry of a final written decision, and replacing the current page limit with a word count limit for major briefing.

Defending the USPTO Interpretation of the New Grace Period

The questions asked of the USPTO, and specifically Director Kappos, related to the USPTO interpretation of the grace period in 102(b)(1)(B). At one point, in response to a question, Direct Kappos responded: “We are reading the words just the way that Gene Quinn suggested in his comment.” I do not claim that everything below is in 100% alignment with the USPTO interpretation, but I write now to expand upon my remarks. We have a first to file system with an American flavor, not a first to publish system as so many seem to think.

USPTO Publishes Proposed First to File Examination Guidelines

For well over a year I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Disclosures of third-parties who independently arrived at the invention will be used against the inventor. Now that the USPTO has come out with examination guidelines we find out the truth. I was right all along.

The Patent Twilight Zone: Keeping Significant Innovations Secret

It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key. Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.

Recent Patent Related Federal Register Notices

At this time of the year many attorneys and agents are not paying all that much attention to the rules and requests for comments coming out of the Patent Office. Truthfully, with the number of changes that have taken place under the Kappos run Patent Office and the enormity of the America Invents Act many patent attorneys, including myself, are worn out! Add to that the typical end of the year matters for clients and our own businesses and it is easy to miss announcements in November and December.

USPTO Seeks Comments on Future Locations for Satellite Offices

The USPTO sees the establishment of satellite offices as an important component of their continued efforts to recruit and retain a highly skilled workforce, reduce patent application pendency and improve quality, and enhance communication between the USPTO and the patent applicant community. It is easy to understand why satellite offices would enhance efforts to recruit and retain patent examiners, after all there is a limited pool of technically sophisticated applicants and employees willing to locate in Northern Virginia and endure the ridiculous traffic, among other things. Thus, satellite offices should make a position as a patent examiner more attractive, at least if locations such as Denver or California are considered, as they should be.

US Patent Office Proposes Adopting Therasense Standard

In view of Therasense, the Patent Office is proposing to revise the materiality standard for the duty to disclose information to the Office in patent applications and reexamination proceedings. It is the belief of the Patent Office that the Therasense standard will reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, thereby reducing the incentive for applicants to submit marginally relevant information to the Office. Thus, the Therasense standard should curtail the practice of filing Information Disclosure Statements that refer to boxes full of prior art that is of marginal significance, allowing patent examiners to focus on that prior art that is most relevant. The USPTO adopting the Therasense standard could, as a result, lead to improved patent quality and even a streamlining of prosecution in at least some cases.

USPTO to Revise Reexam Practice, Is Patent Reform Dead?

The United States Patent and Trademark Office (USPTO) is seeking public comment on a proposal to streamline the procedures governing ex parte and inter partes patent reexamination proceedings. The timing of this announcement, which appeared in the Federal Register on April 25, 2011, seems curious to me. With patent reform circulating in the House of Representatives does this signal a belief that on the part of the Patent Office that patent reform is dead? The patent reform passed by the Senate and that being considered by the House has revised post-grant review proceedings, so wouldn’t it be wise to wait to revamp reexamination until after patent reform passes, that is if it seems likely to pass?

U.S. Patent Office Issues Supplementary 112 Guidelines

Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.