Posts Tagged: "rulemaking"

Recently, the USPTO published a Notice of Proposed Rulemaking (NPRM) to change the “Trial Practice at the Patent Trial and Appeal Board,” which is contained in Part 42 of Title 37 of the Code of Federal Regulations. This is the fifth rule change since the Patent Trial and Appeal Board (PTAB) was created and the second of Director Iancu’s tenure. The first rules were issued on September 16, 2012, the one year anniversary of the America Invents Act. David Kappos was Director at the time. The first rules were controversial and heavily biased against inventors.

Last week, Professor Andrew Michaels published an article with IPWatchdog commenting on Facebook v. Windy City and the U.S. Patent and Trademark Office’s claim for Chevron deference for precedential decisions of the Patent Trial and Appeal Board (PTAB). While I agree with his ultimate conclusion, “the PTAB cannot speak with the force of law through adjudication even on issues where it has the authority to do so through regulation,” I disagree with the path he took to get there. I’ve written extensively on the topic (see the bibliography is at the bottom of this article). Of my articles, the most relevant is The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions. More recently, I filed an amicus brief in Facebook. In my view, PTAB precedential decisions can be eligible for Chevron deference in only the rarest of circumstances:  the PTAB is the wrong entity in the USPTO to engage in rulemaking, the PTAB doesn’t follow the procedures required by statute and executive order for rulemaking, and the PTAB doesn’t have access to the personnel within the USPTO that are necessary for rulemaking.

In February 2019, the U.S. Patent and Trademark Office (USPTO) instituted a rulemaking with the goal of reducing the number of fraudulent or inaccurate trademark applications. USPTO data shows that there has been a significant increase in applications from China, and many of those applications appear to be fraudulent or inaccurate. The USPTO therefore proposed new rules designed to address the problem. The Notice of Proposed Rulemaking (NPRM) stated that the new rules would add a requirement that applicants, registrants, or parties to a Trademark Trial and Appeal Board proceeding who are not domiciled in the United States be represented by a U.S. attorney in good standing. The USPTO received comments on the new rules and published the final rules on July 2, 2019. Nothing about the rulemaking seemed out of the ordinary. However, the shoe dropped with the publication of a new Examination Guide 4-19 on August 2. Not only did foreign applicants need to have lawyers, according to the guide, but every applicant and registrant had to provide a physical street address for the application, regardless of whether they were represented.

The U.S. Patent and Trademark Office is working on developing a rule that would require foreign trademark applicants and registrants to be represented by a U.S. licensed attorney when filing trademark documents with the USPTO. The rule will enter a public comment period in November, when the Office plans to issue a notice of proposed rulemaking on the new requirement. The public comment period will end in February leading up to a final action next June which will become effective in July 2019.

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.

In this Executive Order, President Trump orders the heads of each agency to designate a Regulatory Reform Officer (RRO) within 60 days. In addition to the designation of a Regulatory Reform Officer, the Patent Office (along with many other agencies) will be required to create a Regulatory Reform Task Force, which will be made up of the RRO, the agency Regulatory Policy Officer, a representative from the USPTO’s central policy office, and at least three other senior level USPTO officials as determined by the Director of the USPTO. When considering the recommendations of the Regulatory Reform Task Force, the agency head has been told to prioritize those regulations identified as being outdated, unnecessary, or ineffective.

While calls for widespread patent reform are not as loud as they have been in previous years, 2017 is shaping up to be a year where we may still see significant change to U.S. patent laws. What will the changes to U.S. patent laws look like over the next year? The better question may be to first ask whether those anticipated changes will be coming from the judiciary, legislative or executive branch, all of which will take center stage at some point in 2017.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today issued a notice of proposed rulemaking (NPRM) proposing to set or adjust certain patent fees, as authorized by the Leahy-Smith America Invents Act (AIA). The proposed fees are projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board (PTAB) operations, and administrative services. The Office welcomes comments on both the individual patent fee proposals and the rulemaking goals and objectives. The Office will consider and respond to all comments received, during the public comment period, in the final rule, which the Office expects to publish in 2017.

The U.S. Patent and Trademark Office recently issued an updated set of rules affecting trial practice before the Patent Trial and Appeal Board. In large part, the rules, which went into effect on May 2, 2016, were implemented as proposed on August 20, 2015. In particular, they modify the prior rules governing inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings that implemented provisions of the America Invents Act providing for trials before the Office.

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.

USPTO proposed rule changes would amend the existing rules relating to trial practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered business method patents (CBM), and derivation proceedings. By in large, the Office decided to stick with BRI, but not when the challenged patent will soon expire. The USPTO also adopted the comments from those who expressed satisfaction with the Board’s current rules and practices for motions to amend, which means there will be a right to file a motion to amend but no right to amend if these proposed rules go final.