USPTO News

• The USPTO published Revision 07.2022 of the Ninth Edition of the Manual of Patent Examining Procedure (MPEP).  A change summary is available here.
• The USPTO is now accepting nominations for the 2023 National Medal of Technology and Innovation (NMTI) through May 26.  The NMTI, which is bestowed by the President of the United States, is the nation’s highest honor for technological achievement.  USPTO Director Kathi Vidal wrote a post on the Director’s Blog discussing past NMTI Laureates.
• Chair of the USPTO’s Trademark Public Advisory Committee (TPAC) and Assistant Vice President Senior Legal Counsel, Trademarks & Copyrights of AT&T Services, Inc. David Cho and TPAC chair and co-chair of Knobbe Martens Trademark and Brand Protection Group Susan Natland wrote a guest blog on the Director’s Blog detailing “key takeaways” from the TPAC’s activities in 2022 and “what [to] expect in 2023.”
• On April 18, 2023, the USPTO will begin issuing the official copy of patents in an electronic format (referred to as “eGrants”) to reduce paper waste (FAQs available here).  Both electronic and paper copies will be issued during a short transition period, after which a paper copy will be available only upon payment of an additional fee through the USPTO’s certified copy center. 
• The USPTO will rename the Public Search Facility after pioneering Black patent examiner Henry E. Baker.
• Assistant Regional Director of the Midwest Regional Office of the USPTO James O. Wilson wrote a guest post on the Director’s Blog on “[a]dvocating for and supporting diversity, equity, and inclusion at the USPTO” during Black History Month.
• Rebekah Oakes, Acting Historian at the USPTO, wrote a guest post on the Director’s Blog on Black innovation.
• On February 16, USPTO Director Kathi Vidal offered remarks at the Patents for Humanity: COVID-19 awards ceremony.
• On February 23, the USPTO and the National Oceanic and Atmospheric Administration (NOAA) announced a collaboration to promote green technology.  The two agencies will exchange employees on detail to assist with training and other initiatives, including the NOAA Technology Partnership Office and the USPTO’s green initiatives.
• Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office Derrick Brent wrote a guest post on the Director’s Blog regarding efforts to “connect[] entrepreneurs with government resources at CES” (the Consumer Electronics Show) in 2023.
• USPTO Director Kathi Vidal wrote a post on the Director’s Blog on EquIP HQ—an educational resource on intellectual property for K-12 students and educators.

Notices, Guidance, and Requests

• Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights, 88 Fed. Reg. 30 (February 14, 2023) (extending period for public comments for a second time to February 28, 2023)
• Sixth Extension of the Modified COVID–19 Prioritized Examination Pilot Program for Patent Applications, 88 Fed. Reg. 30 (February 14, 2023).
• Request for Comments Regarding Artificial Intelligence and Inventorship, 88 Fed. Reg. 30 (February 14, 2023) (USPTO is “seeking stakeholder input on the current state of AI technologies and inventorship issues that may arise in view of the advancement of such technologies, especially as AI plays a greater role in the innovation process.”).
• National Medal of Technology and Innovation Nomination Evaluation Committee Meeting, 88 Fed. Reg. 37 (February 24, 2023) (providing notice that the National Medal of Technology and Innovation (NMTI) Nomination Evaluation Committee will meet in a closed session on March 13, 2023).
• Joint USPTO–FDA Collaboration Initiatives; Notice of Public Listening Session and Request for Comments, 88 Fed. Reg. 37 (February 24, 2023) (extending “comment period for the notice published 87 FR 67019” to March 10, 2023).

Final Rules

• USPTO Officially Transitions to Issuing Electronic Patent Grants in 2023, 88 Fed. Reg. 39 (February 28, 2023).

Interim Rules

• There are no interim rules.

Proposed Rules

• There are no proposed rules.

Legislation

• On February 9, 2023, the Senate Committee on the Judiciary ordered the Interagency Patent Coordination and Improvement Act of 2023 to be reported without amendment favorably.  The bill would “establish an interagency task force between the United States Patent and Trademark Office and the Food and Drug Administration for purposes of sharing information and providing technical assistance with respect to patents, and for other purposes.”

PTAB Decisions

• New Precedential PTAB Decisions
  • CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (February 27, 2023) (designated: February 27, 2023) [ordering rehearing, vacating decision granting institution, and remanding proceeding; permitting the Board to consider “compelling merits” question under Fintiv only if evaluation of the first five Fintiv factors favor discretionary denial; and requiring the Board to provide sufficient reasoning and explanation regarding “compelling merits” to permit review]
  • Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (February 24, 2023) (designated: February 24, 2023) [granting rehearing and modifying the Final Written Decision, addressing the treatment of multiple dependent claims under pre-AIA 35 U.S.C. § 112 ¶5 in AIA review proceedings]
  • Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (designated: February 10, 2023) [holding expert declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning]
• New Informative PTAB Decisions
  • There are no new informative PTAB decisions.

New Requests for POP Review

• Samsung Elecs. Co., Ltd. v. Commc’n. Techs., Inc. (IPR2022-01221) [Requesting POP review of Institution decision presenting the question of which party has the burden to demonstrate that a third party is a real party-in-interest and what inferences can be applied at the decision on institution on the burden to demonstrate real party-in-interest]
• Google LLC v. Valtrus Innovations LTD (IPR2022-01197) [Requesting POP review of Institution Decision, presenting the question of “[w]hether it is an abuse of the Board’s discretion under § 325(d) to deny institution of a ground based on a reference submitted in an IDS and initialed by the Examiner, but otherwise not discussed during prosecution, without considering whether the ground demonstrates that the Office materially erred in granting the challenged claims over the reference?”]
• Flowco Prod. Solutions, LLC v. Well Master Corp. (IPR2022-01386) [Requesting POP review of Institution Decision, requesting clarification regarding (1) “the interaction between the presumptions against disclaimer and the presumptions against excluding preferred embodiments” and (2) “the weight and consideration of patent owner expert testimony that contradicts the prior art, particularly at the institution stage before petitioner has a right to respond.”]
• Mylan Pharms., Inc. v. Bausch Health Ireland Ltd. (IPR2022-01102, -01103, -01104, and 01105) [Requesting POP review of Institution Decisions, requesting clarification that: (1) “A specific motivation is not required when a general motivation exists for a class of compounds,” (2) “[a]ttorney speculation without even an assertion of contrary fact is not sufficient to avoid trial,” (3) “[a] pre-institution reply should not be denied without understanding the basis of the request,” and (4) “[t]he Office should not overturn its own previous finding without any showing.”]
• Flowco Prod. Solutions, LLC v. Well Master Corp. (IPR2022-01384, -01385) [Requesting POP review of Institution Decision, requesting clarification regarding “the role of expert testimony in IPR proceedings before the Board” including how to weigh expert testimony used “to contradict disclosures in the prior art, particularly at the institution stage when Petitioner has no right to respond, would set a very problematic precedent.”]
• PNC Bank, NA v. USAA (IPR2021-01073) [Requesting POP review of Final Written Decision, presenting the questions of:
  • (1) “Whether the Board erred in limiting its evaluation of ‘the scope and content of the prior art’ and ‘differences between the prior art and the claims at issue’ to the particular prior art references asserted by Petitioner as part of an obviousness combination, as opposed to the prior art as a whole reflecting the full field of the invention, as admitted by the Petition itself.”
  • (2) “Whether the Board, when making findings of fact that are inconsistent with findings of fact made by a prior Board panel, must explain why the previous Board findings were clearly in error. Administrative Patent Judge Chang (who authored the Final Written Decision in the prior IPR2019-01082 proceeding where the claims were found not to be unpatentable) was removed from the panel shortly before the decision on institution. See IPR2021-01073, Paper 19 (Jan. 13, 2022).”
  • (3) “Whether the Board erred in assigning zero weight, in its assessment of obviousness, to testimony from Petitioner’s expert opinions in District Court proceedings that directly contradict the positions taken in the Petition.”]
• PNC Bank, NA v. USAA (IPR2021-01070) [Requesting POP review of Final Written Decision, presenting the questions of:
  • (1) “Whether the Board erred in limiting its evaluation of ‘the scope and content of the prior art’ and ‘differences between the prior art and the claims at issue’ to the particular prior art references asserted by Petitioner as part of an obviousness combination, as opposed to the prior art as a whole reflecting the full field of the invention, as admitted by the Petition itself.
  • (2) “Whether the Board, when making findings of fact that are inconsistent with findings of fact made by a prior Board panel, must explain why the previous Board findings were clearly in error. Administrative Patent Judge White (who was a panelist in the prior IPR2019-01082 proceeding where the claims were found not to be unpatentable) was removed from the panel shortly before the decision on institution. See IPR2021-01070, Paper 19 (Jan. 13, 2022).”
• Roku, Inc. v. Intent IQ, LLC (IPR2022-01236) [Requesting POP review of Institution Decision presenting the questions of:
  • (1) “Whether a new test adopted by the Board for motivation to combine analysis is contrary to established law because it requires Petitioner to show that a primary reference of the combination would require the teachings of a secondary reference? and” (emphasis in original)
  • (2) “Whether the Board may in institution decisions, consistent with its judicial role and requirements of due process—immune from appellate review—adopt a new and dispositive legal test more restrictive even than the teaching-suggestion-motivation (TSM) standard test that the Supreme Court, in KSR, found improperly transformed the general principles of the obviousness analysis into a rigid rule.”]
• Roku, Inc. v. Universal Elecs. Inc. (IPR2021-00263) [Requesting POP review of Institution Decision presenting the question of whether the Board should reconsider its decision to institute a Petition for Inter Partes Review initially denied institution 18 months prior where there is a co-pending reexamination requested by Petitioner instituted on the same grounds as in the IPR and where Patent Owner has already responded to an Office action by adding 60 new claims]