USPTO News

• On June 7, the USPTO released its 2022-2026 Strategic Plan. According to the USPTO, the new plan outlines the USPTO's mission-focused strategic goals, which are: (1) driving inclusive U.S. innovation and global competitiveness; (2) promoting the efficient delivery of reliable intellectual property (IP) rights; (3) promoting the protection of IP against new and persistent threats (4) bringing innovation to impact for the public good; and (5) generating impactful employee and customer experiences by maximizing agency operations. 
• On June 20, the comment period closed on the USPTO's Advanced Notice of Proposed Rulemaking relating to Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board. The comments can be found here. 

Notices, Guidance, and Requests

• Request for Comments Regarding the Motion To Amend Pilot Program and Rules of Practice To Allocate the Burdens of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 88 FR 33063 (May 23, 2023) (Requesting comments by July 21, 2023 regarding the PTAB’s Motion to Amend (MTA) Pilot Program and rules related to amendments during PTAB proceedings)
• Extension of the Option for Submission of a PDF With a Patent Application Filed in DOCX Format, 88 FR 37036 (June 6, 2023) (Extending the option until further notice for patent applicants to upload a backup PDF version of a patent application with a DOCX version)
• Request for Comments on Southeast Regional Office and Community Outreach Office Locations, 88 FR 38847 (June 14, 2023) (Requesting comments by July 11, 2023 regarding the establishment of an additional regional office in the southeast region (VA, NC, SC, GA, FL, TN, AL, MS, LA, AR) and four new community outreach offices)
• Interim Reduction of Certain Fees Paid to the USPTO in its Capacity as an International Searching Authority or International Preliminary Examination Authority under the Patent Cooperation Treaty (PCT), 1511 OG 231 (June 13, 2023) (Accepting reduced payments for certain fees for small and micro entity fees paid to the USPTO between December 29, 2022 and January 17, 2023 in the USPTO’s capacity as an International Search Authority (ISA) or International Preliminary Examining Authority (IPEA))
• Study of the Patent Pro Bono Programs; Request for Comments; Extension of the Comment Period, 88 FR 42046 (June 29, 2023) (Extending the deadline to submit comments to August 11, 2023 regarding topics related to the study of the patent pro bono programs)

Final Rules

• Setting and Adjusting Patent Fees During Fiscal Year 2020, 88 FR 36956 (June 6, 2023) (Delaying the implementation of a fee for patent applications that are not filed in the DOCX format until January 17, 2024)
• Standardization of the Patent Term Adjustment Statement Regarding Information Disclosure Statements, 88 FR 39172 (June 15, 2023) (Requiring patent term adjustment statements regarding information disclosure statements be submitted on a USPTO form using the appropriate document code)

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

Proposed Legislation

• Patent Eligibility Restoration Act of 2023 (Legislation proposed by Senators Chris Coons (DE) and Thom Tillis (NC) that proposes amendments to patent eligibility under 35 U.S.C. § 101)
• Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (Legislation proposed by Senators Chris Coons (DE), Thom Tillis (NC), Dick Durbin (IL) and Mazie Hirono (HI) that proposes various amendments to the American Invents Act (“AIA”) such as adding a standing for inter partes review (“IPR”) petitioners, applying estoppel when an IPR petition is filed, and prohibiting reexamination requests after there is a Board decision that upholds the validity of patent claims)

PTAB Decisions

• New Precedential PTAB Decisions
  • There are no new precedential PTAB decisions.
• New Informative PTAB Decisions
  • There are no new informative PTAB decisions.
• Director Review Decisions
  • SolarEdge Technologies Ltd. v. SMA Solar Technology AG (IPR 2020-00021) (Director granting sua sponte director review and finding that the Patent Owner forfeited the ability to argue that applicant admitted prior art (“AAPA”) was not “known” in the art and AAPA was not available for use in the IPR)
  • Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC (IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857, and IPR2021-00860) (Director granting sua sponte director review to address a Sanctions Order that issued an adverse judgment against the Patent Owner because the Patent Owner, through its counsel, failed to meet its duty of candor and fair dealing before the PTAB) 

New Requests for POP Review

• There are no noteworthy POP Review Requests from June 2023.