PTAB/USPTO Update - October 2024

• David Cavanaugh, Heather Petruzzi, Brian Lambson, Alexander Nemtzow
• 10.7.2024

USPTO News  

• On October 2, the USPTO terminated proceedings in approximately 3,100 patent applications due to the fraudulent entry of S-signatures of registered practitioners by others. The final order noted that improper use of a practitioner’s signature constitutes a violation of the duty of candor and good faith under 37 C.F.R. § 1.56 and a submission of papers for an improper purpose under 37 C.F.R. 11.18(b)(2)(i).

• On September 30, the USPTO announced a final rule on the process for Director Review of Leahy-Smith America Invents Act (AIA) proceedings.  The rule provides the opportunity to seek Director Review of any decision on institution, final decision, decision granting rehearing of a decision on institution or final decision, or any other decision concluding an AIA proceeding.

• On September 25, 2024, the USPTO provided notice of a recent coding error that impacted the calculation of patent term adjustment (PTA) determinations for patents issued between March 19, 2024 and July 30, 2024.  Affected Patentees may submit a request for reconsideration under 37 C.F.R. 1.705(b).

• On September 23, the USPTO announced the Create and Innovate Tour, which highlights the impact of Patent and Trademark Resource Centers (PTRCs).  Upcoming tour stops include the grand opening of new PTRCs at Arizona State University, Northern Arizona University, and Mississippi State University.

• On September 9, the Partnership for Public Service awarded USPTO Director of Emerging Technology and Chief Artificial Intelligence Officer Jerry Ma the Samuel J. Heyman Service to America Medal® in recognition of his service, for pioneering the use of artificial (AI) tools for the patent examination process, and for his role in forming policies on the intersection of AI and intellectual property.

• On September 5, the USPTO recognized the 25th anniversary of the founding of the USPTO’s Public Advisory Committees in a post on the Director’s Blog. 

Notices

• Extension and Termination of the After Final Consideration Pilot Program 2.0, 89 FR 79899 (October 1, 2024) (extending the After Final Consideration Pilot Program 2.0 through December 14, 2024, at which point the program will be terminated).

• Extension of the Patent Trial and Appeal Board Motion To Amend Pilot Program, 89 FR 76091 (September 17, 2024) (extending the USPTO’s Motion to Amend pilot program through March 31, 2025).

• 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 89 FR 76090 (September 17, 2024) (“extending the comment period for the notice titled ‘2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence’ that was published in the Federal Register on July 17, 2024”).

• The USPTO sent Information Collection Requests to the Office of Management and Budget (OMB) regarding Patent Maintenance Fees, Qualitative Feedback on Agency Service Delivery, Trademark Petitions, Third-Party Submissions and Protests, Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions, and Recording Assignments. The USPTO invites comments on these information collection renewals, which help the USPTO assess the impact of its information collection requirements and minimize the public's reporting burden. Public comments were previously requested via the Federal Register. These notices allow for an additional 30 days for public comment.

Final Rules

• Rules Governing Director Review of Patent Trial and Appeal Board Decisions, 89 FR 79744 (October 1, 2024) (formalizing Director Review process, which can be requested for any decision on institution, final decision, decision granting rehearing of a decision on institution or a final decision, or other decision concluding an AIA proceeding, or instituted sua sponte by the USPTO Director).

• Rules Governing Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 89 FR 76421 (September 18, 2024) (“mak[ing] permanent certain provisions of the Office’s motion to amend pilot program (MTA pilot program) and [] revis[ing] the rules that allocate burdens of persuasion in connection with motions to amend (MTAs)”).

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

Legislation

• No updates on proposed legislation.

PTAB Decisions

• New Precedential PTAB Decisions

  • There are no new precedential PTAB decisions.

• New Informative PTAB Decisions 

  • There are no new informative PTAB decisions.

• New Director Review Decisions 

  • There are no new director review decisions.