Patent & Trademark Office/PTO Archives - Page 3 of 16

Patent & Trademark Office/PTO

PTO Seeks Permanent Rules Regarding Motion to Amend Practice Before Board

by Peter Brunovskis, PhD | Mar 14, 2024 | America Invents Act

On March 4, 2024, the US Patent & Trademark Office published a Notice of Proposed Rulemaking seeking to revise its Motion to Amend (MTA) pilot program practice in connection with certain America Invents Act (AIA) proceedings. 89 Fed. Reg. 15531 (Mar. 4, 2024). The PTO set a May 3, 2024, deadline for stakeholders to submit written comments in response to the proposed rules.

The MTA pilot program has evolved since its inception nearly five years ago and has been extended to September 16, 2024. The proposal seeks to make permanent certain provisions of the pilot program in response to the PTO’s May 2023 request for comments. The rules would apply to the existing consolidated set of rules relating to trial practice for inter partes review (IPR), post-grant review (PGR) and derivation proceedings in trial proceedings under the AIA.

Under the existing MTA pilot program, patent claims challenged during an AIA trial proceeding provide the patent owner with two options when proposing substitute claims in response to a petitioner’s opposition. The first option gives the patent owner the ability to file an MTA so that the Patent Trial & Appeal Board can issue preliminary non-binding guidance regarding the likelihood of an invalidation decision. The PTO proposes to revise its rules of practice to provide for the issuance of preliminary guidance in response to an MTA and to provide a patent owner with the option of filing one additional revised MTA.

The Board’s preliminary guidance typically would come in the form of a short paper issued after a petitioner files its opposition to the MTA and typically would provide the Board’s preliminary views on the MTA, specifically whether the MTA meets the statutory and regulatory requirements for an MTA, whether the parties have met their respective burdens of proof and whether the substitute claims are likely to be found unpatentable. However, the preliminary guidance would not be binding on the Board.

The proposed provisions would also provide the Board with greater authority to raise new grounds of unpatentability based on a preponderance of evidence standard. The new grounds of unpatentability could rely on the entirety of the record, including all prior art of record. The guidance would be accompanied by citations to the evidence in support of these new grounds. Further, where no opposition is filed or other circumstances constitute a lack of opposition, the prior art of record may further include references obtained from the PTO (i.e., examiners) in response to a request from the Board.

The proposed provisions would allow a patent owner to file a revised MTA after receiving a petitioner’s opposition to the original MTA or after receiving the Board’s preliminary guidance. Under the current pilot program, a revised MTA must be preauthorized for “good cause.” Under the revised provisions, the patent owner would be able to file a revised MTA without preauthorization. A revised MTA would replace the original MTA and must include new proposed substitute claims in place of the originally proposed claims. [...]

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New PTO Guidance: Use KSR Flexible Approach to Obviousness

by Peter Brunovskis, PhD | Mar 7, 2024 | Uncategorized

On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for obviousness determinations discussed by the Supreme Court in KSR Int’l. v. Teleflex (2007) and Graham v. John Deere Co. (1966) through the lens of post-KSR precedential Federal Circuit cases. The guidance does not have the force and effect of law and is not intended by the PTO to convey any new practice or procedure.

Drawing from more than 30 Federal Circuit cases, the guidance addresses several themes. An overriding theme concerns the implementation of a flexible approach to obviousness and the need for a reasoned explanation when concluding that a claimed invention would have been obvious. In its discussion, the PTO characterizes the flexibility expressed by the KSR court and reiterated by subsequent Federal Circuit cases as mandating a proper understanding of the scope of the prior art and providing appropriate reasons to modify the prior art.

Regarding the scope and content of the prior art, the guidance draws attention to understanding the prior art and all that it may reasonably suggest to a person of ordinary skill in the art (POSITA) who would naturally apply common sense and glean suggestions from the art – even where such suggestions are not explicitly stated. Thus, the obviousness inquiry need not seek out precise teachings regarding a solution to a technological problem but can take account of the inferences, creative steps and common knowledge that a POSITA would employ. In one precedential example, the Federal Circuit held that a POSITA would have combined certain prior art elements based on common knowledge of an industry’s concern for rider stability when using water recreational devices. (Zup v. Nash Mfg. (2018).) The guidance also affirms the need for an evaluation of analogous prior art, which must be evaluated using a flexible approach when considering the “same field of endeavor” and “reasonably pertinent” tests in combination with evidence concerning the knowledge and perspective of a POSITA.

According to the guidance, a flexible approach to obviousness should provide a reasoned explanation with evidentiary support for modifying the prior art. To facilitate compact prosecution, the examiner should clearly articulate this explanation early in the prosecution. The PTO also cautions that wholesale use of “common sense” as a rationale is no substitute for reasoned analysis and evidentiary support. There should be an explanation of why common sense would have compelled a finding of obviousness, especially where limitations are not expressly disclosed in the prior art.

The guidance further emphasizes that decision-makers are not free to ignore relevant evidence before them, including Graham’s secondary considerations or other objective indicia of obviousness, to establish prima facie obviousness. At the same time, conclusory opinions by an expert in a declaration or attorney argument alone should not be accorded weight in the absence of factual support. The guidance notes that in keeping with the flexible approach to obviousness [...]

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Not Admitted to PTO Bar? No Problem.

by Peter Brunovskis, PhD | Feb 29, 2024 | Uncategorized

On February 21, 2024, the US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking that would give parties the option to designate a non-registered practitioner as lead counsel in proceedings before the Patent Trial & Appeal Board. 89 Fed. Reg. 13017 (Feb. 21, 2024) (to be codified at 37 C.F.R. pt. 42).

37 CFR 42.10(a) currently requires each party to designate a lead counsel and at least one back-up counsel. The lead counsel must be a registered practitioner. Non-registered practitioners can serve as back-up counsel pro hac vice, but only upon a showing that they are an experienced litigating lawyer serving as back-up counsel and that they possess significant familiarity with the subject matter at issue. Permission for back-up status requires grant of a pro hac vice motion filed by counsel presenting specific statements of fact showing good cause for admission, as well as an affidavit or declaration by counsel attesting to good standing before the courts, familiarity with the PTO’s Patent Trial Practice Guide and the Board’s Rules of Practice for Trial set forth in part 42 of 37 C.F.R., and familiarity with the subject matter at issue.

The proposed changes to 37 C.F.R. 42.10 would:

Permit non-registered practitioners to serve as lead counsel for a party in Board proceedings as long as at least one other counsel designated to appear on behalf of the party is a registered practitioner.
Permit parties to proceed without back-up counsel upon a showing of good cause. A party may show good cause by demonstrating that it lacks the financial resources to retain both lead and back-up counsel.
Create a new streamlined procedure for pro hac vice recognition of Board-recognized practitioners. This procedure applies to non-registered practitioners who have previously been admitted pro hac vice in a different Board proceeding and have not been subsequently denied pro hac vice recognition in a different Board proceeding.
Clarify that those recognized pro hac vice have a duty to inform the Board if the information presented in a request for pro hac vice recognition is no longer accurate or complete.

The PTO seeks public comments on the proposed rulemaking by May 21, 2024, through the Federal eRulemaking Portal. Enter docket number PTO-P-2023-00587 on the homepage and select “search.”

For further details, click here.

No Home Away From Home: Federal Circuit Confirms PTO Domicile Requirements

by Anisa Noorassa | Feb 22, 2024 | Trademarks

The US Court of Appeals for the Federal Circuit confirmed the US Patent & Trademark Office’s (PTO) refusal to register a trademark based on the applicant’s failure to comply with the domicile address requirement of 37 C.F.R. §§ 2.32(a)(2) and 2.189. In re Chestek PLLC, Case No. 22-1843 (Fed. Cir. Feb. 13. 2024) (Lourie, Chen, Stoll, JJ.)

Chestek included only a PO box for its domicile address in its trademark application. The PTO found this information noncompliant with the domicile address rule, which requires trademark applicants to either have a domicile within the United States or be represented by US counsel. The PTO implemented the requirement in 2019 following a notice-and-comment period. Chestek appealed the PTO’s refusal to register based on the Administrative Procedure Act (APA) and challenged the processes surrounding implementation of the domicile address requirement.

Chestek first argued that the requirement was improperly instituted because the PTO failed to comply with the notice-and-comment rulemaking requirement under 5 U.S.C. § 533 by failing to provide notice of the domicile address requirement adopted in the final rule. However, the Federal Circuit held that the formalities of the notice-and-comment were not required under § 533(b)(A) because the rule was procedural, not substantive (i.e., effecting a change in existing law or policy that affects individual rights and obligations). As the Court explained, the rule did not affect the substantive trademark standards used during examination to evaluate applications but was simply an applicant information requirement.

Chestek next argued that the domicile address requirement was arbitrary and capricious because in implementing the final rule, the PTO “offered an insufficient justification for the domicile address requirement” and failed to consider important repercussions of the requirement, such as its effects on privacy. The Federal Circuit rebuffed that argument, explaining that the domicile requirement and the explanations given for it (determining whether the US attorney requirement applied) were “at least reasonably discernable.” The Court stated that as long as an agency does not give “almost no reason at all” for a new policy, the change is sufficiently justified and not arbitrary or capricious. The Court also noted that the APA does not require an agency to consider and respond to every impact of a proposed policy change.

PTO Continues to Wave Wands in Assessing Enablement

by Christopher M. Bruno | Jan 18, 2024 | Patents

In light of the 2023 Supreme Court of the United States decision in Amgen Inc. v. Sanofi, the US Patent & Trademark Office (PTO) published guidelines for PTO employees to use, regardless of technology, to ascertain compliance with the enablement requirement under 35 U.S.C. § 112. (89 Fed. Reg. 1563 (Jan. 10, 2024).) Unsurprising to those familiar with the Amgen decision, the PTO hewed closely to existing practice.

The PTO collected the Supreme Court’s clarifications regarding the relationship between the enablement requirement and an amount of experimentation, namely that although particular disclosure of all embodiments is not required, claims are not enabled if they require more than reasonable experimentation. Regarding the “reasonable experimentation” requirement, the PTO explained that consistent with several post-Amgen US Court of Appeals for the Federal Circuit opinions, it would continue to apply the factors that the Federal Circuit announced in its 1988 In re Wands decision.

Although the PTO intends to continue to rely on pre-Amgen Federal Circuit Wands analyses as instructive, it found particular persuasive force since the Federal Circuit’s decision was affirmed by the Supreme Court in Amgen. There, according to the guidance, the Federal Circuit concluded that the genus claims were not enabled because of the amount of experimentation required to test whether antibodies satisfied certain functional limitations. Thus, because “the scope of the claims was far broader in functional diversity than the disclosed examples, … [and] the invention was in an unpredictable field of science with respect to satisfying the full scope of the functional limitations, … there was not adequate guidance in the specification.”

The PTO also noted that the Federal Circuit’s 2023 Baxalta v. Genentech decision, like Amgen, found claims directed to antibodies that contained certain functional limitations to be invalid. There, the Court, like the PTO, detected no appreciable difference between the reasonable experimentation standard as articulated in Wands and the standard as set forth in Amgen. The guidance canvassed other post-Amgen enablement decisions, all of which the PTO read to support continued reliance on Wands.

Practice Note: Although the PTO says that it will continue to apply the Wands factors as it has before, the Amgen decision may, as a practical matter, make establishing enablement of functional limitations more difficult. Whether examiners—especially those in life sciences technology areas—change the course of their review post-Amgen remains to be seen.

PTO Creates Separate Design Patent Bar

by Amol Parikh | Dec 7, 2023 | Patents

The US Patent & Trademark Office (PTO) published its final rule, creating a separate design patent bar where admitted design patent practitioners will practice in design patent proceedings only. (88 Fed. Reg. 78644 (Nov. 16, 2023).)

Prior to this rulemaking, there was a single patent bar for those who practice in patent matters before the PTO, including in utility, plant and design patent proceedings. PTO regulations previously required that all patent bar practitioners pass a registration exam and possess specific and stringent scientific and technical qualifications, such as an engineering degree or substantial course work in physics, biology, chemistry or the like.

The new rule creates a separate design patent bar that still requires members to pass the current registration exam but permits applicants to have a bachelor’s degree, master’s degree or PhD in any of the following areas from an accredited college or university:

Industrial design
Product design
Architecture
Applied arts
Graphic design
Fine/studio arts
Art teacher education.

The new rules expanding the patent bar admission criteria are intended to encourage broader participation and to keep up with the ever-evolving technology and related teachings that qualify someone to practice before the PTO. Practitioners currently admitted before the PTO will not be impacted by the change and can continue to prosecute utility, plant and design patents.

The rule will take effect on January 2, 2024.

PTO Provides Guidance for Computer-Related Design Patent Applications

by Peter Brunovskis, PhD | Nov 30, 2023 | Patents

The US Patent & Trademark Office (PTO) published a notice regarding supplemental guidance for PTO personnel examining design patent claims containing computer-generated images. 88 Fed. Reg. 80277 (Nov. 17, 2023).

The guidance clarifies how to satisfy the article of manufacture requirement under 35 U.S.C. 171 for ornamental designs relating to computer-generated icons shown on a display panel, as discussed in Section 1505.01(a)(I) of the Manual of Patent Examining Procedure (MPEP). According to the guidance, “the mere display of a computer-generated electronic image . . . on a display panel does not constitute statutory subject matter under 35 U.S.C. 171.” However, a computer icon or a graphical user interface (GUI) shown on a display panel (e.g., a computer screen, monitor, computer display system, mobile phone screen or virtual/augmented reality goggles) is more than a mere display of a picture on a screen because it constitutes an integral and active component in the operation that is embodied in and/or applied to a programmed computer displaying the computer icon or the GUI. Thus, if a computer icon or GUI is properly presented and claimed (e.g., the drawing fully discloses the design as embodied in the article of manufacture), it is eligible under 35 U.S.C. 171.

In addressing the foregoing distinctions, the guidance sets forth specific standards for PTO personnel, including consideration of the complete disclosure when evaluating whether a design claim containing a computer-generated electronic image complies with the article of manufacture requirement. For example, given that computer icons or GUIs are considered to be two-dimensional images, which standing alone are surface ornamentation (i.e., an ornament, impression, print or picture), the guidance stipulates that the title and the claim should not be for a computer icon or a GUI alone, but rather an article of manufacture, such as a “display panel with a computer icon.” The guidance further provides examples of acceptable claim language and specific examination scenarios for evaluation.

PTO Proposes Rules Promoting Independence in Board Decision-Making

by Peter Brunovskis, PhD | Oct 19, 2023 | Uncategorized

Seeking to bolster the independence of administrative patent judge (APJ) panels when issuing decisions and increase transparency regarding Patent Trial & Appeal Board processes, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking concerning the pre-issuance internal circulation and review of decisions. Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board, 88 Fed. Reg. 69578 (Oct. 6, 2023)

The proposed rules were developed in response to a July 2022 request for comments and would refine and codify interim processes and standards that have been in place since May 2022. If adopted, the proposed rules would be codified as Section 43 in Title 37 of the Code of Federal Regulations (37 C.F.R. §§ 43.1-43.6) relating to Board proceedings pending under 37 C.F.R. §§ 41 and 42.

Under the rules in newly proposed §§ 43.3 and 43.4, prior to issuance of a decision by the panel, senior PTO management and non-management APJs at the PTO (as defined in § 43.2) would be barred from communicating, directly or through intermediaries, with any panel member (unless they were themselves panel members) regarding the decision. Limited communications would be permitted for procedural status and generally applicable paneling guidance that don’t directly or otherwise influence the paneling or repaneling of any specific proceeding. The proposed rules would not forbid a panel member from requesting input on a decision prior to issuance from non-panel senior APJs, however. The proposed rules would stipulate that it is within the panel’s sole discretion to adopt any edits, suggestions or feedback from non-panel APJs.

The proposed rules substantially follow the interim processes in place except for a change regarding pre-issuance circulation of decisions to a pool of non-management APJs, known as the circulation judge pool (CPJ). Under the interim process, certain categories of Board decisions are required to be circulated to the CPJ prior to issuance. Those decisions include all America Invents Act (AIA) institution decisions, AIA final written decisions, AIA decisions on rehearing, inter partes reexamination appeal decisions, designated categories of ex parte appeals, ex parte reexamination appeals and reissue appeal decisions and all Board decisions (including AIA and ex parte appeal decisions) following a remand from the US Court of Appeals for the Federal Circuit. Under the proposed rules, circulation to the CJP would be optional.

The PTO will accept comments until December 5, 2023, through the Federal eRulemaking Portal.

PTO Issues Oral Hearing Guide for Patent Trial & Appeal Board Proceedings

by Peter Brunovskis, PhD | Sep 28, 2023 | Uncategorized

On August 31, 2023, the US Patent & Trademark Office (PTO) published an Oral Hearing Guide to aid parties with oral arguments before the Patent Trial & Appeal Board. The newest Oral Hearing Guide updates the 2019 Oral Hearing Guide published on August 30, 2019, and is meant to be read in conjunction with the procedures set forth in the 2019 PTAB Trial Practice Guide.

The Oral Hearing Guide addresses the following topics:

PTO locations for oral hearings
Request for an oral hearing
Notification of hearing in ex parte and reexamination hearings
Notification of hearing in America Invents Act (AIA) trials
Authorized persons to present oral arguments
Attendance at hearings
Guidelines for counsel during argument.

With a few minor exceptions, the administrative processes and procedures largely mirror those set forth in the 2019 Oral Hearing Guide and the 2019 PTAB Trial Practice Guide. The key changes are summarized below.

A Request for Oral Hearing in ex parte and reexamination proceedings must be filed as a separate paper with the required fee paid within a non-extendable time period. The Board will issue a Notice of Hearing to the parties involved once a case has been scheduled for oral argument, typically eight weeks before the scheduled hearing session. The Notice of Hearing provides information about the scheduled hearing, including the date, time, location, appearance options and general information about the oral hearing procedures before the Board.

In trial proceedings under the AIA—i.e., inter partes reviews (IPRs), covered business method reviews (CBMs or CBMRs), post-grant reviews (PGRs) and derivations—each party to a proceeding is afforded an opportunity to present its case before at least three members of the Board and is notified of the date and location options of an oral hearing in a Scheduling Order. The Guide further elaborates on the processes for requesting an oral argument, including the issuance of the Notice of Hearing (or Scheduling Order) when an oral hearing is requested. The Scheduling Order notifies the parties of the finalized hearing date, time and location. Once the Board has issued a Hearing Order, parties requiring a different arrangement should contact the Board with their request.

The Guide stipulates that the parties should state in their respective requests for oral argument whether they prefer a video hearing or an in-person hearing, and for in-person hearings, which available location the party prefers. To the extent the parties disagree, they should meet and confer. If the dispute cannot be resolved by meeting and conferring, the parties should inform the Board of each party’s individual preferences. The Board will notify the parties of its decision in accordance with current office policy.

The Guide further provides updated information stipulating that optional demonstrative exhibits must be marked with the words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer and further elaborates on the procedures for parties to request pro hac vice admission for non-registered patent practitioners to participate in proceedings. Finally, the Guide discusses [...]

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Don’t Ruin Today’s CNS with Yesterday’s Problems

by Benjamin Ediger, Ph.D. | Aug 10, 2023 | Trademarks

The US Court of Appeals for the Fifth Circuit reversed a district court’s trademark invalidity finding based on lack of subject matter jurisdiction because a covenant not to sue (CNS) issued by the trademark owner precluded any reasonably expected future injury that the alleged infringer might incur. Nursery Decals & More, Inc. v. Neat Print, Inc., Case No. 22-10065 (5th Cir. Aug. 1, 2023) (Haynes, Engelhardt, JJ.; deGravelles, Dist. J., sitting by designation) (per curiam).

Neat Print and Nursery Decals sold novelty t-shirts on online marketplaces. In 2018, Neat Print notified one of the online marketplaces that Nursery Decals’ products allegedly infringed Neat Print’s trademarks. In response, the online marketplace sent Nursery Decals a final warning threatening a site ban for any future violations. Nursery Decals complied with the warning and also preemptively pulled its products from other online marketplaces.

Nursery Decals sued Neat Print in the Northern District of Texas. Most of Nursery Decals’ claims were directed to invalidating Neat Print’s trademarks or obtaining a noninfringement judgment. Nursery Decal also included three claims seeking damages. One was a federal claim for fraud on the US Patent & Trademark Office (PTO). The other two claims were Texas law claims based on tortious interference with an existing business relationship and a prospective business relationship. The district court ultimately granted summary judgment on all of the trademark-related claims, ordering the PTO to cancel all of the disputed trademarks.

Prior to the district court’s summary judgment grant, Neat Print tried to avoid summary judgment by filing a CNS along with a motion to dismiss for lack of subject matter jurisdiction. The district court denied the motion to dismiss, concluding that the CNS did not moot the case. The district court explained that Neat Print’s CNS did not address Nursery Decals’ past and potential future injuries (i.e., Nursery Decals’ damages claims). The district court also found that Neat Print’s CNS did not meet the high standard set forth in the Supreme Court’s 2013 decision in Already, reasoning that Neat Print’s CNS left the door open for future take-down notices based on the disputed trademarks.

Neat Print amended its CNS to address take-down notices. It then filed a motion to reconsider its motion to dismiss in light of the modified CNS. The district court orally denied the motion at the pretrial conference and ordered that the case proceed to trial. The jury ultimately found no liability on both claims. After the trial, the district court issued a written opinion explaining that it rejected Neat Print’s motion for reconsideration because Nursery Decals had a legally cognizable injury that supported subject matter jurisdiction. While Neat Print had defeated all of Nursery Decals’ damages claims, Neat Print appealed the district court’s judgment with respect to the trademark claims, arguing that the district court failed to properly evaluate subject matter jurisdiction on a claim-by-claim basis in view of Neat Print’s CNS.

The Fifth Circuit agreed with Neat Print, finding that the district court committed two errors. First, the district [...]

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