General

24Mar 2023

The United States Patent and Trademark Office (USPTO) published a final rule in the Federal Register on August 3, 2020, that includes a fee for patent applications that are not filed in the DOCX format. The fee only applies to non-provisional utility applications and not to design, plant, or provisional applications.

The effective date of this new fee was most recently delayed in a final rule published in the Federal Register on December 29, 2022 and was scheduled to become effective on April 3, 2023. Through a new final rule, the USPTO is delaying the effective date of this fee until June 30, 2023.

The USPTO is committed to ensuring a successful and smooth transition to the DOCX format for patent applicants. You can find the full text of the final rule in the Federal Register and on the USPTO’s Patent Related Notices webpage

17Mar 2023

On April 18, the United States Patent and Trademark Office (USPTO) will begin issuing electronic patent grants (eGrants) rather than paper patents.

Part of this changeover involves modifying the Issue Fee Transmittal form (PTOL-85B) and its web-based version. The form no longer allows for advance orders of patent copies, because patents may be printed directly from Patent Center when issued. Advance orders for copies of patents issuing on or after April 18 will not be processed.

Additionally, since eGrants may be issued shortly after paying the issue fee and sooner than applicants are accustomed to, the PTOL-85B form includes a reminder to file any continuing application prior to issue-fee payment so as not to jeopardize copendency. The newly modified form can be found here

02Mar 2023

To further advance its information technology strategy of achieving complete, beginning-to-end electronic processing of patent-related submissions, the United States Patent and Trademark Office (USPTO) has issued a final rule to require that patent term extension (PTE) applications, interim PTE applications, and any PTE-related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system. This change reduces the administrative burden on PTE applicants and improves administrative efficiency by facilitating electronic file management, optimizing workflow processes, and reducing processing errors. The full text of the final rule is available at the Federal Register and on the USPTO’s Patent Related Notices webpage.

27Feb 2023

Beginning April 18, 2023, the U.S. Patent and Trademark Office (USPTO) is shifting towards issuing paper waste-reducing electronic patent grants (eGrants) to patent recipients—a new process that delivers the official copy of patent grants in an electronic format. A bound paper version as a ceremonial copy throughout a limited transition period will be provided, and then for a nominal fee thereafter. 

“By issuing eGrants, the USPTO is making considerable strides toward more environmentally-conscious operations at the USPTO,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Providing 21st century service to our stakeholders means shifting our processes to reflect 21st century policies. The eGrant process not only minimizes paper waste, but it also benefits stakeholders by reducing pendency and streamlining the process. It’s a win-win for the agency and for our customers.”

The eGrant process significantly decreases USPTO’s printing and mailing needs, potentially reducing patent pendency, and saving the agency nearly $2 million in annual printing and mailing costs. Further, under the new process, patent recipients will receive their electronic patent grant in PDF format on the day of issuance.

During the transition period, patent awardees will have access to the eGrant official copy in Patent Center and receive the bound paper version as a ceremonial copy. Patent recipients may still request USPTO certified copies and presentation copies from the USPTO’s certified copy center for an additional fee. Unlimited free copies of eGrants can also be printed from USPTO’s online Patent Center. The agency already provides electronic trademark registration certificates to trademark owners.

For more information, read the full Federal Register Noticeor visit the eGrant webpage on the USPTO website, where you can find our eGrant FAQ document and additional information.

05Jan 2023

Effective immediately, small entities are entitled to a 60% discount (up from a 50% discount) and micro entities are entitled to an 80% discount (up from a 75% discount). The new fee schedule can be found at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule.

New penalties, however, are set forth for false assertions.

Under the new law, “ an entity that is found to have falsely asserted entitlement to a fee reduction under this section shall be subject to a fine, to be determined by the Director, the amount of which shall be not less than 3 times the amount that the entity failed to pay as a result of the false assertion, whether the Director discovers the false assertion before or after the date on which a patent has been issued.” It should be kept in mind that there is a duty to investigate entitlement to claim small entity status, which must be verified before small entity status is first claimed (e.g., when paying discounted filing fees), again when the issue fee payment is made, and again when each maintenance fee payment is made.

29Dec 2022
The United States Patent and Trademark Office (USPTO) published a final rule in the Federal Register on August 3, 2020 that includes a fee for patent applications that are not filed in DOCX format, except for design, plant, or provisional applications. This new fee was scheduled to become effective on January 1, 2023. Through this final rule, the USPTO is delaying the effective date of this fee until April 3, 2023. The USPTO has held and continues to hold many discussions with stakeholders to ensure a fair and reasonable transition to the DOCX format.  This final rule is effective December 29, 2022. The change to 37 CFR 1.16(u) in amendatory instruction 2.i., published at 85 FR 46932 on August 3, 2020, is applicable only to nonprovisional utility applications filed under 35 U.S.C. 111 on or after April 3, 2023. You can find the full text of the final rule in the Federal Register and on the USPTO’s Patent Related Notices webpage.
13Dec 2022

{3 minutes to read}  The Climate Change Mitigation Pilot Program is designed to positively impact the climate by accelerating the examination of patent applications for innovations that reduce greenhouse gas emissions. Under this program, qualifying applications involving greenhouse gas reduction technologies are advanced out of turn (granted special status) for examination until a first action on the merits — typically the first substantive examination — is complete. 

For qualifying applications, the applicant does not incur the “petition to make special” fee and is not required to satisfy the other requirements of the accelerated examination program. 

The United States Patent and Trademark Office (USPTO) will accept petitions to make special under this program until June 5, 2023, or the date when 1,000 applications have been granted special status under this program, whichever occurs first. This program aligns and supports the USPTO’s efforts to secure an equitable economic future, reduce greenhouse gas emissions, and mitigate the effects of climate change.

Requirements:

Applications must contain one or more claims to a product or process that mitigates climate change by reducing greenhouse gas emissions.

This Program Is Open To:

•Non-continuing original utility nonprovisional applications; and 

•Original utility nonprovisional applications that claim the benefit of the filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) of only one prior application that is either a nonprovisional application or an international application designating the United States.

Note: Claiming the benefit under 35 U.S.C. 119(e) of one or more prior provisional applications or claiming a right of foreign priority under 35 U.S.C. 119(a)-(d) or (f) to one or more foreign applications will not affect eligibility for this pilot program.

The application or national stage entry must be electronically filed using the Patent Center, and the specification, claims, and abstract must be submitted in DOCX format.

Applicants must file the petition to make special with the application or entry into the national stage under 35 U.S.C. 371 or within 30 days of the filing date or entry date of the application. The fee for the petition to make special under 37 CFR 1.102(d) has been waived for this program.

Petition Filing Limitations: 

Applicants may not file a petition to participate in this pilot program if the inventor or any joint inventor has been named on more than four other nonprovisional applications in which a petition to make special under this program has been filed.

All other requirements and conditions of this program are provided in the 2022 Federal Register notice for the program.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Silvia@salvdorilaw.com
Please contact me at silvia@salvadorilaw.com with questions or comments.
11Oct 2022

{4 minutes to read}  In a recent case, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute that limits the availability of PTA for time spent appealing an Examiner’s rejections only. 

The portion of the PTA statute at issue says:

[I]  the issue of an original patent is delayed due to . . .

(iii) Appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision under review reversing an adverse determination of patentability, the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

PTA for this type of delay is referred to as “Type C” PTA.

The Courts analyzed two issued patents. The District Court held that the “…unambiguous language imposes two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issues as a patent as a result of that reversal.” Applying this interpretation to the prosecution history of the patents at issue, the district court held that no Type C PTA was due.

The Federal Circuit generally agreed with the District Court’s interpretation of the PTA statute as being in accordance with its “unambiguous language.” Thus, the Federal Circuit only reviewed the record to assess whether the “two requirements” for Type C delay were met:

1. Was an adverse determination of patentability reversed?

2. Did the application issue a patent as a result of that reversal?

Concerning the first patent, the court acknowledged that the Board held one of the claims unpatentable, but for reasons different than those discussed by the examiner during prosecution. According to the Federal Circuit, what matters for Type C PTA is that “[t]he adverse determination of unpatentability remained before and after the appeal.”

The Federal Circuit also agreed with the District Court’s second reason for denying PTA — The statutory requirement was not met because the claim that was ultimately issued differed substantively from the claim under review.

Turning to the second patent, the Federal Circuit again rejected the plaintiff’s arguments and reiterated that the PTA statute requires reversal of “an adverse determination of patentability,” not just a reversal of individual rejection(s). Even though the District Court reversed the anticipation rejection of claim 1, the claim remained unpatentable after the appeal because of the pending obviousness-type double patenting rejection. Thus, the first prong of the Type C PTA test was not met.

The Federal Circuit also found the second patent to fail the second prong of the Type C PTA test, because “[t]he patent, as issued, did not include the claim as appealed.” Rather, as noted above, the plaintiff canceled the claim and obtained claims based on a different claim set.

According to this decision, for a Type C PTA to be available, it is not sufficient to obtain reversal of specific rejections; a claim that was unpatentable before the appeal must be patentable after the appeal, and the claim that ultimately grants must not differ substantively from the claim on appeal. This suggests that applicants should consider structuring their appeals such that reversal of the appealed rejections will result in the allowability of at least some claims.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Silvia@salvdorilaw.com
Please contact me at silvia@salvadorilaw.com with questions or comments.
30Aug 2022

{3 minutes to read}  In a recent case, the Federal Circuit found that the claim language at issue was ambiguous, and relied on the prosecution history for claim construction without requiring the prosecution history to reveal a “clear and unmistakable disclaimer” of the plain meaning of the claims.

Claim 1 is representative of the claims of the case:

  1. A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising topically applying to the skin a composition consisting of a concentration of adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, wherein the adenosine concentration applied to the dermal cells is 10-4 M to 10-7 M.

The patent specification described human skin as a surface layer called “the epidermis” with a deeper layer called “the dermis.” Claim 1 described applying a composition to the skin surface topically, reaching a certain concentration in the dermal cells below the surface.

The Federal Circuit reviewed the claim construction de novo, and in this case noted that the relevant claim language was not plain on its face, but rather contained evident uncertainties that weighed against the plaintiff’s construction. On the other hand, the court found that the specification and prosecution history showed that the “wherein” clause should have been read to refer to the concentration of adenosine in the composition applied to the skin’s surface. According to the Federal Circuit, the specification described compositions having adenosine concentrations of 10-4 M to 10-7 M.

The specification did not describe specific numerical molar concentration figures … after penetration through the skin into the dermis, or a measurement of concentration as an amount of adenosine per unit of volume of dermal cells.

The last clause was added during prosecution based on a dependent claim.

The applicants distinguished the invention from prior art references “in which concentrations are measured before application to the skin, with no suggestion of a difference in the location of concentration measurement.”

The examiner’s reasons for allowance stated: The “[i]nstant claims are directed to a method of enhancing the condition of unbroken skin . . . where the method comprises administering adenosine, at a concentration of 10-4 M to 10-7 M, to the skin.”

Thus, the Federal Circuit concluded that the prosecution history required that the wherein clause’s reference to the recited concentrations being applied to the dermal cells be read as referring to concentrations of the composition applied to the skin’s surface.

In conclusion, if applicants have specific concerns about the examiner’s reasons for allowance, they should consider filing comments to clarify the record.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Silvia@salvdorilaw.com
Please contact me at silvia@salvadorilaw.com with questions or comments.
27Jul 2022

{4 minutes to read}  To further support the acceleration of innovations in the fight against COVID-19, the United States Patent and Trademark Office (USPTO or Office) is extending the modified COVID-19 Prioritized Examination Pilot Program, which provides a prioritized examination of certain patent applications. Requests that comply with the pilot program’s requirements and are filed on or before December 31, 2022, will be accepted. The USPTO will evaluate whether to terminate or further extend the program during this extension period.

The COVID-19 Track One Notice indicated that an applicant may request a prioritized examination without payment of the prioritized examination fee and associated processing fee if:

  1. The patent application’s claim(s) covered a product or process related to COVID-19.
  2. The product or process was subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use, and 
  3. The applicant met other requirements noted in the COVID-19 Track One Notice.

As of May 16, 2022, 261 patents had been issued from applications granted prioritized status under the pilot program. The average total pendency, from the filing date or later submission of a request for continued examination, to the issue date for those applications was 280 days. The shortest pendency from filing to issue date for those applications was 75 days.

The Third Extension Notice indicated that the pilot program would expire on June 30, 2022. In the current notice, the USPTO is further extending the pilot program by setting the expiration date as December 31, 2022. The Office will evaluate whether to terminate or further extend the program during this fourth extension period. If the USPTO determines that an additional extension of the pilot program is appropriate, the Agency will publish a subsequent notice to the public. 

COVID-19 Prioritized Examination Pilot Program Description:

  • Applications must contain one or more claims to a product or process related to COVID-19.
  • Such claimed product or process must be subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use.
  • The request must include a certification that the applicant qualifies for either small or micro entity status and an executed Application Data Sheet (ADS) meeting the requirements of 37 CFR 1.53(f)(3)(i).
  • Applicants must file a grantable request under this initiative using the USPTO patent electronic filing system (EFS-Web or Patent Center) if filing the request in a utility application.
  • Applicants should use Pilot Program Form PTO/SB/450 to request participation in the pilot. 

The pilot is open to non-continuing, original, nonprovisional utility or plant patent applications filed with an acceptable request to participate original, nonprovisional utility or plant applications making a benefit claim under 35 U.S.C. 120, 121, or 365(c) to one prior nonprovisional application or one prior international application designating the United States filed with an acceptable request to participate utility or plant applications, including the national stage of a prior international application, in which an acceptable request to participate has been filed with or after a request for continued examination (RCE) if no prior RCE was granted prioritized examination status. 

The fees set forth in 37 CFR 1.17(c) and (i)(1) are not required to participate in the program. Any application that claims the benefit of the filing date of two or more previously filed non-provisional U.S. applications or international applications designating the United States under 35 U.S.C. 120, 121, or 365(c) is not eligible for participation in this pilot but the applicant may request prioritized examination under 37 CFR 1.102(e).

Benefit claims to one or more prior provisional applications under 35 U.S.C. 119(e) or foreign priority claims under 35 U.S.C. 119(a)-(d) or (f) will not cause a non-provisional application to be ineligible for this pilot.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Silvia@salvdorilaw.com
Please contact me at silvia@salvadorilaw.com with questions or comments.