{1 minute to read}  In May 2020, due to the Covid-19 outbreak, the U.S. Patent and Trademark Office (USPTO) issued a Notice in which it facilitated the requirements to file plant applications. The Notice has not been modified and is still valid to this day, thus, it is still possible to file plant applications and follow-up documents via the USPTO electronic filing systems. The requirements to file plant applications are outlined in the Notice available below:

Relief Available to Plant Patent Applicants in View of the COVID-19 Outbreak

Silvia Salvadori, PhD Salvadori Law Silvia@salvdorilaw.com

{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 Salvadori Law Silvia@salvdorilaw.com

Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office (USPTO) has terminated engagement with officials from Russia’s agency in charge of intellectual property, the Federal Service for Intellectual Property (commonly known as Rospatent), and with the Eurasian Patent Organization. The USPTO has also terminated engagement with officials from the national intellectual property office of Belarus.

Due to the COVID-19 Emergency, the United States Patent and Trademark Office (USPTO) has announced extensions (read more here) to the time allowed to file certain patent- and trademark-related documents, as well as payment of certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27, 2020. Read the press release for more information.

The Safe Harbor Provision of 35 U.S.C. § 271(e)(1) states that:

“It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site-specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.”

In a recent infringement case, Amgen v. Hospira, the allegedly infringed patents related to cells that stimulate the creation of red blood cells in anemia patients and a method of preparing erythropoietin (EPO). 

{1:30 minutes to read} In the case of Cuozzo Speed Technologies vs Lee, decided on June 20, 2016, the Supreme Court unanimously approved the United States Patent and Trademark Office’s (USPTO) decision to use the “broadest reasonable interpretation” (BRI) as a standard for claim construction in Inter Partes Review Proceedings (IPR). The Court also held that the decision whether to institute an IPR is not subject to a judicial review.  

Cuozzo had argued that the IPR proceedings were like trials and that, therefore, the claim construction should have followed the same, narrowed, standard of “plain and ordinary meaning” used by the courts during litigation. But the Court disagreed. The Court found that the post-grant proceedings at the USPTO are less like judicial proceedings and more like a specialized agency proceedings.

So what now? After this ruling, my advice is that any patentee should strongly consider submitting strong preliminary responses to IPR petitions. I recommend this because decisions to institute the proceedings will very likely not be appealable, and the challengers will have less burden to prove unpatentability of the claims under the BRI standard.

Please contact me with questions or comments at silvia@salvadorilaw.com.

Silvia Salvadori, PhD
www.salvadorilaw.com
www.salvadorilaw.com/blog silvia@salvadorilaw.com (212) 897-1938

{3 minutes to read} The United States Patent & Trademark Office (USPTO) is considering changing the rules for filing an Information Disclosure Statement (IDS).

The current rules require:

(1) a certification or the payment of a fee for filing an IDS after a first office action on the merits;

(2) a certification and the payment of a fee, or a Request for Continued Examination (RCE) for filing an IDS after a final office action; or

(3) a certification, the payment of a fee, and an RCE to obtain consideration of an IDS after a notice of allowance.

The new proposed rules will provide for consideration and the possibility of filing an IDS after the first office action on the merits, until the issue fee is paid with increased payment, depending upon when, during the prosecution of the case, the IDS is filed.

For example, consider the fees for large, small, and micro entities:

• If the IDS is filed up to 3 months from the filing date or until the issuance of a first office action on the merits, as of now, no fee is required. After the first office action on the merits, but before the notice of allowance, the new rules propose a payment of $300 for a large entity, $150 for a small entity, and $75 for a micro entity.

• If the IDS is filed after the notice of allowance but before the payment of the issue fee, the fees double, so they would be $600 for a large entity, $300 for a small entity, and $150 for a micro entity. And if the IDS is filed after the issue fee is paid, but before the patent is granted, the fees would remain at $600, $300, and $150.

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{2:30 minutes to read} On June 15, 2015, the United States Patent and Trademark Office (USPTO) implemented the Expedited Patent Appeal Pilot Program.

The program is designed to cut into the backlog of ex parte patent appeals by speeding up the process for applicants.

The average time for a decision to be reached on an ex parte appeal is almost two-and-a-half years right now. While the program is expected to cut this time down significantly, it is unclear exactly how long the expedited process will take per appeal.

Ex parte appeals are generally taken up by the Patent Trial and Appeal Board in the order in which they are filed. The Expedited Patent Appeal Pilot Program will allow an applicant with multiple pending ex parte appeals to select any one of them for expedited review, if the following criteria is met:

• The applicant agrees to withdraw another one of his or her pending appeals;
• The applicant waives an oral hearing for the appeal that is selected for expedited review; and
• Both the appeal selected for expedited status and the appeals that were not chosen had a docketing notice mailed on or before June 19, 2015.

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{Read in 3:05 minutes} The Supreme Court just issued a landmark ruling in the case Commil USA v Cisco Systems, holding that a good faith belief that a patent is invalid is not a viable defense to inducement of its infringement. The decision strikes a huge blow against Cisco and is certain to have major implications for patent infringement cases in the future.

While the 6-2 decision was not exactly unexpected, it nonetheless was striking in that it overturned a major ruling from U.S. Court of Appeals for the Federal Circuit. The case began in 2010 when Commil USA sued Cisco for alleged infringement of its patent covering its special method for providing faster wireless internet access. Commil won a $64 million verdict at the trial level, but the judgment was overturned by the Court of Appeals after it agreed with Cisco that it was unfairly prevented from presenting evidence that it believed in good faith that the patent at issue was invalid. The Supreme Court’s decision now effectively invalidates this line of argument. Continue reading

{3:25 minutes to read} In light of the decision by the U.S. Court of Appeals for the Federal Circuit in Novartis AG v. Lee, The United States Patent and Trademark Office (USPTO) has revised the rules pertaining to patent term adjustment. Based on this court decision, many future U.S. patents may be entitled to a longer term, generally from a few days to a few months.

In Novartis, the Federal Circuit reversed the District Court ruling and remanded for a redetermination of proper patent term adjustment (PTA) determination. The Federal Circuit affirmed Novartis’s position that the USPTO had incorrectly calculated the B delay in situations where a Request for Continuing Examination (RCE) is submitted during prosecution. Continue reading