Preparing for the European Unitary Patent System

The European Unitary Patent system is expected to (finally) take effect in late 2022 or early 2023. The system will include two elements: (1) a Unitary Patent Right (UPR), which is a single registration that will apply in multiple countries with no separate validation requirement; and (2) the Unified Patent Court (UPC), in which a patent holder may enforce a patent in multiple European countries in a single proceeding.

My partner Kari Barnes and I recently wrote an article describing what clients need to know to prepare for the European Unitary Patent system. For full details and our client alert on the topic, see the article that is available at this link.

Russia decrees patent owners from the U.S. and other “unfriendly countries” not entitled to compensation for compulsory licenses

The Russian government has issued a decree that has the potential to render Russian patents worthless for many applicants from outside of Russia.

The decree, issued March 5, 2022, states that for Russian patents owned by entities from the U.S., the European Union, and other “unfriendly countries”, the patent holder will be entitled to “0%” compensation in situations where the Russian government compels the patent holder to license the patent. While the Russian government has used compulsory licensing only on rare occastions to date, there is no assurance that this will be the case in the future.

In addition, a law passed in Russia on March 8, 2022 gives the Russian government authority to suspend all IP rights during the year 2022 for specifically listed goods. As of the date of this writing, it is not clear whether the Russian government has named any goods to such a list.

Finally, Russia’s Ministry of Economic Development is reported to be considering lifting restrictions on unauthorized use of non-Russian-owned copyrights and trademarks for certain goods, such as software.

The list of 48 “unfriendly countries” includes Albania, Andorra, Anguilla, Australia, British Virgin Islands, Canada, European Union member states, Gibraltar, Great Britain, Iceland, Japan, Liechtenstein, Micronesia, Monaco, Montenegro, New Zealand, North Macedonia, Norway, San Marino, Singapore, South Korea, Switzerland, Taiwan, Ukraine, and the United States.

[NOTE: This post has been updated to correct the description of Russian decree No. 299.]

End of an era: USPTO proposes to phase out hard copy patent and trademark certificates

As part of its plan to modernize the U.S. intellectual property registration system, the U.S. Patent and Trademark Office (USPTO) plans to stop issuing patent and trademark certificates in hard copy format. In a recent blog post, USPTO Director Drew Hirshfeld announced that the USPTO will soon publish a proposed rule to eliminate the USPTO’s regulatory obligation to mail a paper copy of the patent to the correspondence address of record.

The USPTO expects the new rule to speed up patent grants by reducing the time required for publication. Under the new rule, patents will issue electronically within one week after the patent number is assigned.

The USPTO’s trademark regulations do not require the USPTO to mail trademark registrations in hard copy form. Nonetheless, the USPTO plans to issue a notice and seek public comment on this procedural change before applying it to trademarks, too.

When the new rule takes effect, patent applicants who plan to file a continuation application before a patent grants will need to take extra care, as less time will be available between the issue fee payment date and the patent grant date. As a best practice, applicants should try to file the continuation before they pay the issue fee, as they will lose the opportunity to file a continuation when the patent grants.

The USPTO’s announcement indicated that hard copies of patents and trademarks, with an embossed gold seal and the Director’s signature, will still available to registrants who request them and pay an extra fee.

How long does U.S. patent and trademark prosecution take? (2021 edition)

The USPTO recently released its FY 2021 Performance and Accountability Report, which contains detailed information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this Report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question:

Patents: In Fiscal Year (FY) 2021, for the first time in nine years, the USPTO’s average time to first action increased, to 16.9 months in FY 2021 (compared to 14.8 months in FY 2020). The average total pendency — that is, the time from filing to either grant or abandonment — remained steady at 23.3 months.

The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) inventions had an average wait time of 17.0 months to first action, and an average total pendency of 24.0 months;
  • chemical and materials engineering (USPTO Technology Center 1700) inventions had an average wait time of 18.8 months to first action, and an average total pendency of 26.7 months;
  • computer architecture, software and information security (USPTO Technology Center 2100) inventions had an average wait time of 17.5 months to first action, and an average total pendency of 25.6 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) inventions generally waited 15.7 months to first action, and had an average total pendency of 22.9 months;
  • communications technologies (USPTO Technology Center 2600) inventions once again had the shortest average wait times — 13.5 months to first action, and an average total pendency of 19.9 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2800) inventions experienced an average wait time of 15.7 months to first action, and an average total pendency of 22.3 months;
  • e-commerce, transportation, construction, and agriculture technologies (USPTO Technology Center 3600) inventions had an average wait time of 18.1 months to first action, and an average total pendency of 25.9 months; and
  • mechanical engineering and manufacturing technologies (USPTO Technology Center 3700) inventions encountered an average wait time of 18.6 months to first action, and an average total pendency of 26.7 months.

The total number of nonprovisional patent applications remained flat at approximately 651,000 in FY 2021. The number of provisional patent applications dropped by 9.2% to a five-year low of 158,334, which may signal that a decrease in nonprovisional patent application filings will occur next year.

374,000 patents issued in FY 2021, which is a decrease from the 2020 number bit similar to the 2019 number. The overall allowance rate for patent applications remained steady at 61.8%.

Trademarks: In FY 2021 the average time from filing to first Office Action in a trademark application more than doubled from the previous year, with the average wait time now 6.3 months to first action. Average total pendency was 11.2 months for applications that were not opposed or suspended during prosecution. which is an increase of nearly 3 months compared to FY 2020 numbers.

The longer wait time can be attributed to an unprecedented increase in new trademark application filings. Specifically, in FY 2021 the total number of trademark applications was 943,928, which is a nearly 28% increase compared to the FY 2020 statistic, and a 40% increase when compared to the number of filings made in FY 2019.  The USPTO plans to address this by better leveraging artificial intelligence and automation in the examination process, which the USPTO expects will increase examination efficiency.

New Federal Circuit decision finds packet monitoring patent claims eligible under Section 101

For the first time since 2020, the Federal Circuit issued an opinion finding claims of a computer-related invention to be eligible. Although designated as non-precedential, the case may signal a key claim feature that the court will look for in future Section 101 cases involving computer-related inventions.

In Mentone Solutions LLC v. Digi International Inc. (Nov. 15, 2021), the court reversed the District Court of Delaware’s finding that the claims of U.S. Patent 6,952,413 are invalid. The court focused on claim 5 of the patent, which is directed to a “multiple access communication method in a mobile station”.  The claim requires the steps of:

  • monitoring an assigned PDCH [(packet data channel)] to detect a USF [(uplink status flag)], and
  • (i) if shifted USF operation is not used then a first assigned PDCH is monitored to detect a USF corresponding to the first assigned PDCH and (ii) if the shifted USF operation is used then a second assigned PDCH is monitored to detect the USF corresponding to the first assigned PDCH and a USF corresponding to the second assigned PDCH.

The district court noted that claim 5 does not recite “when, how, or why one would . . . shift the USF or how a shifted USF would specifically improve the functioning of a prior art system.” On this basis, the district court found the claim to be ineligible.

On appeal, the Federal Circuit reversed, finding that “claim 5 is directed to a patent-eligible improvement to computer functionality, namely permitting additional multislot configurations for certain classes of mobile stations using extended bandwidth allocation.”

Notably, quoting its April 2020 Uniloc USA Inc. v. LG Electronics USA, Inc. decision, the Federal Circuit stated: “To the extent either the Appellees or the district court believe claim 5 must expressly mention the additional timeslots available or enabled by this achievement, they are mistaken. ‘Claims need not articulate the advantages of the claimed combinations to be eligible.’”

The Federal Circuit also contrasted the claims of this patent with those that it held ineligible in a previous case (Two-Way Media Ltd. v. Comcast Cable Communications), noting that in the past case “[w]e held the claims ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,”  “monitoring,” and “accumulating records”) using ‘result-based functional language’ without the means for achieving any purported technological improvement. … Here, there is no functional claiming, nor are there abstract steps.’”

The court’s quote from its Uniloc decision may signal that that in future cases, the court (or at least the judges on this panel) will more closely assess whether claims merely cite a result or a technical means of achieving the result, and the Uniloc decision (which is precedential) may become prominent in future cases.

H1-B cap registration opens March 9

Tech companies and other employers note: H1-B cap registration opens March 9, 2021.

Full details are available at this blog post by my partner Catherine Wadhwani, published on Fox Rothschild’s Immigration View .

How long does a U.S. patent or trademark application take to grant? (2020 edition)

The USPTO recently released its FY2020 Performance and Accountability Report, with contains helpful information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question:

Patents: In 2020 the USPTO’s eight-year trend of reducing patent application pendency continued to trend downward. The average time from filing to first action was 14.7 months. The average total pendency — that is, the time from filing to either grant or abandonment — was 23.3 months. Both of these numbers were slightly below last year’s averages. The numbers also exceeded the USPTO’s goals.

The wait times varied based on the USPTO Technology Center that reviewed the application. The breakdown by technology included:

  • biotechnology and organic chemistry (USPTO Technology Center 1600) had an average wait time of 13.3 months to first action, and an average total pendency of 22.6 months;
  • chemical and materials engineering (USPTO Technology Center 1700) had an average wait time of 16.8 months to first action, and an average total pendency of 26.9 months;
  • computer architecture, software and information security (USPTO Technology Center 2100) had an average wait time of 16.0 months to first action, and an average total pendency of 26.5 months;
  • networks, multiplexing, cable and security (USPTO Technology Center 2400) generally waited 12.9 months to first action, and have an average total pendency of 23.1 months;
  • communications technologies (USPTO Technology Center 2600) had the shortest average wait times — 11.4 months to first action, and an average total pendency of 29.2 months;
  • semiconductors, electrical systems and optical systems (USPTO Technology Center 2700) had an average wait time of 13.1 months to first action, and an average total pendency of 21.1 months;
  • transportation, construction, agriculture and e-commerce technologies (USPTO Technology Center 3600) had an average wait time of 16.7 months to first action, and an average total pendency of 26.4 months; and
  • mechanical engineering and manufacturing technologies (USPTO Technology Center 3700) had an average wait time of 17.7 months to first action, and an average total pendency of 28.0 months.

The total number of nonprovisional patent applications filed dropped by about 2%, to 653,311 in 2020. However, the number of provisional patent applications increased by about 3% to an all-time high of 174,464.

399,055 patents issued in FY 2020, also an all-time high of 665,231.  The allowance rate increased to 61.7%.

Trademarks: In FY 2020 the average time from filing to first Office Action in a trademark application was 3 months. Average total pendency was 9.5 months for applications that were not opposed or suspended during prosecution.

Notably, despite the year’s pandemic, during which many brand holders consolidated or dropped brands, the total number of trademark applications filed increased by nearly 10% to 738,112.  The number of active certificates of trademark registration increased by 5.7% to over 2.6 million.

Cyber Security in a Post-Corona World: Startup Opportunities and Challenges

On Nov 5, 2020 at 9 am EST / 3 pm CEST / 4 pm IDT, global innovation platform Axis Innovation will host a webinar titled Cyber Security in a Post-Corona World: Startup Opportunities & Challenges. This webinar will share actionable insights for companies (especially early stage companies) who seek to address global cybersecurity needs.

The speakers and topics include:
Developing Effective Cybertech Patent Strategies – with me, Jim Singer, Intellectual Property Department Chair of Fox Rothschild.
Cyber During Covid-19 – Going global by cooperating with leading international cyber leader Kaspersky – Vitaly Mzokov, Head of Kaspersky iHub.
Effective Fund Raising for your startup – with leading UK Venture Capitalist, Endre Sagi of Skylake Capital.

The webinar is free of charge, with more information and registration details available here.

Update: a recording of the event is available at this link.

Large entity, small entity or micro-entity: which type of patent applicant are you?

When applying for a patent application, certain entities are entitled to reduced USPTO filing fees. Applicants who qualify for small entity status can reduce many USPTO fees by 50%. Applicants who are micro entities can reduce certain fees by 75%. An applicant who is neither a small entity nor a micro-entity is considered to be a large entity and must pay standard fees.

The savings resulting from small entity or micro entity status can be substantial.  As of June 25, 2021 the standard combined application, search and examination fee for a new utility patent application was $1,820. However, a small entity only pays $910, and the equivalent micro entity fee is $455. Also, in order to maintain a patent in effect, the owner must pay maintenance fees at the 3.5, 7.5, and 11.5-year anniversaries of the patent’s issuance. These costs can become significant over time. Small entity or micro entity status can help reduce those costs.

However, the consequences of mis-declaring entity status can be severe. In cases where courts have found applicants paid the small entity fee without a good faith basis for considering themselves to be small entities, the courts have Continue reading

IP and the Open Covid Pledge

Are you developing new technologies, treatments or other inventions that are useful to combat the COVID-19 epidemic? If so, my colleagues Gunjan Agarwal and Chipo Jolibois recently wrote a useful article discussing the Open COVID Pledge and how it can be used when patenting COVID-19-related inventions.

For the full article on Law360, click here.