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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 .

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.

USPTO is open during federal government shutdown

Is the U.S. Patent and Trademark Office still operating during the current federal government shutdown? So long as the shutdown does not extend beyond the first few weeks of January 2019, the answer is yes.

According to the USPTO: “the agency has access to prior-year fee collections, which enables the USPTO to continue normal operations for a few weeks. Should the USPTO exhaust these funds before a partial government shutdown comes to an end, the agency would have to shut down at that time, although a small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.”

What government contractors need to know about the revised disclosure requirements (and patent filing deadlines) for federally-funded inventions

The Bayh-Dole Act and federal regulations implementing the Act permit government contractors to retain ownership of inventions developed with federal government funding. However, to retain ownership the contractor must take certain actions within certain deadlines. If the contractor misses these deadlines, the government agency can take title to the invention.

These deadlines are about to become even more important when a regulatory change takes effect on May 14, 2018. Significant deadlines to keep in mind include:

1.  Disclose the invention to the government agency within two months of discovery, and elect title within two years of the disclosure.

The first required action is disclosure of the invention to the contracting agency. The Bayh-Dole Act (at 35 U.S.C.  § 202(c)(1)) requires any contractor who receives government funding to “disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for administration of patent matters.” Regulations implementing the Act state that the “reasonable time” is “two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.” 37 C.F.R. § 401.14(c)(1).

The second required action is that if the contractor wants to retain ownership of the invention, the contractor must elect to retain title within two years of the disclosure. 37 C.F.R. § 401.14(c)(2).

If the contractor fails to make the required disclosure to the Federal agency within two months, or if the contractor fails to elect to retain title within two years, the Federal agency may take ownership to the invention.

Currently, a time limit also applies to the Federal agency’s right to take title to the invention. However, that is about to change. Continue reading

How long does it take for the USPTO to issue a patent or register a trademark? (2016 edition)

At the end of each fiscal year, the USPTO releases a Performance and Accountability Report, with statistics about patent and trademark allowance rates, average pendency, and other details. The USPTO recently released its Performance and Accountability Report for Fiscal Year 2016. This means that it’s time for IP Spotlight’s annual review of the question:  “how long does it take to receive a patent or trademark registration?”

To answer that question, here are a few highlights from the USPTO’s FY 2016 report:

Patents:  The USPTO continued a five-year trend of reducing overall patent application pendency in FY 2016. The average time between filing and first office action was 16.2 months, down from 17.3 months in FY 2015 and 18.4 months in FY 2014.  Average total pendency also decreased to 25.3 months (from 26.7 months in FY 2015). These numbers are especially interesting when compared to those from only five years ago:  in FY 2011 the average wait times were 28 months to first action and 33.7 months total. It is clear that the USPTO has made significant strides toward reducing overall wait time for patent applications in recent years.

The wait times vary depending on the technology involved. Patent applications for computer architecture and mechanical engineering inventions generally experienced the longest waits, while applications in the biotech and organic chemistry fields moved relatively quickly. In particular, patent applications involving: Continue reading

Supreme Court to address two intellectual property issues in fall 2016

The U.S. Supreme Court recently agreed to review two cases that involve important IP questions in the Court’s fall 2016 session. One case will consider whether to modify or do away with the long-standing defense of laches in patent infringement cases. The other case will address the extent to which apparel can be protected by copyright.

The doctrine of laches is a defense to patent infringement that protects accused infringers if (1) the patent holder unreasonably delayed in filing the infringement lawsuit, and (2) the accused infringer was materially prejudiced by the delay. If a patentee delays bringing suit for more than six years after the date the patentee knew or should have known of the alleged infringer’s activity, laches may be presumed. In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, et al. (Fed. Cir. Sept. 18, 2015), the accused infringer argued that a 2014 Supreme Court decision that abolished laches as a defense in copyright cases should also apply to patent cases. The Federal Circuit disagreed and held that the defense of laches is still available in patent infringement cases. The Supreme Court will now resolve this dispute and determine whether the reasoning of its previous decision under copyright law equally applies to patents.

In the second case, the Court will address the extent to which copyright law covers apparel designs. In Varsity Brands Inc. v. Star Athletica, LLC (Sixth Cir. 2015), the U.S. Court of Appeals for the Sixth Circuit ruled that several copyright registrations on cheerleader uniform designs were valid. The designs included various stripes and chevrons, and the Sixth Circuit rejected an argument that those designs were functional and found that the designs were “’pictorial, graphic, or sculptural works’ and not uncopyrightable ‘useful articles.’” The Supreme Court will now address the question: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”

However, the Supreme Court also denied petitions in several other IP-related cases. Notably, so far the Court has denied at least seven petitions asking for clarity of the boundaries of patent-eligibility in view of the Court’s previous decisions in Alice Corp. v. CLS Bank Int’l and Mayo Collaborative Services v. Prometheus Laboratories, Inc..  Each of those decisions addressed the scope of Section 101 of the Patent Act, and each decision has resulted in confusion and inconsistency in lower court decisions and USPTO actions that have attempted to apply those decision.

 

USPTO issues May 2016 Subject Matter Eligibility Update

A new USPTO memo directs Examiners to provide more detail and support when rejecting patent applications under Section 101 of the Patent Act.

A common criticism of the USPTO’s implementation of subject matter eligibility issues is its use of boilerplate analyses when asserting that a patent application merely claims an abstract idea or naturally-occurring phenomenon. The new memo, released on May 4, 2016, directs Examiners to be more specific in their responses, to consider all language of each claim, and to provide legal support for their rejections.  The memo states:  “If the original rejection did not identify a Supreme Court or Federal Circuit decision in which a similar abstract idea was found and applicant challenges identification of the abstract idea, the examiner would need to point to a case in which a similar abstract idea was identified and explain why the abstract idea recited in the claim corresponds to the abstract idea identified in the case to maintain the rejection.”

Guidance relating to abstract idea rejections

When asserting that a patent application claims an abstract idea, the new memo states that Examiners must refer to specific claim language to “identify the judicial exception by referring to what is recited … and explain why it is considered an exception” and “should not go beyond those concepts that are similar to what the courts have identified as abstract ideas.”

The memo also notes that “an additional element…may be enough to qualify as ‘significantly more’ if it meaningfully limits the judicial exception, improves another technology or technical field, improves the functioning of a computer itself, or adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application. In addition, even if an element does not amount to significantly more on its own (e.g., because it is merely a generic computer component performing generic computer functions), it can still amount to significantly more when considered in combination with the other elements of the claim. For example, generic computer components that individually perform merely generic computer functions (e.g., a CPU that performs mathematical calculations or a clock that produces time data) in some instances are able in combination to perform functions that are not generic computer functions and therefore amount to significantly more than an abstract idea (and are thus eligible).”

Guidance relating to law of nature, product of nature and natural phenomena rejections

In the life science area, the new memo states that Examiners must identify the law of nature, product of nature, or natural phenomenon as it is recited “and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.”

The USPTO also updated its set of life science eligibility examples for Examiners and applicants to consider.

Guidance common to all rejections

If an Examiner finds an abstract idea, law or product of nature or natural phenomenon in the claim, the memo states that the Examiner must consider the claim elements “both individually and as a combination” when determining whether the claim covers more than just the abstract idea.  The guidance notes:  “It is important to remember that a new combination of steps in a process may be patent eligible even though all the steps of the combination were individually well-known and in common use before the combination was made.”

When an Examiner finds that particular claim limitations are well understood, routine, or conventional, “the rejection should explain why the courts have recognized, or those in the relevant field of art would recognize, those claim limitations as being well-understood, routine, conventional activities.”

Notably, the memo states that Examiners should not rely on USPTO examples that do not carry the weight of court precedent. This guidance is also relevant to applicants, since the USPTO’s examples can be useful but do not carry the weight of legal authority.

The memo also warns applicants that an argument that the claim “does not preempt all applications of the exception” will not in itself save the claim. The memo notes that “preemption is not a standalone test for eligibility.”