PTAB/USPTO Update - May 2024

USPTO Request for Comments

• On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of ordinary skills in the art. The RFC is published in the Federal Register. The deadline to submit comments is July 29, 2024.

USPTO Guidance and Proposed Rulemaking

• On April 3, the USPTO published a Notice of Proposed Rulemaking (NPRM) proposing patent fee adjustments for Fiscal Year 2025.
  • The NPRM proposes significant changes across a wide range of USPTO fees, including:
    • New fees in connection with After Final Consideration Pilot Program 2.0 (AFCP 2.0) requests, continuing application filings, information disclosure statements (IDSs) that provide more than 50 items of information, and requests for director review of PTAB decisions
    • Increased fees in connection with patent application filings (including utility, design, and international (PCT)), issue fees, excess claim fees (more than three independent claims or 20 total claims), applications for patent term extension (PTE), requests for continued examination (RCEs), requests for suspension of action, terminal disclaimers, unintentional delay petitions, institution requests and post-institution fees for AIA proceedings (Inter Partes review (IPR), Post-grant review (PGR), and covered business method (CBM) review), requests for Ex parte reexaminations, and corrections (such as certificates of correction)
    • Reduced fees in connection with extensions of time for provisional applications
  • The NPRM is published in the Federal Register. The deadline to submit written comments is June 3, 2024.

• On April 10, the United States Patent and Trade Office (USPTO) announced guidance regarding the use of artificial intelligence (AI) tools before the USPTO. The guidance recognizes that AI tools come with potential benefits—improved costs, quality, and efficiency—and potential risks—such as inaccuracy and inadvertent disclosure of confidential information—and focuses on how existing rules and policies apply in the context of AI tools. The guidance is published in the Federal Register.
• On April 15, the USPTO announced a NPRM on the Director Review process for decisions in proceedings under the Leahy-Smith America Invents Act (AIA proceedings) at the PTAB. The NPRM proposes guidance on the types of issues the Director will consider in Director Review, the timing and format of Director Review requests, as well as Director Review of decisions on the Director's own initiative ("sua sponte"). The NPRM is published in the Federal Register. The deadline to submit comments is June 17, 2024.
• On April 18, the USPTO announced a NPRM seeking public input on proposals to codify many existing PTAB review policies and practices, reflecting feedback on the 2023 Advanced Notice of Proposed Rulemaking (ANPRM). The proposed rules address a subset of topics from the 2023 ANPRM, such as serial petitions, parallel petitions, and petitions implicating the same or substantially the same art or arguments previously presented to the USPTO; other topics raised in the ANPRM are still under consideration. The NPRM is published in the Federal Register. The deadline to submit comments is June 18, 2024.

USPTO News

• On May 1, the USPTO announced a National Strategy for Inclusive Innovation. The Strategy aims to grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship, and innovation among youth and those from historically underrepresented and underresourced communities.

Final Rules

• Adoption of Updated World Intellectual Property Organization Standard ST.26; Revision to Incorporation by Reference, 89 Fed. Reg. 36677 (May 3, 2024) [adopting version 1.7 of World Intellectual Property Organization (WIPO) Standard ST.26, which addresses application disclosures containing nucleotide and/or amino acid sequences]

Interim Rules

• There are no new interim rules.

Proposed Rules

• Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement, 89 Fed. Reg. 28693 (April 19, 2024) [covered above]
• Rules Governing Director Review of Patent Trial and Appeal Board Decisions, 89 Fed. Reg. 26807 (April 16, 2024) [covered above]
• Setting and Adjusting Patent Fees during Fiscal Year 2025, 89 Fed. Reg. 23226 (April 3, 2024) [covered above]

PTAB Decisions

• New Precedential PTAB Decisions
  • There are no new precedential PTAB decisions.
• New Informative PTAB Decisions
  • There are no new informative PTAB decisions.
• New Director Review Decisions
  • Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218
    • Decision subject to Director Review – Paper 9 (January 25, 2024) [Institution Decision discretionarily denying institution on the basis that the petition challenged the same patent as a previously filed petition (serial challenge)]
    • Decision vacating decision on institution and remanding for further proceedings – Paper 12 (April 19, 2024) [determining that the Board erred in exercising its discretion to deny institution, finding that because "the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors"]
  • MAHLE Behr Charleston Inc. v. Frank Amidio Catalano, IPR2023-00861
    • Decision subject to Director Review – Paper 13 (November 15, 2023) [Institution Decision denying institution]
    • Decision vacating decision on institution and remanding for further proceedings – Paper 15 (April 5, 2024) [determining that the board did not adequately address Petitioner's arguments regarding whether a prior art figure was "clear on its face" and would have reasonably suggested the claim limitation, and ordering the board to consider Petitioner's expert testimony on the issue]

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