Patent Docs

USPTO to Transition to Electronic Patent Grants

By Donald Zuhn --

In a final rule published in the Federal Register (88 Fed. Reg. 12560) last week, the U.S. Patent and Trademark Office announced that it will start issuing patents electronically under a new digital USPTO seal and bearing the digital signature of the USPTO Director beginning on Tuesday, April 18, 2023.  The Office indicated that electronic patent issuance will reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit issued patents to be viewed and printed by applicants and the public immediately upon issuance in Patent Center.

The Office noted that following a transition period, patents will no longer be issued on paper and will no longer be mailed to the correspondence address of record as part of the patent issuance process.  During the transition period (the length of which has not yet been specified) the Office will provide a paper copy of the electronic patent as a courtesy ceremonial copy, delivered to the correspondence address of record.  And even after the transition period, ceremonial copies of patents will be available for purchase at a nominal charge.  In addition to ceremonial copies, the Office will also offer presentation copies (a certified copy of the first page of a patent suitable for framing and display) and certified copies of issued patents for a nominal fee.  However, the Office will no longer accept orders for Advance copies of issued patents, and the Issue Fee Transmittal form (PTOL–85B) will be revised to eliminate the option for ordering Advance copies of patents.

The lone rule change required by the implementation of electronic patent issuance will be the removal of 37 C.F.R. § 1.315, which states that "[t]he patent will be delivered or mailed upon issuance to the correspondence address of record."  The move to electronic patent issuance will, however, impact patent practice to some extent.  The notice points out that under the current paper patent issuance process, electronic capture of the information needed to issue a patent begins shortly after the mailing of the notice of allowance, and an Issue Notification is typically mailed several weeks prior to the issue date to inform the applicant of the patent number and issue date.  (While there is no set period after payment of the issue fee when a patent will issue, in our experience patents often issue within about five weeks following payment of the issue fee.)  Under the electronic patent issuance process, the Office notes that patents will issue "shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications."  Thus, the Office indicates that patents will issue "shortly after the payment of the issue fee," and Applicants therefore "will have less time, after the payment of the issue fee, to file continuing applications, Quick Path Information Disclosure Statements, or petitions under 37 CFR 1.313(c) to withdraw an application from issue."  The Office recommends that the best practice would be for Applicants to file any of the above submissions as early as possible, with continuing applications preferably being filed before the payment of the issue fee.  The Office notes, however, that patents will continue to be issue on Tuesdays, and that Issue Notifications will continue to be available electronically via Patent Center, generally on the Wednesday or Thursday before a patent issues.  Thus, Applicants can still monitor Patent Center to determine the patent number and issue date of a patent at least a few days prior to that patent's issuance.

As for the format of the electronic patent, the Office notes that the electronic patent cover sheet will be nearly identical in appearance to the cover sheets currently used for paper patents, except that the seal and Director's signature will be in digital form.  In addition, the new seal will be an official USPTO seal in digital form that serves to authenticate the patent, with an encrypted digital signature embedded within the seal.

The notice indicates that the Office received 21 comments in response to an earlier notice of proposed rulemaking regarding implementation of electronic patent issuance.  The Office noted that some comments argued that the time between the Issue Notification and patent issuance should not be shortened because it leaves too little time to determine a continuation filing strategy.  The Office responded that "[d]elaying issuance to counteract th[e] time savings [from electronic patent issuance] because [an] applicant may possibly choose to file a continuing application is not in accordance with the statutory directive," and "[t]he USPTO appreciates this may cause a change in some applicant's practice, but agrees with the comments that state that applicants will adapt to the new timeline."  In response to comments suggesting that certificates of correction also be issued electronically, the Office noted that it would continue to mail certificate of corrections to the correspondence address of record, but "is making efforts to also issue certificates of corrections electronically via Patent Center with the electronic patent grant."  The Office also noted in response to some comments that it has no plans to make certified copies available electronically beyond the current practice of using CD–ROM media.

USPTO Requests Public Comments on Artificial Intelligence and Inventorship

By Aaron Gin --

On February 14, 2023, the U.S. Patent and Trademark Office published a notice in the Federal Register (88 Fed. Reg. 9492) requesting public comments about 1) the current state of Artificial Intelligence (AI) and Emerging Technologies (ET); and 2) associated inventorship issues that may arise with the advance of such technologies.

The notice outlines the motivation and context for the request for comments.  Namely, the notice describes the USPTO-organized AI/ET Partnership meeting held in June 2022.  During that meeting, a panel session on "Inventorship and the Advent of Machine Generated Inventions" led to conversations about AI's increasing role in innovation in areas such as drug discovery, chip design, etc.  Meeting contributors identified situations in which AI systems can output patentable inventions or contribute at the level of a joint inventor.  Additionally, the notice provides a brief summary of recent District Court and Federal Circuit cases regarding the inventorship of AI generated inventions.  Yet further, the notice references calls from Senators Coons and Tillis to create a USPTO / U.S. Copyright Office national commission to consider changes in existing law to incentivize AI-related innovations and creations.

The notice offers further stakeholder engagement sessions around AI-enabled innovations and inventorship.  Additionally, the notice encourages academic scholarship around these topics and announces plans to publish a special issue of the Journal of the Patent and Trademark Office Society.

The notice includes several questions such as:

1.  How is AI, including machine learning, currently being used in the invention creation process?
2.  How does the use of an AI system in the invention creation process differ from the use of other technical tools?
3.  If an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws?
4.  Is there a need for the USPTO to expand its current guidance on inventorship to address situations in which AI significantly contributes to an invention?

Comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov, docket number PTO-P-2022-0045.

For additional information regarding this topic, please see:

• USPTO Alert, February 13, 2023
• USPTO webpage on Artificial Intelligence

USPTO News Briefs

By Donald Zuhn –-

USPTO Eliminates CFR Provisions Regarding Voluntary CLE Certification

In a notice published in the Federal Register (88 Fed. Reg. 4906) last month, the U.S. Patent and Trademark Office issued a final rule adopting an interim final rule that the Office published in the Federal Register in November, that eliminated provisions of the Code of Federal Regulations related to voluntary continuing legal education (CLE) certification and recognition for registered patent practitioners and individuals granted limited recognition to practice in patent matters before the Office.  The final rule will take effect on February 27, 2023.

The notice sets out a brief history of the voluntary CLE certification provision, recounting that in August 2020 the Office implemented 37 C.F.R. § 11.11(a)(3), which provided that patent practitioners could voluntarily certify completion of CLE to the USPTO Director for the Office of Enrollment and Discipline.  In October 2020, the Office published CLE guidelines, and then in June 2021, the Office published a notice that voluntary CLE certification would begin in the spring of 2022.  However, in December 2021, the Office published another notice that indefinitely delayed implementation of voluntary CLE certification, and in November 2022, the Office published the interim rule eliminating the voluntary CLE certification and recognition provisions from the CFR.  The most recent notice amends 37 C.F.R. § 11.11(a)(1) and (a)(3) to eliminate provisions concerning the voluntary CLE certification for registered patent practitioners and persons granted limited recognition to practice in patent matters before the Office under 37 C.F.R. § 11.9.

The notice, however, also states that "[i]n the future, the Office may reconsider CLE reporting for patent practitioners, and nothing in this notice is intended to restrict or prohibit such action at a later time."

USPTO, JPO, and KIPO Extend Expanded CSP Program

In a notice published in the Federal Register (88 Fed. Reg. 2892) last month, the U.S. Patent and Trademark Office announced that the USPTO, Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO) have agreed to extend the Expanded Collaborative Search Pilot (CSP) program through October 31, 2024.  The Expanded CSP program provides Applicants who cross-file with the USPTO and either the JPO or KIPO with search results from each partner IP office early in the examination process.  The Program is designed to accelerate examination and provide Applicants with more comprehensive prior art by combining the search expertise of USPTO, JPO, and KIPO examiners before issuing a first Office action.  The USPTO noted that requests to participate in the Expanded CSP program that were filed between October 31, 2022 and January 18, 2023 will be considered.

The USPTO also announced that in response to feedback provided by Applicants in the United States, Korea, and Japan that the petition process for the Expanded CSP program could be improved, specifically with respect to the requirement that Applicants petition each partner IP office separately, the USPTO, JPO, and KIPO developed combined petition forms:  PTO/437–JP for the USPTO/JPO pilot program and PTO/437–KR for the USPTO/KIPO pilot program.  Applicants wishing to participate in either the USPTO/JPO or USPTO/KIPO programs need only submit one petition to one of the two offices in each program.

The changes to the Expanded CSP program took effect on January 18, 2023.  The notice also indicated that each partner IP office will continue to grant no more than 400 requests per year per partner office for the duration of the pilot.  In addition, the notice indicated that the request for participation in the Expanded CSP program must be granted by both the IP office in which the request is directly filed and the partner IP office prior to any examination of the counterpart applications in either office.  For additional information regarding the Expanded CSP, Applicants should consult the Expanded Collaborative Search Pilot Program Extension (86 Fed. Reg. 8183) that was published on February 4, 2021.

USPTO Continues Email Address for PCT Questions

In a notice issued last month, the U.S. Patent and Trademark Office announced the extension of its pilot to provide an email address -- [email protected] -- for submitting inquiries about the Patent Cooperation Treaty (PCT) and international and national stage applications.  The email address will continue to be offered until January 1, 2024.

According to the Office's notice, the email address is being offered to improve the overall customer service experience of those needing information regarding the PCT and international and national stage applications.  The Office notes that since 1993, it has also maintained a PCT Help Desk for telephonic inquiries regarding PCT issues.  The annual call volume at the PCT Help Desk has been as high as 40,910 calls per year, with an average of over 22,000 calls annually over the last three fiscal years.  The email address was created in response to customer feedback, which sought a reduction in wait times with the PCT Help Desk, an extension in the hours of availability of the PCT Help Desk to accommodate customers on the West Coast and overseas, and to better utilize modern communication mechanisms such as email.

The Office notes that the email address is not intended for case-specific or time-sensitive inquiries, but rather is intended for general inquiries.

USPTO Issues Notice Regarding Certain Filing Receipts Issued Between March and October 2022

By Donald Zuhn –-

Last week, the U.S. Patent and Trademark Office issued a Notice advising Applicants to review filing receipts issued between March 2022 and mid-October 2022 to confirm that the granted foreign filing license notification has been included and that the publication information is accurate.

The Notice explains that the Office recently transitioned to a new pre-examination system to generate notices, including application filing receipts, as part of its "ongoing efforts to automate and enhance patent examination practices to support robust and reliable patent rights and speed the issuance of patents," but that the Office discovered that with this transition, filing receipts issued for certain patent applications processed between March 2022 and mid-October 2022 did not include foreign filing license information.  The Office notes that upon discovering the problem,  it took corrective steps, which consisted of updating the pre-examination system so that it generated appropriate filing receipts beginning on October 18, 2022, and issuing corrected or replacement filing receipts in October 2022 for applications for which a foreign filing license had been granted.

The Notice also indicates that a "small number" of filing receipts for provisional applications and design applications incorrectly showed a projected publication date, even though provisional and design applications are not subject to publication under the 18-month application publication provisions.  The Office noted that this issue had also been rectified, adding that "regardless of the indication of publication, no provisional or design applications have been or will be published as a patent application publication under 37 CFR 1.215."  Nevertheless, the Office also noted that Applicants could request a corrected filing receipt if a projected publication date for a provisional or design application is listed on the filing receipt.

In the Notice, the Office advises Applicants to review filing receipts issued for new patent applications between March 2022 and mid-October 2022 to confirm that those filing receipts include a granted foreign filing license notification and accurate publication information, and to request a corrected filing receipt if they believe the application should have cleared the security review process, and the USPTO has not yet issued a corrected or replacement receipt with a granted foreign filing license notification.  Noting that 37 C.F.R. § 1.183 permits the Office to waive any requirement of its regulations that is not a requirement of the patent statutes, the Notice also indicates that "if an applicant files a petition for a retroactive foreign filing license due to the issuance of a filing receipt without such a license between March 2022 and mid-October 2022, the petition filing fee will be waived sua sponte if requested in the petition."

USPTO Delays Transition to DOCX (Again)

By Michael Borella --

On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application filing.  A new final rule establishes that the $400 fee for filing patent specifications, claims, and abstracts (not including design, plant, or provisional applications) in a format other than DOCX will not be required until April 3, 2023.

The USPTO has supported filing in DOCX format for over 5 years.  However, uptake was initially slow.  In August 2020, the USPTO published a final rule setting the effective date of the fee to be January 1, 2022, and then published another final rule delaying the fee until January 1, 2023.  Just a few days prior to the fee being put in force, which in practice would compel most applicants to file in DOCX format, it has been pushed back another three months.

The USPTO's DOCX rollout has been problematic from its beginning.  The issues are not in the format itself, which has a number of advantages over the current standard of filing in PDF.  Instead, many practitioners have experienced problems with the USPTO's DOCX intake engine.  Carl Oppedahl pointed out instances where the USPTO had corrupted or changed equations in specifications.  Our own experience with trying to upload DOCX via the USPTO's electronic filing system in early 2020 produced significant problems, including bogus errors relating to fonts and section headings.  To its credit, the USPTO responded promptly when we raised these issues and has contended that it has fixed the bugs in its software that caused what we came up against.

But reports of various DOCX issues continued.  Numerous letters were sent by groups of practitioners to the USPTO regarding these issues, including one on the need for protective PDF filings to accompany DOCX filings at no additional cost.  Protective PDF versions of specifications contain the applicant's intended disclosure to which the inventors legally declare inventorship.  They serve as an authoritative version of the application in cases where the USPTO mangles the corresponding DOCX submission.

On December 20, 2022, the USPTO published a notice that protective PDF filings would be permitted until June 30, 2023, but the DOCX fee would still go into effect on January 1, 2023.  In response, 117 patent professionals signed an open letter to USPTO Director Vidal providing several example files that result in the USPTO rewriting parts of specifications submitted in DOCX format.  The letter also accuses the USPTO of violating the Paperwork Reduction Act by improperly shifting its costs and burdens to the public.  Other organizations, such as the AIPLA and IPO may have also contacted the USPTO about DOCX issues.  It is likely that a combination of these efforts caused the USPTO to reverse course on the January 1, 2023 deadline.

Faith in the USPTO's IT systems are at a low point.  Public PAIR and Patent Center were giving intermittent errors during routine activities for at least part of December 2022.  For about one week before and/or during the holidays, image file wrappers for some applications could not be viewed.  These defects have been seen off and on for months, but became endemic right as practitioners were working on their year-end filings before (hopefully) heading out on vacation.

The USPTO's DOCX transition has been and continues to be fraught with legal and technical glitches.  Protective PDFs should be permitted at no additional cost and on an indefinite basis.  The USPTO's portal software needs to be more reliable.  Based on our experience with DOCX two years ago, the USPTO has a proclivity to launch new systems without adequate testing.  The current delay of the $400 fee for another three months is a good start, but only an ill-fitting band-aid on these fundamental problems. 

EPO's "10-Day Rule" to Be Eliminated

By Donald Zuhn --

A number of European firms, including J A Kemp, reported on Friday that the Administrative Council of the European Patent Organisation had passed a change to the rules of the EPC relating to the date on which a document is deemed to be delivered.  The change will eliminate the 10-day rule, which has been in place since the 1970's.

As the J A Kemp report notes, under the current rules, documents sent by the European Patent Office are deemed to be delivered ten days after the date printed on the document, which was originally intended to account for the time a document would be in transit when correspondence was sent via postal service.  The 10-day rule essentially resulted in a 10-day grace period on deadlines.  According to J A Kemp, the elimination of the 10-day rule is an attempt to modernize EPC rules in view of the current practices in the digital age.

The elimination of the 10-day rule is set to take effect on November 1, 2023.  After that date, documents sent by the EPO will be deemed to be delivered on the date of the document.

While the J A Kemp report notes that there will be safeguard provisions in place that allow for a document to be deemed delivered after the date on the document in certain circumstances, such provisions "will apply only rarely."  However, missed deadlines may in some circumstances be remedied by requesting further processing.

For additional information regarding this topic, please see:

• "BREAKING: EPO to abolish the 10 day rule," The IPKat, October 14, 2022
• "EPO announces end of the '10-day rule'," Forresters, October 14, 2022
• "1 November 2023 - the sun will set on the EPO's Ten-Day Rule," WP Thompson, October 14, 2022

USPTO News Briefs

By Donald Zuhn --

USPTO Announces New Patent Public Search Tool

In a Patent Alert email distributed to stakeholders last month, the U.S. Patent and Trademark Office announced the replacement of four legacy search tools -- the Public-Examiner's Automated Search Tool (PubEAST), Public-Web-based Examiner's Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT) -- with the Office's new  Patent Public Search (PPUBS) tool.  That replacement took effect on September 30.

The Office noted that PPUBS provides for more convenient, remote, and robust full-text searching of all U.S. patents and U.S. patent application publications.  Additional information about PPUBS, including FAQs, training resources, and other information to assist stakeholders in transitioning to the new tool, can be found on the Patent Public Search webpage.

The Office also noted that existing links to U.S. patents and U.S. patent application publications in PatFT and AppFT have been terminated following the retirement of those services (which unfortunately has broken a lot of links on Patent Docs).  The Office also noted that stakeholders using PPUBS can directly access U.S. patents and U.S. patent application publications and can set up links for direct document access to such patents and published applications on a webpage or document (a step-by-step guide to performing these functions can be found here:  Patent Public Search-Setting up external searches PDF).

USPTO Extends After Final Consideration Pilot 2.0

In a Patent Alert email distributed to stakeholders last week, the U.S. Patent and Trademark Office announced that the After Final Consideration Pilot (AFCP) 2.0 has been extended to September 30, 2023.  The Office indicated that the AFCP 2.0 is part of the USPTO's ongoing effort towards compact prosecution and increased collaboration between examiners and stakeholders.

The AFCP, which was implemented in April 2012 (see "USPTO to Assess After Final Consideration Pilot Program"), modified in May 2013 (see "USPTO News Briefs"), and extended several times since then, provides examiners with a limited amount of non-production time -- three hours for utility and reissue applications -- to consider responses filed following a final rejection.  The requirements for participating in the AFCP 2.0 are as follows:

(1) a transmittal form that requests consideration under AFCP 2.0 (the Office suggests that applicants use form PTO/SB/434);

(2) a response under 37 CFR 1.116, including an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect;

(3) a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response (according to the Office, "willing and available" means that the applicant is able to schedule the interview within ten (10) calendar days from the date the examiner first contacts the applicant);

(4) any necessary fees (e.g., a request filed more than three months after the mailing of a final rejection must include the appropriate fee for an extension of time under 37 C.F.R. § 1.136(a)); and

(5) the required papers must be filed via the EFS-Web.

Additional information regarding the AFCP 2.0 program can be found on the Office's AFCP 2.0 webpage.

USPTO Extends Cancer Immunotherapy Pilot Program

In a notice published in the Federal Register (87 Fed. Reg. 58772) last week, the U.S. Patent and Trademark Office announced that it has extended the Cancer Immunotherapy Pilot Program, which allows patent applications pertaining to cancer immunotherapy to be advanced out of turn for examination.  The pilot program, which was implemented in June of 2016 and has been extended four times previously, is being extended to January 31, 2023 (see "USPTO Implements Pilot Program to Support President's National Cancer Moonshot").

The notice indicates that the requirements of the pilot program have not been modified.  Under the pilot program, applications containing at least one claim reciting a method of treating a cancer using immunotherapy will be advanced out of turn for examination if the applicant files a grantable petition to make special, with the goal of completing examination of the application within twelve months of special status being granted.

In order to participate in the pilot program, an applicant must satisfy the following requirements:

(1) File a petition to make special under 37 C.F.R. § 1.102(d) in a non-reissue, nonprovisional utility application filed under 35 U.S.C. § 111(a), or an international application that has entered national stage under 35 U.S.C. § 371.  The petition must be filed at least one day prior to the date that notice of a first Office action (which may be an Office action containing only a restriction requirement) appears on PAIR, or with a Request for Continued Examination (RCE).  For applications in which the claimed cancer immunotherapy is the subject of an active Investigational New Drug (IND) application, a petition to make special may be accepted any time prior to appeal or final rejection.  The Office recommends that applicants use form PTO/SB/443 for filing the petition, as the form contains check boxes that will allow the applicant to comply with several certification requirements under the new pilot program.

(2) The application cannot contain more than three independent claims, more than twenty total claims, or any multiple dependent claims.  For applications not meeting this requirement, an applicant must file a preliminary amendment to cancel the excess claims or multiple dependent claims at the time the petition to make special is filed.

(3) The application must include at least one claim to a method of treating a cancer using immunotherapy.  The notice explains that such claim must "encompass[] a method of ameliorating, treating, or preventing a malignancy in a human subject wherein the steps of the method assist or boost the immune system in eradicating cancerous cells."

(4) If restriction is required, the applicant must agree to make an election without traverse in a telephonic interview, and elect an invention directed to a method of treating a cancer using immunotherapy.  The applicant will be given two working days to respond to an examiner's request for an election, and in the event that the applicant fails to respond within that period, the examiner will treat the first group of claims directed to a method of treating a cancer using immunotherapy as being constructively elected without traverse.

(5) The application cannot have been previously granted special status.

(6) The petition to make special must be filed electronically via the EFS-Web (and the document description "Petition for Cancer Immunotherapy Pilot" must be selected for the petition).

(7) If the application has not been published, the applicant must file a request for early publication in compliance with 37 C.F.R § 1.219 with the petition to make special (or a rescission of a nonpublication request if one was filed).

For the purposes of the pilot program, the Office has waived the fee for a petition to make special under 37 C.F.R. § 1.102(d).

USPTO Unveils USPTO-FDA Collaboration Initiatives Webpage

In a Patent Alert email distributed to stakeholders last week, the U.S. Patent and Trademark Office announced the unveiling of a new webpage for collaboration efforts between the USPTO and the U.S. Food and Drug Administration (FDA).  The Office noted that the USPTO-FDA Collaboration Initiatives webpage contains the latest USPTO news, blog articles, reports, and USPTO engagements with the FDA and the public.  On the new webpage, the Office states that:

The USPTO is focused on ensuring our patent system incentivizes and protects the investments essential for bringing life-saving and life-altering drugs and biologics to market.  At the same time, the USPTO is focused on ensuring our system, as a whole, is not used to improperly delay getting more affordable generic drugs and biosimilars into the hands of Americans who need them.

USPTO News Briefs

By Donald Zuhn --

USPTO Launches Webpage on PTE Applications and Patent Terms Extended under 35 U.S.C. § 156

In a Patent Alert email distributed to stakeholders last week, the U.S. Patent and Trademark Office announced the launch of a new webpage providing information regarding applications for patent term extension (PTE) that have been filed within the past five years and patent terms that have been extended under 35 U.S.C. § 156.  With regard to PTE applications, the new webpage provides access to a spreadsheet listing the application number, patent number, and trade name identified in the PTE application, and provides a link to the electronic file containing the PTE papers.  The USPTO alert indicates that the new webpage was launched in response to stakeholder feedback requesting readily available information about PTE applications.  The USPTO plans to update the information on the webpage on a quarterly basis.

USPTO Announces Fourth Extension of Modified COVID–19 Prioritized Examination Pilot Program

In a notice published in the Federal Register (87 Fed. Reg. 38714) in June, the U.S. Patent and Trademark Office announced that it was extending the modified COVID–19 Prioritized Examination Pilot Program, and that requests to participate in the pilot program would be accepted until December 31, 2022.  The pilot program, which was implemented in May of 2020 and has been extended three times previously, allows applicants that qualify for small or micro entity status to request prioritized examination without paying the fees typically associated with such prioritized examination (see "USPTO Announces COVID-19 Prioritized Examination Pilot Program").

In addition to the requirement that applicants qualify for small or micro entity status, the claims of a participating application must cover a product or process related to COVID–19, and such product or process must be subject to an applicable FDA approval for COVID–19 use.  Such approvals may include, for example, an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA).  Other requirements for participating in the pilot program include making the request at the time of filing of a non-continuing original utility or plant nonprovisional application; at the time of filing of an original utility or plant nonprovisional application claiming the benefit of an earlier filing date under 35 U.S.C. §§ 120, 121, or 365(c) of one prior nonprovisional application or one prior international application designating the United States; or at the time of filing or after the filing of a Request for Continued Examination of a plant or utility application or a national stage of an international application.  However, any application that claims the benefit of the filing date of two or more prior filed nonprovisional 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 the pilot program.  In addition, requests to participate in the pilot program must include an Application Data Sheet, be made via the Office's patent electronic filing systems (EFS-Web or Patent Center), and qualifying applications cannot present more than four independent claims, more than 30 total claims, or any multiple dependent claims.

In announcing the extension of the pilot program, the Office noted that as of May 16, 2022, 261 patents had issued from applications that had been accepted under the pilot program, and the average total pendency, from filing date to issue date, for those applications was 280 days.

As we reported earlier this year in our "Top Patent Law Stories of 2021" webinar, of the 149 patents that recite "COVID-19" or "SARS-CoV-2" in the claims (as of January 2022), 89 issued from applications that had been accepted under the pilot program, and the average total pendency for those applications was 280 days.  This compared favorably with the 41 patents that recite "COVID-19" or "SARS-CoV-2" in the claims where examination was accelerated under the Track One Prioritized Examination Program, and where the average total pendency was 259 days.

USPTO Announces Continuation of PPH Pilot Program with IMPI

In a notice published in the Official Gazette (1499 OG 496) in June, the U.S. Patent and Trademark Office announced that the Mexican Institute of Industrial Property (IMPI) and USPTO had agreed to extend the Patent Prosecution Highway (PPH) pilot program between the two offices.  Under the PPH pilot program, which was extended to June 30, 2027, the USPTO will treat as timely any PPH request based on IMPI work product filed in the USPTO on or before June 30, 2027.

USPTO Makes Electronic Filing of PTE Applications Permanent

In May 2020, the U.S. Patent and Trademark Office announced that because it considered the effects of the COVID-19 pandemic to be an "extraordinary situation" within the meaning of 37 C.F.R. § 1.183, the Office would permit patentees to file initial Patent Term Extension applications that meet certain criteria via EFS-Web or Patent Center (see "USPTO News Briefs, June 2, 2020).  At the time, the Office noted that while the waiver would be "effective only until the USPTO provides further notice," it was making efforts to allow for electronic filing of PTE applications on a permanent basis.

In a notice of proposed rulemaking published in the Federal Register (87 Fed. Reg. 27043) in May, the U.S. Patent and Trademark Office announced a proposal to amend the Rules of Practice in Patent Cases to require that patent term extension (PTE) applications, interim PTE applications, and any related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system (EFS- Web or Patent Center).  According to the Office, the proposed rule changes would reduce the administrative burden on PTE applicants, as well as improve administrative efficiency by facilitating electronic file management, optimize workflow processes, and reduce processing errors.  The Office noted that it had received informal feedback with respect to the processing of electronic PTE applications under the COVID-19 pandemic waiver, and stakeholders had communicated unanimous support for electronic filing of initial PTE submissions.  The Office also noted that the USPTO and its partner agencies had successfully implemented a system by which the USPTO electronically transmits a copy of any initial submission for PTE to the relevant agency, and that the new system had not caused any processing errors.

USPTO Director's Blog Post Extolling Certainty in § 101 Determinations Paradoxically Increases Uncertainty

By Kevin E. Noonan --

Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (at right) released a blog post on the USPTO's Director's Blog on Monday addressing the fraught subject of subject matter eligibility under 35 U.S.C. § 101 as interpreted over the past decade by the U.S. Supreme Court and implemented by the Office in light of those decisions.

As with much of Director's public pronouncements the tone of the post is mostly upbeat, extoling the Office's efforts in accommodating sometimes confusing if not contradictory instructions from the courts (particularly the Federal Circuit, which is somewhat understandable in view of the occasionally Delphic language on the issue by the High Court).  Director Vidal references the Office's 2022 report to Congress on "Patent eligible subject matter: Public views on the current jurisprudence in the United States" and the message therein that "across the spectrum, stakeholders generally agreed that the law on patent eligibility—like other areas of patent law—needs to be clear, predictable, and consistently applied."  The Director also recites innovation canon in saying that "[t]his clarity and consistency will allow innovators to attract the investment and collaborations that bring more innovation to impact, in turn creating more jobs and solving world problems."

While the sentiments voiced by the Director are admirable (and it would be hard for her to be credible if she didn't subscribe to them) the devil in this instance is not just in the details but in the process of effectuating eligibility determinations within the strictures of recent case law.  To this end, the post mentions the Deferred Subject Matter Eligibility Response (DSMER) pilot program (crediting the impetus for this initiative to Senators Thom Tillis (R-NC) and Tom Cotton (R-AK)) and describing the program as being "designed to evaluate whether examination efficiency and patent quality can be improved by delaying the complete evaluation of subject matter eligibility until other patentability criteria are evaluated as opposed to addressing all requirements for patentability at the same time" and reminding stakeholders that it will expire on July 30, 2022 although patent applications involved in the program will persist during the course of their prosecution.  Regarding its adoption, the Director's statistics state that about one-third of the 600 invitations the Office has sent have been accepted, the Director drawing no conclusions nor making any statements regarding whether this frequency was expected or consistent with the Office being able to draw any conclusions regarding its effectiveness.

Next the Director notes the series of Guidances, including the 2019 Revised Patent Subject Matter Eligibility Guidance, the October 2019 Patent Eligibility Guidance Update, and the Berkheimer Memo, all of which can be found in Section 2106 of the latest version of the Manual of Patent Examining Procedure.  In association with these assertions, the Director provides the encouraging statistic that "the corps-wide eligibility rejection rate [has dropped] from about 25% in 2018 to about 8% today," although it is certainly likely that at least a portion of this improvement is due to applicants adapting to PTO and Federal Circuit standards that have evolved since the Supreme Court began its subject matter eligibility crusade in 2012 with its decision in Mayo Collaborative Services v. Prometheus Laboratories.  The Director also references the Office's October 2020 Report on "Public Views on Artificial Intelligence and Intellectual Property Policy" and its "Adjusting to Alice" report on patent examination outcomes released in April 2020.  These Reports support the conclusions of the Chief Economist that the 2019 revisions to the Office's eligibility guidance produced a 25% decrease in the frequency of Alice-affected technologies to receive a first Office Action asserting a Section 101 rejection, and that "uncertainty about determinations of patent subject matter eligibility for the relevant technologies decreased by a remarkable 44% as compared to the previous year."

This is all well and good as far as it goes, the Director giving credit to prior Directors, administrators, and the examining corps in reducing somewhat the uncertainties caused by judicially created changes in subject matter eligibility law.  But the next sentences undo much of the good feelings produced by these achievements, the Director stating "[d]espite this progress to achieve a more consistent examination under Section 101, there is more work to be done.  Accordingly, we are revisiting our subject matter eligibility guidance."  To this end, the Director asks the public to provide comments on subject matter eligibility by September 15, 2022 to [email protected] and by participating in stakeholder listening sessions.  While it is certainly the case that subject matter eligibility law remains unsettled, to once again poll stakeholders seems a fool's errand (besides being completely redundant).  It is well-established that there are two generic species of applicant:  those who believe that the status quo is optimal for them and their business goals and are thus completely satisfied, and those who have been negatively affected by frank preclusion of certain innovative technologies (medical diagnostics being a principal example) and thus are completely dissatisfied (and have been forced to use trade secret and other means to protect their technologies, albeit imperfectly).  It is hard to see how another round of these efforts will be more successful than the ones that inauguration of this latest iteration indicates have been inadequate.

Some rays of hope may be found in the concluding statements in the blog post, regarding efforts to consult with counterpart offices in foreign countries, with regard to how those countries have largely avoided the confusion that has arisen in the U.S. (although it is likely that the simple reason for the clarity existing abroad on subject matter eligibility is due entirely to the absence of a Supreme Court in those countries that is involved in making patent policy).  To the extent that foreign counterparts can raise any issues current U.S. law or the interpretation thereof on subject matter eligibility that runs afoul of international obligations under the TRIPS agreement such discussions may be helpful.  The blog also notes cooperation between the PTO and the DOJ Solicitor General regarding efforts towards identifying "good vehicles" to achieve the goal of "creating more certain and predictable rights that foster innovation."

The simple fact is that the Supreme Court has shown no recognition that its subject matter eligibility jurisprudence needs to be revisited (even when encouraged to do so by the Solicitor General as in the American Axle case), the Federal Circuit has been unwilling to provide a useful counterbalance to the Court's dicta regarding eligibility, and the PTO does not have the authority under the law to bind judicial decision-making.  Congress is the answer, as frightening as that reality may be in the current political climate, and despite some efforts has not been able to enact legislation that would improve matters.  For the moment, only by taking up Justice Breyer's challenge to the clever draftsman (see "Mayo Collaborative Services v. Prometheus Laboratories -- What Should We Do? (or Can These Claims Be Saved?)") to craft claims sufficient to provide the maximum possible protection with the least risk of invalidation can the situation be ameliorated if not entirely remedied.

USPTO Implements Climate Change Mitigation Pilot Program

By Donald Zuhn --

In a notice published last week in the Federal Register (87 Fed. Reg. 33750), the U.S. Patent and Trademark Office announced the implementation of the Climate Change Mitigation Pilot Program, "which is designed to positively impact the climate by accelerating the examination of patent applications for innovations that reduce greenhouse gas emissions" and "encourage research, development and innovation in the climate space."  Applications accepted under the pilot program will be advanced out of turn (i.e., accorded special status) for a first action on the merits.  Applications accepted under the pilot program will not, however, have to comply with all of the requirements of the accelerated examination program (e.g., the requirement for an examination support document or the petition fee under 37 C.F.R. § 1.17(h)) or the prioritized examination program (e.g., the prioritized examination fee or processing fee).

The Office started accepting petitions to make special under the pilot program on June 3, 2022, and petitions will continue to be accepted under the pilot program until June 5, 2023 or when the Office has accepted 1,000 grantable petitions, whichever occurs first.  The notice indicates that questions regarding a specific petition to make special should be directed to the Office of Petitions.

In order to participate in the pilot program, an Applicant must satisfy the following requirements:

• File a nonprovisional patent application that is ready for examination (including a specification, drawings, if necessary, at least one claim, and payment of all fees associated with the filing of the application).  The application must claim a product and/or process that mitigates climate change by reducing greenhouse gas emissions.  The notice states that a claimed invention covers a product or process that mitigates climate change "when an application includes a claim that would correspond to one or more of the technical concepts within subclass Y02A, Y02B, Y02C, Y02D, Y02E, Y02P, Y02T or Y02W in the Cooperative Patent Classification (CPC) system," and provides an example of an eligible claim being one to a process to capture or dispose of methane, which would correspond to Y02C 20/20.  The notice also indicates that the full schedule of Y02 class can be found here.  When the petition is filed and throughout the pendency of the application, the application cannot contain more than 3 independent claims or more than 20 total claims and cannot contain any multiple dependent claims.  The application or national stage entry must be electronically filed using Patent Center, and the specification, claims, and abstract must be submitted in DOCX format.

• File a petition to make special under the pilot program along with (a) a noncontinuing original utility nonprovisional application or entry into the national stage under 35 U.S.C. § 371 (that has been electronically filed), or within 30 days of the filing date or entry date of the application, or (b) an original utility nonprovisional application claiming the benefit of an earlier filing date under 35 U.S.C. §§ 120, 121, 365(c), or 386(c) of only one prior nonprovisional application or only one prior international application designating the United States (that has been electronically filed), or within 30 days of the filing date of such application.  The notice defines a "noncontinuing application" as an application that is not a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. §§ 120, 121, 365(c), or 386(c) and 37 C.F.R. § 1.78.

• Certify that (1) the claimed invention covers a product or process that mitigates climate change; (2) the product or process is designed to reduce greenhouse gas emissions; (3) the Applicant has a good faith belief that expediting patent examination of the application will likely have a positive impact on the climate; and (4) the inventor or any joint inventor has not been named as the inventor or a joint inventor on more than four other nonprovisional applications in which a petition to make special under the pilot program has been filed.

• Use Form PTO/SB/457 to comply with the petition and certification requirements.  The PTO/SB/457 form must be filed electronically using Patent Center, and form must be filed using the document description indicated on the form.

• Not file the application with a nonpublication request.  If the application was previously filed with a nonpublication request, then a rescission of the nonpublication request must be filed no later than the time the petition to make special is filed.

• File an Application Data Sheet with the petition (unless previously filed with the application).

If a petition to make special under the pilot program does not comply with the above requirements, the Office will (in some circumstances) notify the Applicant of the deficiency and give the Applicant the longer of one month or 30 days to correct the deficiency (the deadline to respond to the notice is not extendable).  The reply to that notice must be filed via Patent Center.  Petitions filed for applications that do not contain an eligible claim; that claim the benefit of two or more prior filed applications that are nonprovisional U.S. applications and/or international applications; or that were not filed within at least 30 days of a qualifying application will be dismissed without the opportunity to correct the deficiency.

If a petition under the pilot program is granted, the Office notes that the accepted application will be placed on an Examiner's special docket until a first office action on the merits has been issued, and after the first action on the merits has been issued, the application will no longer be treated as special during examination and will be placed on the Examiner's regular amended docket.

The notice indicates that if the Examiner makes a telephone restriction requirement, the Applicant must make an election without traverse to an invention that meets the program's eligibility requirements.  If the Applicant refuses to make an election, then the special status of the application will be terminated.  The notice also indicates that if an amendment in response to a first action is filed that is not fully responsive, the Examiner may, at their discretion, provide a shortened statutory period of 2 months for the Applicant to supply a fully responsive reply.  The notice states that while "[t]here is no provision for withdrawal from the pilot program," an Applicant may abandon an application that has been granted special status under the pilot program in favor of a continuing application.  The continuing application would have to independently qualify for participation in the pilot program, however.

USPTO News Briefs

By Donald Zuhn --

USPTO Terminates Rospatent as ISA and IPEA for International Applications

In a News Brief issued last week, the U.S. Patent and Trademark Office announced that it had notified the Russian Federal Service for Intellectual Property, ​Patents and Trademarks (Rospatent) of the USPTO's intent to terminate ​its agreement concerning Rospatent functioning as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications received by the USPTO as a Receiving Office under the Patent Cooperation Treaty (PCT).  The USPTO noted that the termination will take effect on December 1, 2022.  In announcing the termination, the USPTO suggested that "[i]n the interim, applicants filing international applications under the PCT are advised to exercise caution before selecting Rospatent as an ISA or IPEA."

Patent Docs readers will recall that in March, the USPTO announced the termination of engagement with Rospatent (and also with the Eurasian Patent Organization (EAPO) and National Center of Intellectual Property (NCIP) in Belarus), and then announced that it would no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when such requests were based on work performed by Rospatent as an Office of Earlier Examination under the GPPH, and then advised Applicants filing international applications under the Patent Cooperation Treaty (PCT) to exercise caution before selecting Rospatent as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA).

USPTO Unveils New Patent Quality Metrics Webpage

In a Patent Alert email distributed to stakeholders last week, the U.S. Patent and Trademark Office announced the launch of a new quality metrics webpage (see below), which shares the metrics that the Office uses to gauge patent examination quality.  In unveiling the new webpage, the Office noted that it is committed to "advancing a patent system that works for the public good," and as such was "focusing on [its] mission to issue robust and reliable patents that incentivize and protect innovation and investments."  The Office declared that "[t]he first step in that process is looking at patent quality, processes, and perceptions."  According to the Office's email, the new webpage reveals how the Office assesses the quality of its processes and measures stakeholder perceptions.  The Office notes that moving forward, it will use the data on the webpage, as well as internal, Patent Public Advisory Committee, and other stakeholder input, to guide patent examination improvements.  The Office also noted that it is soliciting and considering quality measures and changes, and asked that feedback or questions about the Office's patent quality metrics be sent to [email protected] or [email protected].  The quality metrics webpage can also be accessed through the Office's Patents Data Visualization Center webpage.

USPTO Reopens Facilities to the Public

In a News Brief distributed to stakeholders last month, the U.S. Patent and Trademark Office announced that it had entered Phase 3 and had reopened its facilities to the public.  The Office noted that on May 25, it had "fully reopened all locations to employees and resumed some in-person events and appointments for the public."  The Office noted that visitors should review its health questionnaire prior to entering one of the Office's locations, and may not enter facilities if they answer "yes" to any of the following questions on the questionnaire:

1.  In the last 10 days, have you tested positive for COVID-19 or been told by a healthcare provider that you are presumed positive?
2.  In the last 48 hours, have you experienced any of the below symptoms that cannot be explained by something other than COVID-19?
3.  If you have recently traveled (internationally or domestically), are you currently subject to any federal, state, tribal, or local quarantine or isolation requirements (requirements may vary depending on your vaccination status)?
4.  In the last 10 days, have you been in close contact (6 feet or closer for a cumulative total of 15 minutes over a 24-hour period) with an individual who tested positive or is presumed positive for COVID-19, or has any health official or medical provider informed you that you have potentially been exposed to COVID-19? [The last question applies to visitors who "are not up to date on [their] COVID-19 vaccinations and have not had COVID-19 within the last 90 days".]

The Office noted that its continues to monitor local conditions for all of its locations as determined by the Center for Disease Control's (CDC) COVID-19 community levels, and that such levels can be low, medium, or high.  In communities with low or medium transmission levels, wearing a mask in the Office's buildings is optional, and in communities with high transmission levels, wearing a mask in the Office's buildings is mandatory.  The Office's locations are:  Alexandria, VA; Dallas, TX; Denver, CO; Detroit, MI; and San Jose, CA.  Additional information on the USPTO's COVID-19 protocols can be found at the Office's COVID-19 webpage.

USPTO Allows Applicants to File PDF with DOCX Submissions on Temporary Basis

By Donald Zuhn --

In a notice published last week in the Federal Register (87 Fed. Reg. 25226), the U.S. Patent and Trademark Office announced that it will allow Applicants to submit an applicant-generated PDF version of applications filed in DOCX format along with the DOCX file when filing an application using the Office's Patent Center interface.

In August of 2020, the Office announced that for applications that are not filed in DOCX format after January 1, 2022, such filings would carry a surcharge of $400 for large entities under 37 C.F.R. § 1.16(u).  Last November, the Office announced that the effective date for assessment of the surcharge would be delayed until January 1, 2023 (see "USPTO News Briefs").

The Office has been encouraging Applicants to begin filing patent applications in DOCX format, and by allowing Applicants to submit an applicant-generated PDF version of applications filed in DOCX format, the Office hopes to help address concerns some Applicants have raised about the DOCX format, as well as allow Applicants to get acclimated to the process of filing applications in DOCX format.  The Office notes that the option of providing an applicant-generated PDF version of applications is being offered on a temporary basis, beginning on April 28, 2022 and ending (at least as of now) on December 31, 2022.  Applicants who submit an applicant-generated PDF version of applications filed in DOCX format will not be required to pay any additional fees, such as application size fees, for the PDF version.

The Office has created a new document description for the optional applicant-generated PDF ("Auxiliary PDF of application") and a new document code ("AUX.PDF").  The Office also notes that the option of providing an applicant-generated PDF version of applications will not be available for applications filed via the EFS-Web.

The notice indicates that the new option will "safeguard the applicant should any conversion discrepancies have taken place" when filing applications in DOCX format.  In particular, Applicants who submit an applicant-generated PDF version of applications filed in DOCX format will be able to rely on that PDF if a discrepancy occurs during the filing process.  The notice also indicates that if an error or discrepancy in the record that resulted from filing an application in DOCX format is identified, Applicants should promptly notify the Patent Electronic Business Center (EBC) at 866–217–9197 (toll-free), 571–272–4100, or [email protected] so the EBC can investigate the issue.  For corrections to the record that are supported by the validated DOCX version of the application, the Office notes that Applicants can file a petition under 37 C.F.R. § 1.181.  For corrections to the record that are supported by the applicant-generated PDF, the Office notes that Applicants should file a petition under 37 C.F.R. § 1.182.  For petitions filed under § 1.182, the Office will be waiving the fee under 37 C.F.R. § 1.17(f) during the option's temporary period.  According to the notice, the applicant-generated PDF that accompanies a DOCX filing will not become part of the permanent record unless a petition is filed requesting that the Office correct the record in view of the applicant-generated PDF.

The Office concludes the notice by stating that:

Applicants are strongly encouraged to review their applications, including the USPTO-generated PDF, shortly after filing the application to identify any errors or discrepancies in the record, as discussed above.  The applicant should file any necessary petition to correct the record early in prosecution and promptly after discovering any errors or discrepancies.

For additional information regarding this topic, please see:

• "USPTO News Briefs," November 22, 2021
• "USPTO Support for Filing in DOCX Format Still a Work in Progress," January 7, 2020
• "USPTO News Briefs," November 12, 2019

USPTO News Briefs

By Donald Zuhn --

USPTO Launches New Patent Search Tool

In a press release issued earlier this year, the U.S. Patent and Trademark Office announced the launch of a new Patent Public Search tool.  The Office notes that the new patent search tool, which is based on the Patents End-to-End (PE2E) search tool that USPTO Examiners use to identify prior art, will provide for convenient and robust full-text searching of U.S. patents and published patent applications.

The tool combines the capabilities of the Public-Examiner's Automated Search Tool (PubEAST), Public-Web-based Examiner's Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT), all of which are scheduled to be retired in September.  Previously, stakeholders could only access PubEAST and PubWEST at a USPTO facility, but with the launch of the new tool, anyone with internet access can perform such searches.

The Office notes that the following benefits are provided by the new search tool:

• Layouts: Multiple layouts with multiple tools to provide more data at once
• Highlighting: Multi-color highlighting that can be viewed across multiple gadgets and turned on or off
• Tagging: Ability to tag documents into multiple groups that can be renamed and color coordinated
• Notes: Ability to add notes to an image with options to include tags, relevant claims, and highlights
• Quality: Robust full-text searching of U.S. patents and published applications
• Familiar usability: Same searching syntax as PubEAST and PubWEST

With the launch of the new search tool, the Office has also launched a Patent Public Search webpage, which includes FAQs, training resources, and other information to help users work with the new search tool.  Questions concerning the Patent Public Search tool can be directed to the Public Search Facility at [email protected].

USPTO Further Extends COVID-19 Prioritized Examination Pilot Program

In a notice published last month in the Federal Register (87 Fed. Reg. 17073), the U.S. Patent and Trademark Office announced a third extension of the modified COVID-19 Prioritized Examination Pilot Program.  Requests to participate in the pilot program that are compliant with the program's requirements and are filed on or before June 30, 2022, will be accepted in the pilot program.

The Office implemented the COVID-19 Prioritized Examination Pilot Program in May 2020.  The pilot program allows applicants that qualify for small or micro entity status to request prioritized examination without paying the fees typically associated with such prioritized examination.  To qualify for the pilot program, the claims of an application must cover a product or process related to COVID–19, and such product or process must be subject to an applicable FDA approval for COVID–19 use.  Such approvals may include, for example, an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA).  In September 2021, the Office extended the program to December 31, 2021, and modified the program to remove the limit on the number of patent applications that could be accepted under the pilot program.  In December 2021, the Office extended the pilot program again, this time to Match 31, 2022.

In its latest notice on the pilot program, the Office indicates that as of February 7, 2022, 225 patents had issued from applications granted prioritized status under the program.  The Office also notes that the average total pendency of applications in the program, from filing date to issue date, was 298 days, and that the shortest pendency from filing date to issue date was 75 days.

USPTO Publishes Notice of Termination of Global PPH with Rospatent

Last month, the U.S. Patent and Trademark Office announced that it would no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when such requests are based on work performed by Rospatent as an Office of Earlier Examination under the GPPH, with the change taking effect on March 11 (see "USPTO Terminates PPH with Rospatent and Terminates Engagement with NCIP").  The USPTO also noted that in pending cases in which it had already granted special status under the GPPH to applications based on work performed by Rospatent, the Office would be removing that status and returning those applications to the regular processing and examination queue.  Earlier today, the change in the GPPH with Rospatent that the Office announced last month was published in the Federal Register (87 Fed. Reg. 19486).

USPTO Provides Advice Regarding Dealings with Rospatent

By Donald Zuhn –-

Earlier this month, the U.S. Patent and Trademark Office announced that it was terminating engagement with officials from the Russian Federal Service for Intellectual Property (Rospatent) and Eurasian Patent Organization (EAPO), per guidance issued by the U.S. Department of State (see "USPTO Terminates Engagement with Rospatent and EAPO").  Nearly a week later, the USPTO announced that it would no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when such requests are based on work performed by Rospatent as an Office of Earlier Examination under the GPPH (see "USPTO Terminates PPH with Rospatent and Terminates Engagement with NCIP").  The USPTO also announced at that time that it had terminated engagement with officials from the national intellectual property office of Belarus (i.e., the National Center of Intellectual Property (NCIP)).

In a USPTO Alert email distributed earlier today, the Office advised stakeholders that questions regarding dealings with Rospatent should be directed to the U.S. Department of the Treasury's Office of Foreign Assets Control (OFAC) via email at [email protected].  The Office also advised Applicants filing international applications under the Patent Cooperation Treaty (PCT) to exercise caution before selecting Rospatent as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), explaining that "[d]oing so may prevent successful processing of international applications under the PCT, including the transmittal of fees through financial institutions."  The USPTO updated its guidance statement regarding engagement with Rospatent, EAPO, and NCIP to include the above advice.

For additional information regarding this and other related topics, please see:

• "Georgian and Estonian Patent Offices Join Other IP Offices in Expressing Support for Ukraine," March 13, 2022
• "Several Law Firms Close Russian Offices," March 13, 2022
• "Russia Permits Uncompensated Use of Certain Patents without Patentee Consent," March 11, 2022
• "Lithuanian Patent Office and EUIPO Join Other Patent Offices in Expressing Support for Ukraine," March 10, 2022
• "USPTO Terminates PPH with Rospatent and Terminates Engagement with NCIP," March 10, 2022
• " Life Sciences Business Leaders Call for Immediate and Complete Economic Disengagement from Russia," March 9, 2022
• "PRH Joins Other Patent Offices in Expressing Support for Ukraine," March 9, 2022
• "USPTO Terminates Engagement with Rospatent and EAPO," March 7, 2022
• "Ukrpatent Continues Normal Operations Despite Russian Aggression," March 6, 2022