USPTO News

• On March 6, the USPTO announced a new Green Energy Category of its Patents for Humanity Program.  Patents for Humanity is an awards competition that recognizes innovators who use technology to meet global humanitarian challenges.
• On March 8, in recognition of International Women’s Day, the USPTO and other Global IP offices shared a joint statement recognizing the importance of diversity in innovation and creativity and the value that women bring to economic progress worldwide. Director Kathi Vidal also delivered remarks at Women in IP: Diversity and Inclusion.
• The USPTO’s Council for Inclusive Innovation launched the First-Time Filer Expedited Examination Pilot Program, which expedites initial feedback on patent applications in a first office action filed by “micro-entities” who are first-time filers for patent rights.
• On March 28, the USPTO’s Office of the Chief Economist released an Economic Note looking at the impact of the COVID-19 pandemic on employment in IP-intensive industries.

Notices, Guidance, and Requests

• First-Time Filer Expedited Examination Pilot Program, 88 Fed. Reg. 14607 (March 9, 2023) [Announcing the First-Time Filer Expedited Examination Pilot Program, which is designed to increase accessibility to the patent system for inventors who are new to the patent application process and which expedites the first Office action for program participants]
• Manual of Patent Examining Procedure, Ninth Edition, Revision of July 2022, 88 Fed. Reg. 13437 (March 3, 2023) [Announcing publication of the July 2022 revision of the Manual of Patent Examining Procedure (MPEP) in February 2023]

Final Rules

• Setting and Adjusting Patent Fees during Fiscal Year 2020, 88 Fed. Reg. 18052 (March 27, 2023) [Delaying the effective date of fees for patent applications that are not filed in the DOCX format until June 30, 2023]
• Reducing Patent Fees for Small Entities and Micro Entities under the Unleashing American Innovators Act of 2022, 88 Fed. Reg. 17147 (March 22, 2023) [Increasing fee discounts for small entities from 50% to 60% and fee discounts for micro entities from 75% to 80% for fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents]
• Establishing Permanent Electronic Filing for Patent Term Extension Applications, 88 Fed. Reg. 13028 (March 2, 2023) [Revising Patent Rules 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 (Patent Center or EFS-Web)]

Interim Rules

• There are no interim rules.

Proposed Rules

• There are no proposed rules.

Legislation

• On February 9, 2023, the Senate Committee on the Judiciary ordered the Interagency Patent Coordination and Improvement Act of 2023 to be reported without amendment favorably.  The bill would “establish an interagency task force between the United States Patent and Trademark Office and the Food and Drug Administration for purposes of sharing information and providing technical assistance with respect to patents, and for other purposes.”

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 Requests for POP Review

• Microsoft Corporation v. AlmondNet, Inc. (IPR2022-01319) [Requesting POP review of Institution Decision, presenting the questions of (1) “When a prior art reference is cited in an IDS but not otherwise addressed during prosecution, is it sufficient to show that the prior art reference raises a substantial question of unpatentability as to at least one challenged claim to demonstrate that the Examiner materially erred during prosecution?”; (2) “Can a Petition based on a reference cited in an IDS but not otherwise addressed during prosecution be discretionarily denied without an evaluation of the merits of the grounds presented?”]
• Guardant Health, Inc. v. University of Washington Through its Center for Commercialization (IPR2022-01388) [Requesting POP review of Institution Decision, presenting the questions of (1) “Does General Plastic apply when a petitioner timely applies a patent owner’s successful inconsistent argument in a subsequent petition?”; (2) “Is discretionary denial under General Plastic an equitable remedy to prevent rather than reward abuse?”]
• Netflix, Inc. et al v. DivX, LLC et al (IPR2020-00052) [Requesting POP review of Final Written Decision, presenting the question of “[t]he circumstances under which an organization with a business of furthering its members’ interests by challenging patents in AIA proceedings, such as Unified Patents LLC, will be considered a privy or real party-ininterest of its members so as to estop members’ petitions under 35 U.S.C. § 315 (e).”]
• Roku, Inc. v. IOENGINE, LLC (IPR2022-01257) [Requesting POP review of Institution Decision “to correct the irreconcilable claim construction of ‘terminal’ in Claim 184 of U.S. Patent No. 10,447,819 meaning one thing for infringement in the District Court and another thing for anticipation at the Board.”]
• Volvo Penta of the Americas, LLC v. Brunswick Corporation (IPR2022-01366, -01367, -01368, -01369, -01424) [Requesting POP review of Institution Decisions, presenting the questions of (1) “Whether the Fintiv framework should be applied when the Board considers exercising its discretion to deny institution in situations that include (a) a federal district court decision that invalidates a challenged claim as unpatentable under 35 U.S.C. § 101 and (b) the federal district court decision issues after the filing of the petition but before the decision on institution” and (2) “Whether a challenged claim that a district court decision invalidates as unpatentable under 35 U.S.C. § 101, but the opportunity for appeal of such decision has not yet been exhausted, limits the Board’s authority to institute inter partes review of such claim.”]
• PerfectVision Manufacturing, Inc. v. PPC Broadband, Inc. (IPR2022-01523) [Requesting POP review of Institution Decision, presenting the question of “whether 35 U.S.C. § 315(b) can be applied retroactively to bar a party from having a single opportunity to seek inter partes review of a patent based on a complaint alleging infringement of that patent served prior to the enactment of the AIA.”]
• Maplebear Inc. d/b/a Instacart v. Consumeron, LLC (IPR2022-01356, -01357, -01358, -01359) [Requesting POP review of Institution Decisions, presenting the questions of (1) “Whether a Petitioner’s abuse of process is an independent ground for discretionary denial that the Board must consider when deciding whether to institute trial”; (2) “Whether the Board can treat an unauthorized filing in a District Court litigation as a true Sotera stipulation, when it in reality is not a true Sotera stipulation”; and (3) “Whether the Federal Circuit’s March 13, 2023 Opinion in Apple Inc. et al. v. Vidal justifies a stay in the instant proceedings as the standard for discretionary denials might change.”]
• Unified Patents, LLC v. MemoryWeb, LLC (IPR2021-01413) [Requesting POP review of Board’s Order Identifying Real Party in Interest on the basis that “this case raises fairness, procedural, and case management issues—not to mention inconsistent results between panels—that will affect the Office’s conduct of IPRs and PGRs in the future” (full basis for request filed under seal)]