News & Analysis as of

Federal Register United States Patent and Trademark Office

Sheppard Mullin Richter & Hampton LLP

USPTO Roundtable: AI and Right of Publicity

The United States Patent and Trademark Office (USPTO) is holding a roundtable discussion, on August 5, 2024, about the intersection of AI technology and legal protections for individuals’ reputations and name, image, voice,...more

Axinn, Veltrop & Harkrider LLP

A is for Alice, and 2A is for AI: Request for Comments on the New Guidance Update on Subject Matter Eligibility From the USPTO

The 2024 Guidance Update on patent subject matter eligibility applicable to AI inventions, which will be incorporated into the MPEP “in due course,” is scheduled to be published in the Federal Register on July 17, 2024. ...more

Womble Bond Dickinson

Codifying the Experimental Use Exception? USPTO Seeks Public Input

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The United States Patent and Trademark Office (USPTO) released a Notice on the Federal Register (“the Notice”) today requesting public commentary and input on the current state of the experimental use exception. The USPTO is...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Updates Service Methods for Notices of Appeal and Related Documents

In a Federal Register notice dated March 29, 2024, the U.S. Patent and Trademark Office is updating the required method for serving it with a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, a notice of...more

Fox Rothschild LLP

Inventorship: USPTO Guidance on AI-Assisted Inventions Underscores Importance of ‘Human Contributions’

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The United States Patent and Trademark Office (USPTO) published a Federal Register Notice on Feb. 13, 2024, providing guidance on inventorship for artificial intelligence-assisted inventions. The Guidance applies to all...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO issues new guidance on AI’s role in inventorship of patents

On February 12, 2024, the United States Patent and Trademark Office (USPTO) issued guidance clarifying the role of artificial intelligence (AI) in the inventorship of patents. The document exhibits a nuanced approach to the...more

Morrison & Foerster LLP

Comment on Morphing U.S. Biotechnology Regulations

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The U.S. Department of Agriculture (USDA) and U.S. Patent and Trademark Office (USPTO) have recently opened requests for stakeholder engagement regarding biotechnology regulatory frameworks. These requests provide the...more

McDermott Will & Emery

PTO Reduces Small and Micro-Entity Fees

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) issued a final rule reducing certain patent fees for small and micro-entities on March 22, 2023. The Federal Register notice can be found here. Small entity filing fee discounts are...more

Foley & Lardner LLP

USPTO Discusses Duty of Disclosure and Duty of Reasonable Inquiry

Foley & Lardner LLP on

On February 23, 2023, the U.S. Patent and Trademark Office (USPTO) held a virtual panel discussion on the duty of disclosure and duty of reasonable inquiry. While both duties apply regardless of technology area, the...more

Foley & Lardner LLP

USPTO Delays Fee For Non-DOCX Applications

Foley & Lardner LLP on

The USPTO has announced a further delay of the fee for patent applications that are not filed in DOCX format. Originally set to take effect January 1, 2022, and then delayed to January 1, 2023, the USPTO now has delayed the...more

Foley & Lardner LLP

USPTO Ideas For Bolstering Robustness And Reliability Of Patents Demand Attention And Stakeholder Input

Foley & Lardner LLP on

The USPTO has issued a Federal Register Notice soliciting comments on “proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while...more

Foley & Lardner LLP

USPTO Proposes To Require Form For IDS PTA Safe Harbor

Foley & Lardner LLP on

The USPTO Patent Term Adjustment (PTA) rules include a “safe harbor” that avoids a PTA deduction for “Applicant delay” for Information Disclosure Statements that are accompanied by a certain statement averring that the items...more

Procopio, Cory, Hargreaves & Savitch LLP

USPTO Introduces Climate Change Mitigation Pilot Program

Throughout history, innovation and human intellect have been the main factors for solving humankind’s problems. Today, climate change has become a major threat and can no longer be ignored. On June 3, 2022, the United States...more

Dorsey & Whitney LLP

USPTO’s COVID-19 Prioritized Examination Pilot Program extended through 31 December 2022

Dorsey & Whitney LLP on

Yesterday, a notice was published in the Federal Register announcing yet another extension of the U.S. Patent and Trademark Office (USPTO) pilot program for expedited review of COVID-19-associated patent applications (the...more

MoFo Life Sciences

The USPTO Proposes To Establish Permanent Electronic Filing For Patent Term Extension Applications

MoFo Life Sciences on

On May 6, 2022, the United States Patent and Trademark Office (USPTO) issued a Notice, proposing to amend the Rules of Practice in Patent Cases to allow electronic submissions of patent term extension (PTE) applications,...more

Foley & Lardner LLP

USPTO Announces Deferred Subject Matter Eligibility Response Pilot Program

Foley & Lardner LLP on

In a Federal Register Notice published January 6, 2022, the USPTO announced a new pilot program that will permit certain applicants to temporarily defer responding to subject matter eligibility (“SME”) rejections. The program...more

Ladas & Parry LLP

USPTO To Put Into Action The Final Rule Of The TM Modernization Act (TMA)

Ladas & Parry LLP on

A new rule has been published by The United States Patent and Trademark Office (USPTO) in the Federal Register to put into action the particulars of the Trademark Modernization Act (TMA) of 2020...more

Fox Rothschild LLP

The USPTO Issues Regulations Implementing the Trademark Modernization Act of 2020

Fox Rothschild LLP on

Today, the USPTO issued regulations implementing the provisions of the Trademark Modernization Act of 2020 (“TMA”). Practitioners should review the Regulations as soon as possible to familiarize themselves with the new...more

Fitch, Even, Tabin & Flannery LLP

USPTO Issues Guidance on Prophetic Examples

On July 1, the USPTO published a notice in the Federal Register with guidance regarding the proper presentation of prophetic and working examples in a patent application. Prophetic examples (sometimes referred to as “paper...more

McDermott Will & Emery

USPTO Conducting Patent Eligibility Jurisprudence Study

McDermott Will & Emery on

At the request of Senators Thom Tillis (R-NC), Marie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE), the US Patent & Trademark Office (USPTO) is undertaking a study on the current state of patent eligibility...more

Holland & Knight LLP

It Is Time to Air your Section 101 Patent Eligibility Grievances

Holland & Knight LLP on

Grab your aluminum pole because it's time for the airing of [patent eligibility] grievances. The U.S. Patent and Trademark Office (USPTO), at the request of Sens. Thom Tillis (R-Texas), Mazie Hirono (D-Hawaii), Tom...more

Foley & Lardner LLP

Mind Your Examples

Foley & Lardner LLP on

In an unusual Federal Register Notice, the USPTO “reminded” applicants that “patent applications must properly present examples in a manner that clearly distinguishes between prophetic examples that describe predicted...more

Foley & Lardner LLP

USPTO Proposes To Close Gap In Terminal Disclaimer Practice

Foley & Lardner LLP on

The doctrine of obviousness-type double patenting is one of the most complicated and most confounding aspects of U.S. patent law. Although a Terminal Disclaimer can overcome most obviousness-type double patenting rejections,...more

Foley & Lardner LLP

USPTO Publishes Proposed Guidelines On USPTO CLE Credit

Foley & Lardner LLP on

The USPTO has published proposed guidelines on the types of courses and activities that will qualify for USPTO CLE credit, which practitioners may voluntarily report in the mandatory biennial registration statements that will...more

Foley & Lardner LLP

USPTO Announces New Program To Promote Publication Of COVID-19 Innovation

Foley & Lardner LLP on

In an effort to both promote innovation against COVID-19 and promote dissemination of information about innovation against COVID-19, the USPTO is launching a new “deferred fee” pilot program for certain provisional patent...more

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