- The USPTO announced Derrick Brent as the new Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO (“Deputy Director”), effective August 1. His responsibilities will include working with Director Kathi Vidal to lead the USPTO, advance IP policy and procedures, expand the USPTO’s outreach efforts, and execute the agency’s policies, priorities, and programs.
- On July 29, Director Kathi Vidal delivered official remarks at the Trademark Public Advisory Committee (TPAC) quarterly meeting.
- On July 6, Director Vidal sent a response to a letter from Acting Food and Drug Administration (FDA) Commissioner Janet Woodcock in which the FDA suggested further engagement between the FDA and USPTO “to facilitate greater awareness of our complementary work and introduce efficiency in our respective workstreams.”
- In recent blog posts, Director Vidal has highlighted the USPTO’s Council for Inclusive Innovation, the USPTO’s duty of disclosure and duty of reasonable inquiry, efforts to provide clear guidance on patent subject matter eligibility, efforts to collect so-called “X-patents” that were destroyed in an 1836 Patent Office fire, and the Biden Administration’s efforts to lower drug prices.
- On August 1, as previously announced, the USPTO transitioned to the Patent Center system and retired the the legacy Public Patent Application Information Retrieval (Public PAIR) tool for the electronic filing and management of patent applications. The USPTO published a corresponding blog post.
- On August 1, the USPTO also began implementing a streamlined process for following new assignments, obtaining information on pending assignments, questions on assignments, liens on patents, filing assignments, recordation forms, and trademark assignments.
- The USPTO became a technology partner to the global green-technology platform of the World Intellectual Property Organization (WIPO), WIPO GREEN.
- The USPTO and the World Intellectual Property Organization (WIPO) agreed to undertake joint efforts to facilitate the resolution of disputes related to standard essential patents.
USPTO Engagement in Russia
- On June 1, the USPTO notified the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) of the USPTO’s intent to terminate their 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 termination will be effective December 1, 2022.
Notices, Guidance, and Requests
- Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board, 87 Fed. Reg. 45764 (July 29, 2022) (Notice intended to clarify the duties, including as to materials or statements material to patentability or statements made to the USPTO that are inconsistent with statements submitted to the FDA and other governmental agencies)
- Request for Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of Patent Trial and Appeal Board Decisions, 87 Fed. Reg. 43249 (July 20, 2022) [Written comments due by September 19, 2022] (USPTO is seeking public comments on practices and policies for the review of PTAB decisions, including seeing input on Director review, Precedential Opinion Panel (POP) review, and internal circulation and review of PTAB decisions).
- Trademarks USPTO.gov Account ID Verification Program, 87 Fed. Reg. 41114 (July 11, 2022) (Continuing its efforts to protect the integrity of the US trademark register, the USPTO will make it mandatory for existing and new account holders who occupy an appropriate user role to verify their identity as a condition for filing electronic trademark forms).
- There are no new final rules.
- There are no new interim rules.
- 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
- Zynga Inc. v. IGT (IPR2022-00199) [Requesting POP review of Institution Decision, presenting the question of whether the Board may “retroactively waive the scope and effect of a final judgment resulting from a prior interference proceeding”]
- Google LLC v. Parus Holdings, Inc. (IPR2022-00279) [Requesting POP review of Institution Decision on the basis that “allowing the Board’s findings in the [Institution] Decision to stand will result in irreconcilable findings with at least one other decision of the Board (the [Final Written Decision in IPR2020-00846], and potentially, two pending decisions to institute in IPR2022-00358 and IPR2022-00523).”]
- A new request for POP review was also filed in Philip Morris Products SA v. RAI Strategic Holdings, Inc. (IPR2020-00919), but the request was subsequently dismissed as untimely.