USPTO News

• USPTO Director Andrei Iancu and Deputy Director Laura Peter resigned from their respective posts prior to inauguration day. Commissioner for Patents Drew Hirschfeld and Senior Counsel Coke Morgan Stewart are temporarily performing the functions and duties of the Director and Deputy Director, respectively. Prior to his departure, Director Iancu reflected on his tenure as USPTO director in a blog post.
• USPTO published an executive summary of public comments received on discretionary institution of AIA proceedings.
• The National Council for Expanding American Innovation (NCEAI) held its first Innovation Chat on January 12. 
• USPTO released the 2019-2020 Telework Annual Report, highlighting the agency's telework initiatives. 
• USPTO released a special report examining the impact of Chinese government subsidies and other non-market factors on the recent rise in patent and trademark filings in China.
• USPTO issued a guidance memorandum on the approach to indefiniteness in AIA post-grant proceedings. 
• USPTO updated its fee schedule, including changes to certain PCT, Trademark, and TTAB fees.

Notices, Guidance and Requests

• Request for Information: Sovereign Immunity Study, 86 Fed. Reg. 13 (January 22, 2021) [Written comments period closes February 22, 2021] (seeking input on the extent to which patent or trademark rights holders are experiencing infringement by state entities without adequate remedies under state law, and the extent to which such infringements appear to be based on intentional or reckless conduct). 
• Secondary Trademark Infringement Liability in the E–Commerce Setting, 86 Fed. Reg. 6 (January 11, 2021) [Written comments period closed January 25, 2021] (seeking information from intellectual property rights holders, online third-party marketplaces and other third-party online intermediaries, and other private sector stakeholders on the application of the traditional doctrines of trademark infringement to the e-commerce setting).

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no proposed rules.

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

• SK Innovation Co., Ltd. et al v. LG Chem, Ltd. et al (IPR2020-01036, IPR2020-00981, IPR2020-00982, IPR2020-00991, IPR2020-00987, IPR2020-00992) [Notification of Receipt of POP Request issued January 7, 2021] [Petitioner requests rehearing of Institution Decisions, presenting the question of whether the precedential Fintiv decision, “which concerns parallel district court litigation, should be applied with equal force to parallel ITC proceedings without accounting for the significantly different legal impact of an Article III court and the ITC, an agency that lacks the statutory authority of a district court to invalidate a patent and whose jurisdiction and expertise in patent matters is clearly not entitled to the same deference by the Board."] 
• Mitek Systems, Inc. v. United Services Automobile Association (IPR2020-00975, IPR2020-00976) [Notification of Receipt of POP Request issued December 7, 2020; Order Denying POP Request issued January 6, 2021] [Patent owner requests rehearing of Institution Decisions, presenting the following questions: (a) “whether a supplier of technology has a “significant relationship” with its customer merely by (1) providing technology that allegedly performs some (but not all) of the limitations of a challenged claim and (2) participating in an underlying district court infringement case in response to a subpoena by Patent Owner," (b) "whether a common interest agreement between a supplier of technology that allegedly performs some (but not all) of the limitations of a challenged claim and its customer is relevant to the discretionary denial inquiry; and if (1) or (2) is true,” and (c) "when and under what test should the Board deny institution pursuant to its discretion under § 314(a) on the basis of such facts."]