United States: PTAB/USPTO Update - November 2021

USPTO News

• On October 26, 2021, President Joe Biden nominated Kathi Vidal, the managing partner of Winston and Strawn's Silicon Valley office, as the next Under Secretary for Intellectual Property and Director of the USPTO.
• On October 27, 2021, Secretary of Commerce Gina Raimondo announced that she would serve as the Chair of the Council for Inclusive Innovation (CI²).  CI² includes representatives from industry, academia, non-profit, and government and advises the USPTO on a national strategy to build a more diverse and inclusive innovation ecosystem.
• The US Department of Commerce is seeking nominations to serve on the National Artificial Intelligence Advisory Committee. The USPTO is encouraging members of the intellectual property community to submit nominations.
• Deputy General Counsel for Intellectual Property Law and Solicitor Thomas Krause conducted a Boardside Chat on October 21, 2021 about the USPTO's Office of the Solicitor.
• The Trademark Public Advisory Committee held a quarterly meeting on October 15, 2021 to review policies, goals, performance, budget, and user fees.

Legislation

• There are no significant updates on the Unleashing American Innovators Act of 2021, Pride in Patent Ownership Act, SHOP SAFE Act, or Restoring the America Invents Act.

Notices, Guidance, and Requests

• The USPTO has extended the After Final Consideration Pilot (AFCP) 2.0 program through September 30, 2022.
• The USPTO issued a notice "designating the interruption in service of the United States Postal Service (USPS) in the areas affected by Hurricane Ida in Louisiana, beginning on Friday, August 27, 2021, and in New Jersey, beginning on Thursday, September 2, 2021, as a postal service interruption and emergency within the meaning of 35 U.S.C. 21(a) and 37 CFR 1.10(i) and 2.195(d)."
• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Trademark Post Registration, 86 Fed. Reg. 203 (October 25, 2021) [Written comment period closes November 24, 2021] (seeking comments on "information collection cover[ing] various communications submitted by individuals and businesses to the USPTO occurring after registration of a trademark.").
• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Reexaminations, Supplemental Examinations, and Post Patent Submissions, 86 Fed. Reg. 199 (October 19, 2021) [Written comment period reopened to November 18, 2021] (seeking comments on "[e]xtension and revision of a currently approved information collection" for reexaminations, supplemental examinations, and post patent submissions.).
• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Matters Related to First Inventor To File, 86 Fed. Reg. 190 (October 5, 2021) [Written comment period closes December 6, 2021] (seeking comments on information collection of "information required by 37 CFR 1.55(k), 1.78(a)(6), and 1.78(d)(6) to assist the USPTO in determining whether an application [filed on or after March 16, 2013 but claiming priority to an application prior to that date] is subject to 35 U.S.C. 102 and 103 as amended by Section 3 of the AIA, or 35 U.S.C. 102 and 103, in effect on March 15, 2013.").

Final Rules

• Electronic Submission of a Sequence Listing, a Large Table, or a Computer Program Listing Appendix in Patent Applications, 86 Fed. Reg. 196 (October 14, 2021).
• International Trademark Classification Changes, 86 Fed. Reg. 191 (October 6, 2021) ("[R]evising § 6.1 of 37 CFR part 6 to incorporate classification changes and modifications, as listed in the Nice Classification (11th ed., ver. 2022), published by WIPO, that will become effective on January 1, 2022.").

Interim Rules

• There are no interim rules.

Proposed Rules

• There are no proposed rules.

PTAB Decisions

• New Precedential PTAB Decisions

• New Informative PTAB Decisions

New Requests for POP Review

There were two new requests for POP review:

• Triplet Therapeutics, Inc. v. Board of Supervisors of LSU Agric. and Mech. Coll. (PGR2021-00059) [Notice of Receipt of POP Request issued October 5, 2021] [Petitioner requests review of Institution Decision, presenting the question of whether 35 U.S.C. § 325(d) permits the Board to deny institution of "a written description challenge presented in the petition" which "is [allegedly] the same argument as an enablement rejection raised during prosecution."]
• Cisco Sys., Inc. v K.Mizra LLC (IPR2021-00593, -00594) [Notice of Receipt of POP Request issued October 12, 2021] [Patent Owner requests review of Institution Decision, presenting the question of "whether Fintiv factor 2 should compare the proximity of the district court's trial date to the projected completion of Director review, as opposed to the projected statutory deadline for a final written decision, in light of the Supreme Court's decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021)."]

Requests for Director Review

• Parties have submitted 118 requests for Director review under the USPTO's interim process in light of the Supreme Court's decision in U.S. v. Arthrex. Of those requests, a total of 51 have been denied, 66 are pending, and one has been withdrawn. No request has been granted.

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