by Dennis Crouch
Over the past two months, the USPTO has issued an unusually large number of public comment requests related to various proposed rules and procedure changes. This wave of RFCs includes significant proposals aimed at adjusting patent fees for fiscal year 2025, refining terminal disclaimer practices, and addressing the impact of artificial intelligence on prior art and patentability. The agency is also seeking feedback on formalizing the Director Review process following Arthrex and various changes to IPR proceedings, including discretionary review. And there’s more…
Each of these is important in its own right, but has the potential of being lost in the forest of pending action. In the details below, I highlight the due dates for comments, which all fall in May, June and July 2024. This heightened regulatory activity is indicative of a broader trend across the Biden administration, as agencies seek to solidify regulatory changes before the upcoming election.
- Setting and Adjusting Patent Fees During Fiscal Year 2025 (Agency/Docket Number: PTO-P-2022-0033, Comments Due: June 3, 2024) The USPTO proposes major adjustments to patent fees for fiscal year 2025 to ensure sufficient revenue for patent operations. The proposals will have some significant impacts on certain practices, including continuations and after final practice. Public comments are invited until June 3, 2024. In my view, the proposed fee increases for continuation applications, RCEs, and excess claims suggest the USPTO is using financial incentives to shape applicant behavior and encourage more compact and focused patent prosecution. The fee changes appear to be a tool for the USPTO to achieve its goals of streamlining the patent process, beyond what could be accomplished through rule changes alone. See, Dennis Crouch, USPTO Fees: Targeted Higher Fees to Push for Compact, Patently-O (Apr. 3, 2024).
- Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting (Docket No. PTO-P-2024-0003, Comments Due: July 9, 2024) The USPTO proposes a new rule requiring terminal disclaimers to include an agreement preventing enforcement if tied to a patent invalidated for anticipation or obviousness, after all appeals are exhausted. This aims to deter competition barriers from multiple patents on obvious variants of an invention. Comments on this proposal are invited until July 9, 2024. The proposed rule would represent a dramatic change to terminal disclaimer practice — becoming something that patent attorneys work very hard to avoid and representing a further shifting of power in favor of patent challengers. See, Dennis Crouch, Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it), Patently-O (May 9, 2024).
- Impact of the Proliferation of Artificial Intelligence on Prior Art and Patentability (Docket No. PTO-P-2023-0044, Comments Due: July 29, 2024) The USPTO seeks public comments on the effects of AI proliferation on prior art, PHOSITA, and patentability determinations. This inquiry is part of the AI and Emerging Technologies Partnership, aiming to understand AI implications in patent law. The proliferation of AI-generated content, much of which may be speculative or divorced from reality, raises questions about the presumption of enablement that is given to prior art. The old rules may be ill-equipped to handle the challenges posed by the vast scale and potentially fictitious nature of AI-generated disclosures. Comments are due by July 29, 2024. See, Dennis Crouch, Discerning Signal from Noise: Navigating the Flood of AI-Generated Prior Art, Patently-O (April 30, 2024).
- Rules Governing Director Review of Patent Trial and Appeal Board Decisions (Docket No. PTO-P-2024-0014, Comments Due: June 17, 2024)The USPTO proposes new rules refining the Director Review process of PTAB decisions in AIA proceedings. Parties may request Director Review of institution, final written, or rehearing decisions, with the Director also able to initiate reviews. The proposed rules detail timing, format, and criteria for reviews, without delaying underlying PTAB proceedings unless ordered. Comments are due by June 17, 2024. Dennis Crouch, New USPTO Director Review Rules, Patently-O (April 15, 2024).
- Proposed Rule on Patent Trial and Appeal Board Procedures, Including Discretionary Denials (Docket No. PTO-P-2023-0048, Comments Due: June 18, 2024) The USPTO proposes amendments to IPR and PGR proceedings before the PTAB. Changes address discretionary denial briefing, 35 U.S.C. 325(d) considerations, parallel and serial petitions, and settlement-related terminations. The proposed rules include structured briefing for discretionary denials and codify handling of parallel and serial petitions. Comments by June 18, 2024. The rules do not address the controversial issue of discretionary denials based on parallel litigation or other external factors under the Fintiv framework, leaving this area unresolved for now. See, Dennis Crouch, Codifying Discretionary Denial of IPR Petitions, Patently-O (April 19, 2024)
- Expanding Opportunities To Appear Before the Patent Trial and Appeal Board (Agency/Docket Number: PTO-P-2023-0058, Comments Due: May 21, 2024) The USPTO proposes amendments to the rules regarding admission to practice before the PTAB. Changes include allowing non-registered practitioners, recognized pro hac vice, to serve as lead counsel, streamlining pro hac vice recognition, and permitting proceedings without back-up counsel upon showing good cause. This aims to support under-resourced parties by reducing the financial burden of multiple counsel. The proposal also includes a duty for pro hac vice practitioners to inform the Board of developments affecting their fitness to practice. Comments are invited until May 21, 2024.
- WIPO Diplomatic Conference on the Design Law Treaty (Agency/Docket Number: PTO-C-2024-0008, Comments Due: June 25, 2024) The USPTO requests public comments on upcoming WIPO negotiations for the Design Law Treaty (DLT). Key DLT provisions include streamlined application requirements, correction of priority claims, a grace period for public disclosures, and limited local representation requirements. Comments are invited until June 25, 2024. As I note in my blog post, the African Group’s proposal to allow countries to require disclosure of traditional knowledge, cultural expressions, and genetic resources in design applications has been a major sticking point in negotiations. Dennis Crouch, The Design Law Treaty and the Struggle for International Harmonization of Industrial Design Protection, Patently-O (Apr. 12, 2024).
- Request for Comments: Unlocking the Full Potential of Intellectual Property (Agency/Docket Number: PTO-C-2024-0004, Comments Closed: May 14, 2024)The USPTO was seeking public input on ways to enhance the commercialization of innovations through intellectual property (IP) to benefit society. Supported by NOAA, NIST, and NSF, this initiative aims to identify new pathways for bringing green, critical, and emerging technologies to the marketplace. The goal is to foster economic growth and address global challenges through improved IP practices. Comments on building current initiatives and developing new strategies to support tech transfer were accepted until May 14, 2024.
I would encourage you to consider how these rule changes may affect the US patent system as well as your particular clients and practice. Collaborate with colleagues to develop robust and constructive comments. The USPTO tends to be particularly responsive to actual stories that explain the importance of an issue for innovators.
When newbies take the Patent Bar, my advice to them is that if they can’t decide on the correct answer, the correct answer is generally the one that requires a fee be paid to the USPTO. This is all about increasing the amount of money flowing into the USPTO’s coffers. Nothing more. Sure, there’s some window dressing on it, but it just comes down to money.
I’m not sure how proposal #2 is fully consistent with 35 U.S.C. 282(a), which reads in part: “Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.”
The linking of two patents with a terminal disclaimer shouldn’t affect that.
Anyone have any thoughts?
Depends on the wording they make you file in the TD maybe. Because yeah obviously otherwise that would be the case.
What absurdity is this?
#8 is in stark contrast to, and is diametrically opposed to, #1 and #2.
It is now clear that the time has come for Director Vidal to either voluntarily step down; or for Congress to involuntarily remove her.
The position as the leader of America’s innovation engine — our U.S. Patent Office — is far too important to be in the hands of someone unwilling and/or unable to do and not do anything and everything which must be done to help restore America’s formally world-leading, gold-standard patent system.
Instead of what our Nation desperately needs — another Iancu — we got another Lee.
Kathi Vidal must go; one way or another.
You have to believe that Vidal is doing this for the payoff when she leaves. Probably go to Google and be worth $30 million in five years.
I think the proposed terminal disclaimer change is an election year move driven by the Biden Administration’s plank to do something about prescription drug prices.
The FTC removal of non-competes could be the same.
The de-listing of marijuana could also be the same.
The student loan relief could also be the same.
It’s a move (decidedly) in the wrong direction.
Have you heard anyone that has a pro-innovation leaning doing anything but bashing this move?
I wasn’t saying that I support it — just providing a possible motivation behind it.
… and I was questioning your proposition as to the patent one as it is NOT popular.
Not popular among patent owners but certainly popular with consumers/groups that want to lower prescription drug prices, by making it more likely that pharmaceutical patents will be invalidated.
I “get” that such is a desired narrative, but frankly, I have seen no actual reports of that public sentiment.
Further,
I have seen the usual anti-patent propaganda blaming patents for high prescription costs, but I have provided tons of posts regarding the fact that the better path is to simply require full sunshine throughout the entire pharma ecosystem (everywhere from sweetheart deals to distribution deals and insurance racket).
Wow. Proposing popular policies in an election year. I thought he was supposed to be senile?
Lulz
Next thing you know he’s going to forgive more student loans or create more parks. It’s exactly like bribery or buying votes! And totally different from giving tax breaks to corporations.
Way to go Breeze, as you miss the point that THIS one that I am noting is NOT popular.
Yeah, reducing prescription drug prices is hugely unpopular.
lol – sure, you believe that, don’t ya.
As if Big Pharma will go along with that (or the effects would be constrained to that art).
No wonder you won’t share how you feel about the Israel/Hamas fiasco.
Not banning Tik Tok until after the election.
Releasing part of the national emergency gasoline reserve in order to reduce consumer gasoline prices.
Biden did that just prior to the midterm elections.
I do not recall those reserves being filled back up, and drawing them ever further down strictly for political advantage seems rather reckless.