USPTO’s National Patent Drafting Competition Announces 2020 Winners

USPTO National Patent Application Drafting Competition 2020

…and Delain Law Office, PLLC congratulates them.

The National Patent Drafting Competition is a competition that the US Patent & Trademark Office holds for law students to introduce them to issues arising in US patent law. The point of the competition is to develop each team’s drafting, amending and prosecuting skills working with a hypothetical invention statement.

Competitions like this one vastly improve the quality of the work that a new law-school graduate can produce right out of the gate. Patent drafting is one of those things where practice makes perfect; the more practice a student gets, the more professional his or her initial work will be. The law students who have the opportunity to participate in competitions such as this one will join the ranks of the legal profession with some degree of experience under their belts … and this experience is invaluable to them and to their clients.

CARES Act Reposting

The Coronavirus Aid, Relief, and Economic Security Act Grants the US Patent and Trademark Office the Authority to Manage Statutory Due Dates

Under the CARES Act, the US Patent and Trademark Office has the (temporary) authority to “manage” … postpone … certain statutory deadlines in patent matters.

The CARES Act, H.R. 748 116th Cong. (2020), gives the USPTO the authority during the emergency period to “toll, waive, adjust, or modify any timing deadline established” in the Patent Act or Trademark Act, including any regulations implementing these timing deadlines.” The Act is in effect from 27 March 2020 (the date the legislation was enacted) until 60 days after the state of national emergency is resolved.

There are only certain criteria under which the USPTO can waive statutory deadlines.

  • The timing deadline materially affects the functioning of the USPTO.
  • The timing deadline prejudices the rights of applicants, registrants, patent owners or others appearing before the office.
  • The timing deadline prevents applicants, registrants, patent owners or others appearing before the office from filing a document or fee with the office.

Once the director determines such a waiver is appropriate, the USPTO has to publish a notice to implement the waiver.

Within 20 days of issuing the notice, the CARES Act also requires the USPTO to report to Congress for any waiver that adjusts due dates for more than 120 days. Furthermore, the USPTO’s authority to alter these due dates during the emergency period expires two years after the date of enactment.

Until the USPTO issues such a notice, patent and trademark applicants and owners must still comply with the timing deadlines.

Will Phonetic Profanity Be OK to Register as a Trademark??

SCOTUS granted certiorari to and recently heard arguments on the case of a guy trying to register FUCT as a trademark. The question: Can a phonetically profane word be registered as a trademark?

The US Patent & Trademark Office denied registration of the mark based on its obvious similarity to the past participle of a verb commonly recognized as profane. The case has wended its way through the appellate process (US District Court for DC, Federal Circuit) and now sits before the Nine Wise Ones where it asks them to decide whether a long-standing rule prohibiting the registration of profane words interferes with the trademark holder’s First Amendment free-speech rights. They heard oral arguments on 15 April 2019.

The Roberts Court has a history with disparaging marks, having allowed SLANTS (which the USPTO denied based on its derogatory reference to Orientals) only last year. But SLANTS is not outright profanity. FUCT, phonetically, is. It’ll be interesting to see what this blatantly conservative Court does with FUCT. Seems to me that either the trademark holder will be FUCT or the public will be.

New Patent Fees Coming

The US Patent and Trademark Office issued a proposed fee adjustment today. The large-entity fees are going up.

That, of course, impacts the small- and micro-entity fees, since those fees are expressed as a percentage of the large-entity fees (50% reduction for small entities, 75% reduction for micro entities). The Notice of Proposed Rulemaking won’t be officially published until Monday, 3 October, but the unofficial version is available now. The increases (and, of course, the fee adjustments are mostly increases) aren’t big, but they are there. It’s important for the patent applicant to be aware of them.

USPTO Patent Examination and Procedure Training Coming Up

From the US Patent and Trademark Office:

The USPTO will host a three day training course on examination practice and procedure for members of the public as part of the Stakeholder Training on Examination Practice and Procedure (STEPP) program. The training will be held November 15 – 17 on the USPTO’s Alexandria, Virginia campus.  

This training is intended for those who have recently passed the Patent Bar for the purpose of practicing before the USPTO. The training will make use of statutes, rules, and guidelines relevant to practicing before the USPTO. The course is led by USPTO trainers and is based on material developed for training patent examiners and other employees. More information and a proposed upcoming course schedule is available on the USPTO STEPP program web page

 STEPP falls under the Excellence in Customer Service pillar of the USPTO Enhanced Patent Quality Initiative (EPQI), which ensures that the agency continues to issue high-quality patents well into the future. EPQI is a set of initiatives with goals toward strengthening work products, processes, services, and how the USPTO measures patent quality at all stages of the patent process.

Cuozzo v. Lee, 579 US ____ (2016)

I was present in the Courtroom for the announcement of the Cuozzo decision by SCOTUS. This decision makes it clear that inter partes review by the USPTO is not appealable, and that the USPTO can institute such review sua sponte (by its own initiative). It’s an interesting decision.

35 USC §314(d) says that the “determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” (Emphasis added.)

35 USC §312 says that petitions must be pleaded “with particularity.” Those words, in its view, mean that the petition should have specifically said that claims 10 and 14 are also obvious in light of this same prior art. Garmin’s petition, the Government replies, need not have mentioned claims 10 and 14 separately, for claims 10, 14, and 17 are all logically linked; the claims “rise and fall together,” and a petition need not simply repeat the same argument expressly when it is so obviously implied.

The “No Appeal” provision’s language must, at the least, forbid an appeal that attacks a “determination . . . whether to institute” review by raising this kind of legal question and little more. §314(d).

Moreover, a contrary holding would undercut the Patent Office’s significant power to revisit and revise earlier patent grants. Congress would not likely have granted the Patent Office this reexam authority if it had thought that the agency’s final decision could be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review. Congress has told the Patent Office to determine whether inter partes review should proceed, and it has made the agency’s decision “final” and “nonappealable.” §314(d). SCOTUS’s conclusion that courts may not revisit this initial determination gives effect to this statutory command.

However, the Court limits its green-lighting of the USPTO’s unappealable reviews: “… we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.”” The Court does not “…categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, [or] enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under §112” in inter partes review.”

USPTO’s New STEPP Program

From the USPTO’s website:

“The Stakeholder Training on Examination Practice and Procedure (STEPP) program is administered by the Office of Patent Training (OPT) under the third pillar (Pillar 3, Excellence in Customer Service), of the  Enhanced Patent Quality Initiative (EPQI) and is a new and important part of the USPTO’s mission to deliver intellectual property information and education to external stakeholders.

Training delivered through STEPP is designed to provide external stakeholders with a better understanding of how and why an examiner makes decisions while examining a patent application. In person courses are led by USPTO trainers and based on material developed for training employees of the USPTO.  

Currently, it is anticipated that courses provided through STEPP will be free to attend.  In addition, the USPTO is in the process of determining the applicability of providing CLE credits for attending STEPP courses; however, CLE credit cannot be earned for the first scheduled training session.”

The first scheduled training session is July 12-14 at the USPTO’s campus in Alexandria, VA.

For more information, see the USPTO’s website.

Patent Maintenance Fee Storefront Now Available from the USPTO

From the USPTO:

“The new Patent Maintenance Fees Storefront is now available. Customers can look up and pay patent maintenance fees using the patent number and patent application number, as in the retired system. We recommend reviewing the information here and on the Fee Payment Transition Resources page to learn more about the Patent Maintenance Fees Storefront’s enhanced features.”

USPTO Has Trained Its Examiners in a “Plain Meaning of Terms” Initiative

The USPTO has updated the training it gives its patent examiners this spring to clarify the terms used in the prosecution of a patent. The guidelines explain that “the PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean.” The goal of the new initiative is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”

Under MPEP § 2111, “During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” ” Because the applicant can amend the claims during prosecution, giving a claim its broadest reasonable interpretation reduces the possibility that the courts, the patentee, or others may interpret it more broadly than is justified. However, “[t]he broadest reasonable interpretation of the claims must … be consistent with the interpretation that those skilled in the art would reach.”

Against that backdrop, we have MPEP 2111.01, which tells us that “Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification.” Thus, the plain meaning of any term may be redefined by the patentee within the four corners of the patent application, and the examiner must interpret the term as that term is interpreted by the patentee.

Including a glossary in your application is good practice that patent applicants often fail to do. By including a glossary in your application as part of the specification, you become your own lexicographer and define terms, even terms whose plain meaning is otherwise clear, in the way in which you want those terms to be interpreted by the USPTO and by the courts.

A “broadest reasonable interpretation” may be limited under 35 USC 112(f), which states, “Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The plain-meaning vs. means-plus-function claim interpretation is only one of the reasons why you don’t want to write a patent application yourself.