In US v Arthrex, 2021 US Lexis 3123, the Supreme Court found that PTAB (Patent Trial and Appeals Board) should have been nominated by the President and confirmed by the Senate. But instead of invalidating thousands of PTAB decisions, the Court held that PTAB determinations are reviewable by the USPTO Director.
From our perspective, nothing much has changed. We continue to have the same system we’ve had for decades. PTAB rulings have always been reviewable as a matter of right by the DC District Court, by the Federal Circuit, and theoretically, by the Supreme Court. The big change is that they are now also reviewable by the USPTO director.
The experience at Fish IP (both when we’ve won and when we’ve lost) is that the PTAB judges are really good at what they do. They understand the technology, and are extremely well versed in patent law. It almost certainly happens that there are biases from time to time, but there isn’t any reason to believe that the PTAB judges would be less biased if appointed by the president and approved by the senate.
Beginning the first of 2022, the USPTO will require submitting patent apps in the docx format. Well, technically not quite true- apps will still be accepted in pdf format but will cost extra. The process of uploading docx files will come with some new features that will show any errors in the formatting prior to submission, so changes can be made. The PTO says this will make it easier for them to extract the content internally.
Since our applications are created on Word, this will save a step in having to convert them to pdfs prior to submission, and should help eliminate font-not-included, content, and layer errors.
The Patent Office is currently hosting online training classes that demonstrate how the new system works.
To learn more, check out the USPTO’s page here.
A little promotional video featuring our office building at Main and Jamboree in Irvine CA.
The video is 3D, and the hi-rise buildings are 3D objects. But the surrounding buildings, trees and clouds are flat, 2D objects placed in the 3D scene, so the effect is like the camera moving around props in a diorama. Hope you enjoy it.
One of the challenges of patenting technology related to blockchain is that the subject matter is likely directed to one of the judicial exceptions (i.e., abstract ideas) that are not patent eligible. Moreover, the subject matter likely falls within one of USPTO’s enumerated groupings of abstract ideas, i.e., “certain methods of organizing human activity” (e.g., commercial interactions). To be patent eligible, the claims would need to include additional limitations that either integrate the abstract idea into a practical application or add significantly more to the judicial exception. This article offers insight on future developments in the fintech industry and on patenting blockchain related technology in the cryptocurrency space.
The Brazilian Patent and Trademark Office (BPTO) approved phase II of its Patent Prosecution Highway (PPH) program, which commenced on January 1, 2021. The PPH program is a bilateral agreement between the patent offices of different countries (“member countries”), and allows for expedited examination of patent applications if a final ruling from a member country’s patent office has allowed at least one claim. That means a US patent applicant with allowed claims can file a corresponding patent application in Brazil under the PPH program to expedite examination in Brazil. Phase II of Brazil’s PPH program expands the threshold number of PPH requests allowed per year, as well as the threshold number of PPH requests per application per week. Phase II no longer requires that the application be filed firstly with the BPTO, and also removes the ability to appeal a denied PPH request. For more information on expediting your US or foreign patent applications via the PPH program, contact FISH IP today.
In late December, 2020, the Consolidated Appropriations Act established the Copyright Claims Board (CCB). In simple terms, the CCB is like a small claims court for copyright cases. It gives copyright owners an easier and more cost-efficient way of ensuring their rights, without necessarily using an attorney, and without other expenses of federal court litigation. There are limitations. Damages cannot exceed $30,000, defendants can opt out of the process, and attorney’s fees can only be obtained under “extraordinary” circumstances, and with a ceiling of $5,000. There is an appeal process. One feature of potentially great interest is that the CCB will have the right to bar claimants for up to 12 months, for repeatedly filing frivolous or harassing claims.
Several trademark fees have increased starting January 2nd. The most notable fee increases are:
(1) TEAS standard filing fee is increased from $275 to $350,
(2) Combined §8 and §15 declarations from $325 to $425 per class, and
(3) Combined §8 declaration and §9 renewals from $425 to $525 per class.
The current USPTO trademark fee schedule can be found in the following link: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#Trademark%20Fees.