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May 11, 2021by Element IP

The USPTO today officially issued U.S. patent number 11 million, recognizing an important milestone in American innovation and ingenuity.

“This momentous benchmark is a reminder of the remarkable and enduring tradition of American innovation that has driven our nation forward for generations,” said U.S. Secretary of Commerce Gina Raimondo. “Building our economy back stronger requires new ideas and innovative solutions from every sector. I am proud to recognize patent 11 million, its inventors, and its promise.”

“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone.”

Patent number 11 million, granted to co-inventors Saravana B. Kumar and Jason S. Diedering of 4C Medical Technologies, Inc. in Maple Grove, Minnesota, is for a utility patent that provides a new method for delivering, positioning, and/or repositioning a collapsible and expandable stent frame within a patient’s heart chamber.

“We are incredibly excited and honored to be granted U.S. patent number 11 million for our invention,” said inventor Saravana Kumar. “The 4C Medical beginning is a true story of American entrepreneurship, where Jason and I worked in a garage many nights and weekends to turn this idea into reality. We could not have gotten here without the support of so many, including my wife Katherine and 4C Medical’s founder, physician Dr. Jeff Chambers. Currently, our team is actively working to demonstrate the benefits of our technology to treat patients with severe mitral regurgitation as part of a U.S. clinical trial.”

The full press release is published here.


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April 26, 2021by Element IP

On April 23, President Joseph R. Biden issued a proclamation for World IP Day:

This year, on World Intellectual Property Day, we celebrate the innovators and creators who enrich our lives and create the products, services, companies, and industries of tomorrow. We especially recognize the power of intellectual property protection in allowing our small businesses to compete, thrive, and play their important role as the heart and soul of our communities and the engines of our economic progress.

Small businesses are critical to our success as a Nation. They make up 90 percent of businesses in the United States, employ nearly half of America’s private sector workers, and create two-thirds of new jobs, and bring opportunity to every corner of our Nation.  Inventions born in the garages of small towns can have just as much impact as those developed in high-tech labs. This year’s World Intellectual Property Day highlights the critical role these small businesses play in our society and the ways intellectual property can help support their continued growth and resilience.

The full proclamation is published here.


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April 14, 2021by Element IP

Today, the United States Patent and Trademark Office (USPTO) announced that the Patent Trial and Appeal Board (PTAB) will soon accept petitions for expedited resolution of ex parte appeals for COVID-related inventions. There is no cost for appeals related to COVID-19 in this pilot program, which starts on April 15, 2021.

A COVID-related appeal for eligibility into the pilot program must relate to a product or process that is subject to an applicable U.S. Food and Drug Administration (FDA) approval for COVID-19 use.

Petition grants for fast-track review of COVID-related ex parte appeals will be limited to a maximum of 500, and the USPTO has a goal to issue a decision for these appeals within six months of entry into the pilot program. In order to keep appeals on schedule, oral hearings under the program will be expedited and, once scheduled, will not be rescheduled or relocated.

The notice is published here.


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April 5, 2021by Element IP

The United States Patent and Trademark Office (USPTO) today announced that it will be launching a special category of its Patents for Humanity Program for inventions that address the COVID-19 pandemic. This new award category will provide business incentives for patent applicants, holders, and licensees whose inventions track, prevent, diagnose, or treat COVID-19.

“The Commerce Department is committed to supporting the groundbreaking work of the inventors and companies creating the new solutions we need to overcome the pandemic and other global challenges of the future,” said Secretary of Commerce Gina Raimondo. “The Patents for Humanity program stands as a testament to the strength that human ingenuity can bring to solving humanity’s most pressing problems.”

“Our nation’s innovation community is playing a crucial role in devising creative solutions to the ongoing pandemic,” said Drew Hirshfeld, performing the functions and duties of the USPTO Director. “Innovation is central to alleviating the difficulties COVID-19 has brought upon the public, and this new Patents for Humanity COVID-19 category allows us to provide special recognition to innovators tackling this unprecedented challenge.”

Patents for Humanity Award winners receive a certificate to accelerate USPTO processing for one eligible matter (such as an ex parte reexamination proceeding or a patent application), as well as public recognition of their work. The certificate now has more options for use than those given in previous competitions. Under the Patents for Humanity Program Improvement Act, award winners now may transfer their acceleration certificates to third parties, including for compensation. Winners can now leverage the acceleration certificate to obtain funds to help transform their inventions into deliverable goods and services.

Launched in February 2012, the Patents for Humanity Award is the USPTO’s top honor for patent applicants devising game-changing innovations to address long-standing development challenges. Their success stories can inspire others to harness innovation for human progress. Interested parties who are developing or who have developed technologies related to COVID-19, including those that track, diagnose, prevent, or treat the disease, are eligible to submit an application for this award once they file a patent application.

The notice is published here.


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February 23, 2021by Element IP

The United States Patent and Trademark Office (USPTO) has extended the Expanded Collaborative Search Pilot (CSP) program, originally running from November 2017 through October 2020, an additional two years. The Expanded CSP program, conducted with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO), builds on the success of the initial CSP program, taking advantage of improvements in patent quality and examination pendency. With the Expanded CSP, applicants may request that multiple partnering intellectual property (IP) offices exchange search results for their counterpart applications prior to formulating and issuing their office actions. Each designated partner IP office independently conducts a prior art search for its corresponding counterpart application. The search results are then exchanged between the designated partner IP office(s), including the USPTO, before any IP office issues an office action. With this exchange of search results, the examiners in all designated partner IP offices will have a more comprehensive set of prior art references to consider when making initial patentability determinations. The Expanded CSP allows the USPTO to study the impact on examination processes of exchanges of search results between the USPTO and multiple partner IP offices prior to formulating and issuing office actions.

Under the Expanded CSP, the USPTO and partner IP offices will each continue to accept requests to participate beyond November 1, 2020, until October 31, 2022. Each IP office will not grant more than 400 requests per year per partner office. The offices may extend the pilot program (with or without modification) if they deem it appropriate. Each office reserves the right to withdraw from the program at any time.

The Federal Register notice is published here.


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February 2, 2021by Element IP

The United States Patent and Trademark Office (USPTO) recognizes that the COVID-19 outbreak has imposed significant hardships on many of its stakeholders. In particular, some foreign intellectual property (IP) offices are not currently issuing paper certified copies of foreign applications due to the COVID-19 outbreak. To provide relief to applicants during the outbreak, the USPTO has published an Official Gazette Notice setting forth conditions under which the USPTO will suspend the requirement for filing the certified copy of the foreign application. The application must have been filed in a foreign IP office that does not participate in a bilateral or multilateral priority document exchange program with the USPTO that would cover the application and thus permit retrieval through the program.

The notice is published here.


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January 13, 2021by Element IP

A new report published by the United States Patent and Trademark Office (USPTO), “Trademarks and Patents in China: The Impact of Non-Market Factors on Filing Trends and IP Systems,” discusses how the high rate of Chinese patent and trademark filings may be influenced by government subsidies and other non-market factors. Evidence of this includes the low rate at which domestic inventors file for patent protection overseas, the low rate in which inventors commercialize patented inventions, and the high rate of bad-faith trademark filings and fraudulent trademark specimens.

While the number of patents and trademarks is often a measure of the intensity of a country’s creativity and innovation, the report cautions that conclusions in this regard with respect to China should not be reached without consideration of non-market factors, such as government subsidies and government mandates. The report also explores the impacts of the increased patent and trademark filings by Chinese entities on IP systems, including undermining domestic and foreign registries, stretching the capacity of China’s patent and trademark examiners and review authorities, and narrowing the scope of available protection for legitimate rights holders.

The report is published here.


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January 7, 2021by Element IP

The USPTO issued a guidance memorandum to the Patent Trial and Appeal Board regarding the approach to indefiniteness under 35 U.S.C. § 112 in America Invents Act (AIA) post-grant proceedings.

This memorandum, issued under the Director’s authority to set forth binding agency guidance, ensures that the agency’s approach to analyzing indefiniteness in AIA post-grant proceedings will adhere to the approach used in district courts, as set forth in the Supreme Court’s Nautilus decision. Under Nautilus, a claim of a patent challenged for indefiniteness is unpatentable for indefiniteness if the claim, read in light of the patent specification and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Aligning the indefiniteness approach used in AIA proceedings before the PTAB with the approach used in the district courts will lead to greater uniformity and predictability, improve the integrity of the patent system, and help increase judicial efficiency.


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December 24, 2020by Element IP

The United States Patent and Trademark Office is amending the rules of practice in patent cases to clarify and expand exceptions to the rule pertaining to government use licenses and their effect on small entity status for purposes of paying reduced patent fees. The rule change is designed to support independent inventors, small business concerns, and nonprofit organizations in filing patent applications and to encourage collaboration with the Federal Government by expanding the opportunities to qualify for the small entity patent fees discount for inventions made during the course of federally funded or federally supported research.

The Federal Register Notice can be found here.


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December 24, 2020by Element IP

The United States Patent and Trademark Office (USPTO) revised the rules of practice in inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) (collectively post-grant trial) proceedings before the Patent Trial and Appeal Board (PTAB) to allocate the burdens of persuasion in relation to motions to amend and the patentability of substitute claims proposed therein. In light of Federal Circuit case law, and to better ensure the predictability and certainty of postgrant trial proceedings before the PTAB, the USPTO revised the rules of practice governing motions to amend, to expressly assign to the petitioner the burden of showing the unpatentability of substitute claims proposed in a motion to amend. In addition, the USPTO revised the rules to expressly assign to the patent owner the burden of showing that a motion to amend complies with certain statutory and regulatory requirements for such a motion. Notwithstanding the adversarial nature of the proceedings and the burdens described above, however, the USPTO further revised its rules to expressly provide that the PTAB itself may, in the interests of justice, exercise its discretion to grant or deny a motion to amend only for reasons supported by readily identifiable and persuasive evidence of record in the proceeding. The USPTO anticipates the PTAB will exercise its discretion in the interests of justice only in rare circumstances. In doing so, the PTAB may make of record only readily identifiable and persuasive evidence in a related proceeding before the USPTO or evidence that a district court can judicially notice. Where the PTAB exercises its discretion in such circumstances, the parties will have an opportunity to respond.

The changes in this final rule are effective January 20, 2021, and this final rule applies to all motions to amend filed in an IPR, PGR, or CBM proceeding on or after January 20, 2021.

The Federal Register Notice can be found here.