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August 25, 2021by Element IP

The USPTO announced that starting August 23, 2021, David L. Berdan will be performing the functions and duties of the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, following the news that Coke Stewart will be departing the agency.

In November 2020, Berdan was appointed General Counsel of the USPTO. In that role, he advises the agency on all major legal matters and supervises the Office of General Counsel and its three component offices: the Office of the Solicitor, the Office of General Law, and the Office of Enrollment and Discipline.

“A West Point graduate and Gulf War veteran, Dave has the leadership ability, experience, and dedication to public service necessary for success in this role,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “I look forward to working with him on achieving the USPTO’s strategic goals, serving our stakeholders, and leading this tremendously talented workforce of over 13,000 public servants.”

Deputy General Counsel, Office of General Law David Shewchuk will serve as Acting General Counsel while Berdan performs the functions and duties of the Deputy Director.

The USPTO’s Notice is available here.


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July 15, 2021by Element IP

The USPTO is extending the Fast-Track Appeals Pilot Program until July 2, 2022. Initiated on July 2, 2020, the Fast-Track Appeals Pilot Program provides for the advancement of applications out of their turn in the ex parte appeals phase of patent prosecution before the PTAB. The Fast-Track Appeals Pilot Program permits an appellant who has filed an ex parte appeal and received a notice that the appeal has been docketed to file a petition to expedite the review of the appeal. The Fast-Track Appeals Pilot Program sets a target of reaching a decision on an ex parte appeal within six months from the date that the appeal is entered into the program.

The Federal Register Notice is available here.


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July 1, 2021by Element IP

The United States Patent and Trademark Office is reminding applicants that patent applications must properly present examples in a manner that clearly distinguishes between prophetic examples that describe predicted experimental results and working examples that report actual experimental results. The distinction must be clear to satisfy the written description and enablement requirements and comply with the applicant’s duty of disclosure.

The Federal Register Notice is available here.


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June 30, 2021by Element IP

As a result of the recent Supreme Court decision in U.S. v. Arthrex, Inc., the USPTO has implemented an interim procedure whereby review of a Patent Trial and Appeal Board (PTAB) final decision may be initiated sua sponte by the Director or requested by a party to a PTAB proceeding. At this time, a party may request Director review of a final written decision in an inter partes review or post-grant review by filing a request for rehearing by the Director of a PTAB decision and concurrently submitting a notification of that request to the Office by email to Director_PTABDecision_Review@uspto.gov, copying counsel for the parties.

More details on the interim Director review process are provided on the USPTO Arthrex information page of the USPTO website. Additionally, the public will be able to ask further questions regarding the USPTO’s implementation of the interim Director review process at the PTAB’s Boardside Chat on Thursday, July 1, at 10 a.m. ET, and also hear remarks by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

The USPTO’s update is available here.


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June 3, 2021by Element IP

The USPTO is in the process of transitioning to a system that supports submitting new patent applications in structured text, specifically DOCX format. Filing in structured text allows applicants to submit their specifications, claims, and abstracts in text-based format, thereby eliminating the need for applicants to convert applications into a PDF for filing. It also provides a flexible format with no template constraints and improves data quality by supporting original formats for chemical formulas, mathematical equations, and tables.

The USPTO previously stated that for applications filed in DOCX, the authoritative document would be the accompanying PDF that the USPTO systems generate from the DOCX document. In response to public feedback, however, the USPTO now considers the DOCX document filed by the applicant to be the authoritative document. Accordingly, an applicant who files or has filed an application in DOCX may rely on that version as the source or evidentiary copy of the application to make any corrections to the documents in the application file. The USPTO will be hosting DOCX training sessions to provide more information, demonstrate how to file and retrieve DOCX files in Patent Center, EFS–Web, and PAIR, and answer any questions. Applicants can also file test submissions through Patent Center training mode to practice filing in DOCX. In addition, the USPTO will be offering listening sessions to gather feedback and suggestions to further improve DOCX features.

The Federal Register notice is available here.


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June 3, 2021by Element IP

The USPTO is extending the submission deadline for expanding its Law School Clinic Certification Program by admitting additional schools into the program. Founded in 2008, the program currently includes 60 law school clinics and offers patent and trademark applicants access to pro bono services. It also gives law students, under the supervision of a faculty clinic supervisor, experience in practicing intellectual property law before the USPTO.

The program is administered by the USPTO’s Office of Enrollment and Discipline (OED). Participating law school clinics must maintain the requirements for USPTO certification in order for students to practice before the agency.

“The USPTO is committed to fostering a strong and vital patent system,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “The development of legal skills through practical experience allows advocates to effectively support and represent their clients’ interests.”

Submissions from interested law school clinical programs will be accepted on a rolling basis through December 31, 2022. Details of the program expansion and application materials are available on the Law School Clinic Certification Program page of the USPTO website here.

The full press release is published here.


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May 25, 2021by Element IP

The USPTO announced the recipients of the 2020 Patent Pro Bono Achievement Certificate, which recognizes individuals and law firms that assist financially under-resourced inventors and small businesses seeking patents.

Established under the 2011 America Invents Act, the USPTO’s Patent Pro Bono Program is a nationwide network of independently operated regional programs that match volunteer practitioners with financially under-resourced inventors and small businesses for the purpose of securing patent protection. Each regional program provides services for residents of one or more states.

In 2020, the program shattered its previous volunteer participation record, as more than 100 patent practitioners and over 25 corporations and law firms reported 50 or more hours of patent pro bono service to a regional patent pro bono program. The recognized practitioners are listed on the Practitioner recognition page on the USPTO website.

“I want to thank all of the recipients for their commitment to helping under-resourced inventors and small businesses in what was an especially challenging year for so many,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “The work of these practitioners helped contribute to the 273 pro bono patent applications we received in 2020. Because of their service, the innovation economy is stronger.”

To date, more than 1,800 patent practitioners have agreed to volunteer their time and resources to help make the Patent Pro Bono Program a success. Since 2015, these legal professionals have filed more than 1,500 patent applications on behalf of their pro bono clients.

The full press release is published here.


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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.