January 6, 2022by Element IP

The USPTO is implementing a pilot program to evaluate the effects of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications. Under this pilot program, applicants may receive invitations to participate if their applications meet the criteria for the program as specified in the Federal Register notice, including a criterion that the claims in the application necessitate rejections on SME and other patentability-related grounds. An applicant who accepts the invitation to participate in this pilot program must still file a reply to every Office action mailed in the application, but is permitted to defer responding to SME rejections until the earlier of final disposition of the application, or the withdrawal or obviation of all other outstanding rejections.

Invitations to participate in the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will be mailed during the period beginning on February 1, 2022, and ending on July 30, 2022.


December 16, 2021by Element IP

Effective January 1, 2022, electronic retrievals of priority documents between the USPTO and the EPO will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS).

For applications filed on or after January 1, 2022, the applicant must provide the WIPO DAS access code associated with the priority application. The transition to the WIPO DAS will provide applicants with additional security via the requirement of the WIPO DAS access code, which serves as a third validation point for each application along with the application number and filing date. In addition, use of the WIPO DAS permits applicants to better manage and monitor the status of requested certified copy retrievals via the WIPO DAS applicant portal.


December 14, 2021by Element IP

The USPTO will transition to the electronic issuance of patents and trademark registrations in 2022.

For patents, the USPTO will be issuing a notice of proposed rulemaking (NPRM) to seek public feedback on our proposal to revise the rules of practice to issue patents electronically. Under the current rule (37 CFR 1.315), the USPTO is required to deliver or mail a patent “upon issuance to the correspondence address of record.” Under the proposed changes, the USPTO would no longer physically deliver the patent by mailing it to the correspondence address, but would issue the patent electronically via our patent document viewing systems (i.e., Patent Center and Patent Application Image Retrieval (PAIR)). Patentees would also be able to download and print their electronically issued patents through these systems.

The USPTO considers the shift to electronic registrations beneficial for patent owners because it will reduce the pendency of every issued patent application by approximately two weeks.

The full press release is available here.


December 1, 2021by Element IP

As part of the “Go For Real” anti-counterfeiting campaign, the National Crime Prevention Council (NCPC) and the USPTO released a series of ads informing younger buyers and their parents about the serious dangers of buying fake goods. The ads are designed to counter a dangerous escalation of counterfeits that are cheating consumers and causing serious injuries and death, hurting U.S. businesses, and funding organized crime. The ads are viewable here.

The campaign is especially focused on stopping fake electronics, cosmetics and personal care products, and sports equipment. The ads—which show the purchase of a counterfeit gone disastrously wrong—are being rolled out to more than 2,100 television stations, social media, electronic billboards, online gaming, radio and music services, and other innovative ways to directly reach teens and tweens.


November 19, 2021by Element IP

The USPTO issue a final rule that delays until January 1, 2023, the effective date of the fee set forth in 37 CFR 1.16(u) for any nonprovisional utility patent application filed under 35 U.S.C. 111, including any continuing application, that is not filed in DOCX format. Prior to this final rule, the fee was set to take effect on January 1, 2022. The delay will enable the USPTO to undertake enhanced testing of its information technology systems as more users file in DOCX, and it also will give applicants more time to adjust to filing patent applications in DOCX format.

The final rule is available here.


October 29, 2021by Element IP

United States Secretary of Commerce Gina Raimondo announced her new role as Chair of the re-branded Council for Inclusive Innovation (CI2), which will assist the USPTO in developing a comprehensive national strategy to build a more diverse and inclusive innovation ecosystem.

“Together, as a Council, it is imperative that we continue working to expand American innovation by tapping into the strength of our nation’s diversity and increasing opportunities for all innovators and entrepreneurs who are creating new technologies, companies, and industries,” wrote Secretary Raimondo. “With the most recent data from the U.S. Patent and Trademark Office indicating that only 12.8% of inventors listed on patents granted in a single year are women, and little to no data on the participation of other underrepresented groups, we can all agree that there is much work to be done to build a stronger and more inclusive innovation sector.”

The full press release is available here.


October 14, 2021by Element IP

The USPTO issued a final rule permitting patent applicants to use physical media larger than compact discs, i.e., Digital Video Disc-Recordable (DVD-R or DVD+R), for submission of an electronic version of amino acid and nucleotide sequence information, information compiled in a large table, and information related to a computer program listing.

This rulemaking expands the types of physical media that can be used when submissions of such data exceed the USPTO’s patent electronic filing system capacity.

The full text of the final rule is available here.


October 12, 2021by Element IP

The United States Patent and Trademark Office extended the After-Final Consideration Pilot (AFCP) 2.0 through September 30, 2022.

Briefly, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. To be eligible for AFCP 2.0, applicants must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. The examiner will then use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with the applicant, if the response does not place the application in condition for allowance.

A summary of AFCP 2.0 is available here.


September 24, 2021by Element IP

The United States Patent and Trademark Office is extending the Motion to Amend (MTA) Pilot Program, which was initiated on March 15, 2019, and provides additional options for a patent owner who files an MTA before the Patent Trial and Appeal Board (PTAB). In particular, the MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA. The program also provides timelines for briefing to accommodate these options.

The MTA Pilot Program will run until September 16, 2022. The USPTO may extend the MTA Pilot Program (with or without modification) on either a temporary or a permanent basis, or may discontinue the program after that date.

The Notice published in the Federal Register is available here.