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July 7, 2022by Element IP

On August 1, 2022, the USPTO Patent Center, which has been available to the public since 2017, will fully replace the legacy Public Patent Application Information Retrieval (Public PAIR) tool for the electronic filing and management of patent applications.

The USPTO alleges that the Patent Center provides a faster, more streamlined search experience. In addition to providing improved system performance and a more intuitive user experience, Patent Center incorporates all the existing functions of Public PAIR, as well as several enhanced features that allow users to:

    • Search publicly available information as a guest by application, patent, Patent Cooperation Treaty (PCT), publication, and/or international design registration number
    • Sort documents and transaction history based on column headings
    • Perform a quick document preview
    • Download multiple documents at once within a single PDF file or in a ZIP file (new)
    • Download patent references (new)
    • Download documents in DOCX and XML formats (new)
    • Download bibliographic information in XML format (new)

See the full press release here.


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June 3, 2022by Element IP

The USPTO published a notice in the Federal Register announcing the Climate Change Mitigation Pilot Program.

Under this pilot program, qualifying nonprovisional utility patent applications involving technologies that mitigate climate change by reducing greenhouse gas emissions will be advanced out of turn for examination (accorded special status) until a first action on the merits. Applicants are not required to satisfy the current requirements of the accelerated examination program or the prioritized examination program.

The USPTO will begin accepting petitions to participate in the pilot program June 3, 2022. The pilot program will be available until June 5, 2023, or until the USPTO accepts 1,000 grantable petitions, whichever is earlier, subject to its discretion to terminate prior.

See the full press release here.


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March 10, 2022by Element IP

Effective March 11, 2022, the USPTO will no longer grant Global Patent Prosecution Highway (GPPH) requests that are based on work performed by Rospatent as an Office of Earlier Examination. In addition, in pending cases in which, prior to March 11, 2022, the USPTO granted special status under the GPPH to applications based on work performed by Rospatent, the USPTO will remove that status and return those applications to the regular processing and examination queue, meaning that they will no longer be treated as GPPH applications at the USPTO.


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March 4, 2022by Element IP

Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office (USPTO) has terminated engagement with officials from Russia’s agency in charge of intellectual property, the Federal Service for Intellectual Property (commonly known as Rospatent), and with the Eurasian Patent Organization.

The press release is available here.


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February 2, 2022by Element IP

The USPTO launched a new Patent Public Search tool, which is based advanced Patents End-to-End (PE2E) search tool examiners use to identify prior art.

This free, cloud-based platform combines the capabilities of four existing search tools scheduled to be retired in September 2022: Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT). In the past, users could only access legacy search tools PubEAST and PubWEST at a USPTO facility like the headquarters in Alexandria, a regional office, or a Patent and Trademark Resource Center.

In conjunction with the launch of Patent Public Search tool, the USPTO unveiled a new Patent Public Search webpage that includes FAQs, training resources, and other information to help users transition to the new tool.


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January 27, 2022by Element IP

You can now use the First Office Action Estimator online tool [link] to get a time estimate for the first Office action on U.S. patent applications. A first Office action estimation will not be available for an application if a first Office action has already been issued for the application, or if the application has not yet been classified.

To check current estimates on how long it will take for a first Office action to be issued on a specific patent application, simply enter the application serial number into the tool. Alternatively, if you have an existing application and serial number, you can check estimates by logging into Private PAIR or Patent Center.


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January 17, 2022by Element IP

In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC, IPR2021-00330, (PTAB Jan. 14, 2022), the Patent Trial and Appeal Board (PTAB) granted a Petitioner’s Motion for Rehearing and accorded its Petition a filing date of December 16, 2020 – the date the Petitioner received a Fedwire confirmation that its payment to the USPTO’s bank, Treasury NYC, was accepted. This decision vacated a prior, erroneous Board decision denying institution of an IPR as time bared under 35 U.S.C. § 315(b) based on a December 21, 2020 filing date – the date the USPTO received the funds from its bank.

On rehearing, the PTAB rejected the prior majority decision finding “the beneficiary [USPTO] receives the payment when the beneficiary’s bank [Treasury NYC] actually pays the beneficiary or credits the beneficiary’s account and makes the funds available to the beneficiary, not when the beneficiary’s bank accepts the wire transfer from the sender’s bank as alleged by Petitioner.” In particular, the PTAB stated:

It is undisputed that the federal regulations incorporating Article 4A of the Uniform Commercial Code are applicable here. It is also undisputed that these regulations expressly address when the originator of a wire transfer (Petitioner) is considered to have paid the beneficiary (USPTO).  Specifically, Section 4A-406, is titled “Payment by Originator to Beneficiary; Discharge of Underlying Obligation,” and states, in relevant part, that the “originator of a funds transfer [Petitioner] pays the beneficiary [USPTO] . . . (i) at the time a payment order for the benefit of the beneficiary [USPTO] is accepted by the beneficiary’s bank [Treasury NYC] in the funds transfer and (ii) in an amount equal to the amount of the order accepted by the beneficiary’s bank.” Ex. 3004, 421 (emphasis added). Thus, even though the regulations governing Fedwire transactions consider the USPTO (the beneficiary) and Treasury NYC (the beneficiary’s bank) to be separate entities, section 4A-406 dictates that a petitioner pays the USPTO when Treasury NYC accepts the petitioner’s funds transfer.

In view of the above, the panel conclude that Petitioner’s Fedwire confirmation constituted sufficient evidence that Petitioner’s IPR fee accompanied the Petition, and that payment was “received” under 37 C.F.R. § 42.103(b), on December 16, 2020 (i.e., before the statutory deadline).


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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.