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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.


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December 11, 2020by Element IP

The United States Patent and Trademark Office (USPTO) today announced that four of its intellectual property (IP) attachés have been elevated to the diplomatic rank of “Counselor” at the U.S. embassies and missions where they serve.

“The USPTO prides itself on working with foreign nations to protect global intellectual property rights, and the elevated status given to these USPTO attachés is a reflection of their hard work and commitment to the agency’s priorities,” said U.S. Secretary of Commerce Wilbur Ross. “I congratulate these four USPTO IP attachés on their new roles as counselors, and I am confident they will continue to represent the United States and USPTO with distinction.”

“This new title for our IP attachés sends a clear signal that the United States takes very seriously the protection and enforcement of IP rights around the world,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “As counselors, these officers will gain access to more senior officials of foreign governments, which is vital to their efforts on behalf of U.S. rights holders.”

The four attachés receiving the rank of Counselor are: John Cabeca (U.S. Embassy, New Delhi, India); Cynthia Henderson (U.S. Embassy, Mexico City, Mexico); Duncan Willson (U.S. Embassy, Beijing, China); and Susan Wilson (U.S. Mission to the European Union, Brussels, Belgium).

The USPTO’s IP Attaché Program works to improve IP systems and to help U.S. stakeholders internationally. IP attachés directly assist U.S. businesses and advocate to improve IP policies, laws, and regulations abroad.

This press release can be found here.


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December 9, 2020by Element IP

The United States Patent and Trademark Office (USPTO) today announced the appointment of Mary Critharis as its new Chief Policy Officer and Director for International Affairs. Ms. Critharis had been serving as the Acting Chief Policy Officer and Director for International Affairs since October 19, following the selection of her predecessor, Shira Perlmutter, to lead the U.S. Copyright Office.

As Chief Policy Officer and Director for International Affairs, Ms. Critharis will serve as a policy advisor to the Under Secretary of Commerce for Intellectual Property and oversee the USPTO’s domestic and international intellectual property (IP) policy activities; legislative engagement, through the Office of Governmental Affairs; education and training, through the Global Intellectual Property Academy (GIPA); global advocacy, through the IP Attaché Program; and economic analysis, through the Office of the Chief Economist.

“Mary’s proven leadership, as well as her remarkable breadth of experience, make her an outstanding choice to lead our IP policy and international affairs team at the USPTO,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “The USPTO and America’s intellectual property system will benefit from Mary’s thoughtfulness, steady hand, and long history with both domestic and international IP policy matters.”

Ms. Critharis has a bachelor’s degree in chemistry and political science from New York University, a master’s degree in biotechnology from Johns Hopkins University, and a juris doctor from Brooklyn Law School, where she was the executive editor of the international law journal. She first joined the USPTO as a patent examiner in 1992 before progressing to Assistant Solicitor in 2000. From 2001 to 2002, she served as Counsel to the United States Senate Judiciary Committee before returning to the USPTO as Attorney Advisor (2002-2004), Senior Patent Counsel (2004-2011), and Deputy Chief Policy Officer and Senior Counsel (2014-2020).

This press release can be found here.


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December 9, 2020by Element IP

The United States Patent and Trademark Office (USPTO) welcomes two new members of the Patent Public Advisory Committee (PPAC), Judge Susan Braden and Daniel Brown, and three new members of the Trademark Public Advisory Committee (TPAC), David Cho, Tracy Deutmeyer, and Jomarie Fredericks. Additionally, Steven Caltrider, who was previously appointed to complete the term of a retiring member, was reappointed to the PPAC for his first full term.

Judge Braden is a former Chief Judge of the United States Court of Federal Claims. Judge Braden has also served on the Judges Special Committee of the American Intellectual Property Law Association and as President of the Giles S. Rich American Inn of Court. Dr. Brown is an award-winning designer, independent inventor, entrepreneur, and professor at the Segal Design Institute–Northwestern University. Dr. Brown holds approximately 100 U.S. and international patents and has founded multiple companies.

Mr. Cho is the Assistant Vice President Senior Legal Counsel–Trademarks and Copyrights at AT&T. Earlier in his career, Mr. Cho was a trademark examining attorney at the USPTO. Ms. Deutmeyer practices trademark law at Fredrikson & Byron. Ms. Deutmyer is also a leader in the American Bar Association’s Section of Intellectual Property Law. Ms. Fredericks is the Deputy General Counsel and Chief Intellectual Property and Brand Counsel at Rotary International and the Rotary Foundation. Ms. Fredericks is also the 2020 Vice President of the International Trademark Association (INTA) Board of Directors.

In addition to adding new members, Julie Mar-Spinola will continue to serve as PPAC’s Chair, and Steven Caltrider will serve as PPAC’s new Vice Chair. Christopher Kelly will serve as TPAC’s new Chair, and Susan Natland will serve as TPAC’s new Vice Chair.

There are five other returning PPAC members: Jennifer Camacho, Barney Cassidy, Jeremiah Chan, Tracy Durkin, and Jeff Sears. There are four other returning TPAC members: Stephanie Bald, Jennifer Kovalcik, Tricia Thompkins, and Kelly Walton.

This announcement can be found here.


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December 9, 2020by Element IP

The United States Patent and Trademark Office (USPTO) and the Mexican Institute of Industrial Property (IMPI) today announced the launch of the Parallel Patent Grant (PPG) initiative. Under this new worksharing arrangement, IMPI will expedite the grant of a Mexican patent for businesses and individuals already granted a corresponding U.S. patent.

“The PPG is a revolutionary development in our global worksharing cooperation and, more importantly, in our economic and trade relationship with Mexico,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “This new partnership is the culmination of years of bilateral cooperation between our offices and opens doors to increased innovation, as well as further improvements in the international patent system.”

Juan Lozano, Director General of IMPI, said, “This groundbreaking agreement sends a positive message to the world about collaboration between countries and its relevance to propel patents and innovation, key motors of development. On one hand, the IMPI may be faster in granting patents that the USPTO already considered relevant, and at the same time, examiners may focus on reviewing patent applications from Mexican creators. The USPTO-IMPI cooperation is especially relevant to US stakeholders that have investments in Mexico to accelerate their patent protection.”

The launch of the PPG follows the signing of a Memorandum of Understanding on Technical and Strategic Collaboration by the USPTO and IMPI on January 28, 2020, attended by U.S. Secretary of Commerce Wilbur Ross, Mexican Secretary of Economy Graciela Márquez Colín, USPTO Director Iancu, and IMPI Director General Lozano. Its implementation will accelerate the patent examination process for the large number of commonly filed applications at USPTO and IMPI.

The USPTO and IMPI have a long history of worksharing cooperation. These include a more traditional form of bilateral cooperation, the Patent Prosecution Highway, which has been in effect since 2011.

This press release can be found here.


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November 13, 2020by Element IP

The United States Patent and Trademark Office (USPTO) today announced the appointment of David L. Berdan as its new General Counsel.

As General Counsel, Mr. Berdan will serve as the principal legal advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Berdan will also supervise 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.

“America’s inventors, creators, and innovators will be well-served with David Berdan as General Counsel at the USPTO,” said Director Andrei Iancu. “With his leadership experience and knowledge of so many aspects of technology and the law, Mr. Berdan will help guide the USPTO as we endeavor to expand innovation and support a growing and dynamic U.S. economy.”

Mr. Berdan is a graduate of the U.S. Military Academy at West Point, where he earned a Bachelor of Science in engineering and co-captained the Army football team as a defensive back. He is a combat veteran of Operation Desert Storm and is the recipient of numerous military awards, including a Bronze Star. Mr. Berdan has a Juris Doctor from Drake University Law School, where he was a founding member and President of the Drake Intellectual Property Law Society.

Over the past 25 years, Mr. Berdan has served in a variety of important legal positions, including as Patent Counsel at Corning, Inc., as Vice President and Intellectual Property Counsel at The Coleman Company, as Chief Counsel Intellectual Property at INVISTA, as Vice President Legal and Deputy General Counsel at International Game Technology, and, most recently, as General Counsel and Compliance Officer of Gaming Arts. Mr. Berdan also spent two years as an engineer and seven years in private law practice.

Mr. Berdan will begin his new role at the USPTO on Monday, November 16.

This press release and can be found here.


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October 27, 2020by Element IP

The number of artificial intelligence (AI) patent applications received annually by the United States Patent and Trademark Office (USPTO) more than doubled from 2002 to 2018, according to a new report published today by the USPTO, “Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents.” During those 16 years, annual AI patent applications grew from 30,000 in 2002 to more than 60,000 in 2018.

Accompanying the 100% increase of AI-related patent applications was unprecedented growth and broad diffusion of AI across technologies, inventor-patentees, organizations, and geography that attest to the growing importance of AI for all of those seeking intellectual property protection.

“I am pleased to see this rapid increase in artificial intelligence patent applications received by the USPTO, as artificial intelligence is becoming an integral part of our everyday lives,” said U.S. Secretary of Commerce Wilbur Ross. “I commend the USPTO for quickly adapting to this increase in AI-related patents and for supporting American patent filers as they utilize new technologies to enhance the lives of people across the globe.”

“Artificial intelligence is becoming ingrained in the daily life of Americans, facilitated by its rapid integration into products such as voice recognition systems in mobile phones, robotic appliances, satellites, search engines, and so much more,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “As this major new report demonstrates, the expansion of AI is a long-term trend that is accelerating every year. Unlocking the potential of AI will provide the basis for future U.S. economic growth and prosperity, and is something that the USPTO will continue to facilitate with our corps of patent examiners and other professionals who specialize in the nuances of this broad-based and far-reaching technology.”

The study’s authors developed their own AI algorithm to examine all U.S. patent applications published from 1976 through 2018. They found that patents containing AI appeared in 9% of technologies in 1976, spreading to more than 42% of technologies by 2018. While the growth of AI patent applications came in all AI-related technologies, “planning and control” and “knowledge processing” were the two categories that recorded the greatest increase in AI use.

This press release and can be found here.