"Is the USPTO Trolling the Patent Bar?"
"Is the USPTO Trolling the Patent Bar?"
Also: calls to help Ukraine's patent office, EU SEP regulations stalled, AI debate, verdicts against Amazon in NDIL & Microsoft in DE, historical perspective on today's heated patent policy debates.
This Week In IP
USPTO’s not so good week(s) . . . USPTO:
is reviewing concerns re biased examination after Gene Quinn broke news about self-identified USPTO examiners considering not allowing patent applications from a company in Israel because of personal anti-Israel feelings
confirms inadvertently exposing thousands of home addresses of trademark applicants (again)
& FDA facing scrutiny after refusing to answer questions about relying on questionable data to support proposals to reduce drug prices
“has become aware of some confusion” regarding its DOCX guidance and clarifies that an applicant who files a preliminary amendment in PDF format on the filing date of the application in DOCX format does have to pay $400 surcharge (h/t Julie Burke)
widely panned for proposal requiring that a terminal disclaimer (TD) filed to overcome nonstatutory double patenting rejection based on a second patent to include an agreement that the patent with the terminal disclaimer will not be enforced “if any claim of the second patent patent is invalidated by the prior art”
More on this below…
Ukraine: Sen. Thom Tillis - ranking member of Senate’s Subcommittee on IP - highlights the war’s impact on the Ukrainian National Office for Intellectual Property and Innovations (UANIPIO), including 40% reduction in PCT applications, and calls on the USPTO to find ways to support it.
SEPs: EU Council continues to hold off making any progress on the proposed EU SEP regulation after the EU parliament’s overwhelming vote in support
Joff Wild predicts: “If the SEP licensing regulation does ever get adopted and then implemented, it will not be for another three or four years.”
AI: mixed reviews for USPTO’s proposed requirement for human contributions to be “significant” for “inventions created with the assistance of AI.”
Patent verdicts:
Quinn Emanuel’s John Quinn interviews Christine Lehman about her team’s $525 million verdict (in NDIL) “against Amazon Web Services (AWS) for infringing tech company Kove’s patent rights in data-storage technology” in April. . . including about Amazon’s decision not to challenge the validity of Kove’s patents after spending years unsuccessfully trying to get them invalidated at the USPTO.
Wi-LAN wins $242 million verdict (in DE) against Microsoft for infringing patent for voice-recognition technology.
“Amazon defended itself successfully. A Google case is still pending.”
Historical Perspective on Today’s Patent Debates
Have the patent policy debates become extra heated in recent years? Possibly.
But a Voice of IP tipster passes along an article that suggests that today’s debates are generally in line with the historical norm and, in some respects, much more civil.
Barely 4 years after the Civil War ended, Scientific American published an article vigorously defending President Grant’s choice to head the patent office as inventors’ true friend who will administer his duties “without the intrusive assistance of certain parties who seem to act as though the Patent Office was under their special guardianship, and the Commissioner a mere appendage to a lobby, which has cast a shadow over the good character of that Office.”
Frenzy of USPTO Activity
Former USPTO Director Andrei Iancu described, on the Clause 8 podcast, how he wanted the USPTO to focus on making improvements in a few areas and doing that well during his time as director.
The TD proposal is another sign that today’s USPTO seems to be taking a different approach. Instead of being chastened by the overwhelmingly negative reaction to the ANPRM, the USPTO has proceeded full steam ahead on trying to implement its strategic plan on “robust & reliable patents.”
As Professor Dennis Crouch pointed out last week, the USPTO currently has 8 RFCs out asking for comments by the end of July. Those RFCs are for proposed rules that cover a litany of extremely controversial topics, including:
topics that have never been previously addressed by the USPTO (e.g., “Impact of the Proliferation of Artificial Intelligence on Prior Art” RFC)
more than 20 new fees and 38 fee increases by 25% or more (in the "Setting and Adjusting Patent Fees During Fiscal Year 2025" RFC)
subjects of years of unsettled debate, including a variety of legislative proposals (e.g., "Proposed Rule on Patent Trial and Appeal Board Procedures" RFC)
the TD proposal that has caused “shock, ire and disdain . . . the likes of which has not been seen since the debacle of the publication of the Final Rules on Claims and Continuations in 2007," in the words of Sherry Knowles - who recently defended USPTO’s fee proposals.
In addition to these RFCs, the USPTO is taking many other controversial actions, including letters and guidance that have spurred criticism and lots of head-scratching. On the same day that Voice of IP wrote about one such letter and new Section 103 guidance, the USPTO ended up issuing new 112(f) guidance. The Federal Register website clearly indicates that this level of activity by the USPTO is unprecedented. The total output is about 40% higher than during a similar period at the end of the previous two administrations, which included notices necessitated by the COVID-19 pandemic.
One practitioner trying to make sense of USPTO’s recent streak asks Voice of IP: “Is the USPTO trolling the patent bar?"
Crouch summed up the RFCs as follows: "the USPTO has issued an unusually large number of public comment requests related to various proposed rules and procedure change" and that "[e]ach of these is important in its own right, but has the potential of being lost in the forest of pending action."
The USPTO’s barrage has also been, unsurprisingly, riddled with questionable assertions (if not outright errors). For example, the TD proposal asserts that “[t]he USPTO estimates that approximately 20% of applicants and patent owners . . . will opt not to file a terminal disclaimer containing the proposed agreement.” How did the USPTO come up with 20%? Why not 19% or 21%? You won’t find that out from the USPTO’s TD proposal making those assertions.
Voice of IP has learned that the USPTO career staff listed as contacts for these proposals seems clearly unhappy with that and is being asked to refer questions to USPTO’s communications office. At the same time, USPTO’s career communications personnel - previously long known for having very positive relationships outside the patent office - is being instructed to provide “no comment” in response to questions about USPTO’s recent activity.
This tracks with report of USPTO’s downfall in rankings for engagement and satisfaction of government employees. In response, former USPTO Deputy Director Russ Slifer noted last night: “Sad to see the Agency fall so far in these rankings. All the employees I had the pleasure of working with were great and dedicated. They deserve a great place to work!”
Like most proposed rules from the USPTO, these proposals are unlikely to become final rules. However, they’re definitely undermining the reliability and robustness of patents in the meantime. It remains to be seen if the USPTO is willing to change course in response to the overwhelming criticism (or if the administration thinks the patent and innovation community can just be ignored).
Is the USPTO considering withdrawing the terminal disclaimer NPRM because of the overwhelming negative reaction? The official line is “no comment” but the USPTO is clearly leaving room to correct its course.
Do you have the actual explanation for the USPTO’s recent activity? Do you think Voice of IP is completely off base?
Please email eli@VoiceOfIP.com or send message eli.92 on Signal.