Gibbons Law Alert

Gibbons Law Alert

Category: USPTO

PTAB Finds Service of Complaint for Infringement Without Exhibits Does Not Trigger 35 U.S.C. § 315(b) Time Bar

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Posted in USPTO

On September 25, 2023

In Lightricks Ltd. v. Plotagraph, Inc., the Patent Trial and Appeal Board (PTAB or “Board”) recently clarified the standard for what triggers the 35 U.S.C. § 315(b) time bar for filing a petition for inter partes review. Section 315(b) requires that petitions for inter partes review be filed with the Board within “[one] year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). In Lightricks v. Plotagraph, the Patent Owner (“PO”) argued that the petition at issue was filed outside of the one-year anniversary of the service of its complaint for infringement in the related federal district court action and was therefore time barred. The PO had attempted to serve its complaint at two of the petitioner’s office locations more than one year before the petition was filed. However, the exhibits to the complaint were not included in either of those two service attempts. The petitioner argued that the date of service for purposes of § 315(b) was the date that it filed a waiver of service with the district court, and that because the waiver of service was filed less than one year before the petition was filed, the petition was not time barred under § 315(b). The Board agreed with...

Artificial Intelligence System Cannot Be Listed as Inventor

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Posted in Patent / USPTO

On August 8, 2022

On Friday, the Federal Circuit held that the Patent Act requires an inventor to be a natural person, in response to a patent applicant who alleged that an artificial intelligence system was the inventor of a patent application. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). The patent applicant, Stephen Thaler, asserted that he develops and runs artificial intelligence systems that generate patentable inventions. Mr. Thaler then sought patent protection through two patent applications and listed the artificial intelligence system as the inventor. After the U.S. Patent and Trademark Office (USPTO) denied the patent applications for failure to identify a valid inventor, Mr. Thaler and the USPTO adjudicated the matter in the U.S. District Court for the Eastern District of Virginia. The District Court found that the Patent Act requires an inventor to be a natural person. Thaler v. Hirshfeld, 558 F. Supp. 3d 238, 249 (E.D. Va. 2021), aff’d sub nom. Thaler v. Vidal, No. 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). In affirming the District Court’s decision, the Federal Circuit first indicated that it need not perform an “abstract inquiry into the nature of invention or the rights, if any, of AI [artificial intelligence] systems.” Rather, the court began and ended on the “applicable definition in...

Trademark Modernization Act Becomes Law, Easing the Burden of Trademark Owners to Obtain Injunctive Relief and Curbing Trademark Registrations That Falsely Claim Use of a Mark

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Posted in Intellectual Property / Trademarks / USPTO

On January 14, 2021

As part of the recent COVID-19 relief and government funding bill (“the Consolidated Appropriations Act”), Congress introduced significant changes to U.S. trademark law. The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020. The Act intends to curb trademark registrations that falsely claim use of a mark, addresses the false-use-claim problem by creating new procedures to improve examination effectiveness and efficiency, and promotes remedies designed to protect consumers in trademark cases. The TMA, which becomes effective one year after the date of its enactment, amends the Lanham Act by changing certain procedures in trademark prosecution before the United States Patent and Trademark Office (USPTO), providing new avenues for canceling fraudulent registrations, and clarifying the standard for obtaining injunctive relief in trademark litigation. The key takeaways from the Act are discussed below. Third-Party Submission of Evidence of Non-Use: Section 3 of the Act provides for third-party submission of evidence during examination of an application for federal registration of a trademark. In particular, codifying the practice of Letters of Protest, Section 3(a) allows third parties to submit to the USPTO certain evidence relevant to the examination of a trademark application for consideration in deciding whether a trademark registration should be issued. Relevant evidence can relate to any ground on which an examiner...

New Jersey’s Patent Filings Place It Fifth in the Nation for Innovation

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Posted in Patent / USPTO

On December 8, 2020

NJBIZ recently reported on a study from CommericalCafe that named New Jersey the fifth most innovative state based on the number of patents filed and granted in New Jersey from 1975 through 2019. Of those patents, New Jersey’s top sections were: (1) Chemistry and Metallurgy, (2) Electricity, (3) Human Necessities, (4) Physics, and (5) Emerging Cross-Sectional Technologies. New Jersey’s standing is not limited to the acquisition of patent rights, but includes the enforcement and protection of those rights as well. This year, the Administrative Office of the U.S. Courts reported that the United States District Court for the District of New Jersey ranks seventh in the nation for the number of intellectual property cases filed in the 12-month period ending on March 31, 2020. Given the importance of development and enforcement of intellectual property rights in New Jersey, Gibbons P.C.’s Intellectual Property Department, headquartered in Newark, New Jersey, is routinely called on to represent its New Jersey clients in handling both patent prosecution and litigation across a vast number of industries.

USPTO Final Rule Limits a Reduction of Patent Term Adjustment to the Period the Applicant Failed to Undertake Reasonable Prosecution Efforts

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Posted in Licensing / Patent / USPTO

On June 26, 2020

On June 16, 2020, the United States Patent and Trademark Office (USPTO) published a final rule revising patent term adjustment under 35 U.S.C. 154(b) in view of Supernus Pharm., Inc. v. Iancu. In Supernus, the Federal Circuit held that a reduction of patent term adjustment must be equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application. The USPTO thus cannot deduct an amount of time beyond the period during which the applicant failed to undertake reasonable efforts to conclude prosecution. The USPTO revised relevant provisions pertaining to reduction of patent term adjustment, aligning the provisions with Federal Circuit law. Section 154(b)(2)(C) of the Patent Act authorizes the USPTO to reduce the total amount of patent term adjustment for certain delays by deducting the number of days equal to the period of time that “the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” The USPTO implemented this section with 37 CFR § 1.704. In 2006, Supernus Pharmaceuticals filed patent applications in both the United States and Europe covering an osmotic drug delivery system. In February 2011, Supernus filed a Request for Continued Examination (RCE) in the U.S. application after a final rejection. Supernus’s European application was granted later...

USPTO Takes Measures to Help Small Businesses Patent and License COVID-19 Inventions

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Posted in USPTO

On June 2, 2020

On May 8, 2020, the United States Patent and Trademark Office (USPTO) announced a new COVID-19 Prioritized Examination Pilot Program. Under this Pilot Program, the USPTO will grant qualified requests for prioritized examination of COVID-19-related patent applications without requiring payment of fees associated with other prioritized examination programs. Why is the COVID-19 Prioritized Examination Pilot Program important? This Pilot Program is the latest measure by the USPTO to spur innovation related to fighting the coronavirus. “Independent inventors and small businesses are often the difference makers when it comes to cutting-edge innovation and the growth of our economy,” said USPTO Director Andrei Iancu. “They are also in most need of assistance as we fight this pandemic.” Iancu continued, “Accelerating examination of COVID-19-related patent applications, without additional fees, will permit such innovators to bring important and possibly life-saving treatments to market more quickly.” Who may participate in the Pilot Program? Applicants of COVID-19-related patent filings who qualify for either small entity (37 C.F.R. §1.27) or micro entity status (37 C.F.R. §1.29) may participate. When can I apply? On May 14, 2020, the USPTO started accepting requests for prioritized examination under the COVID-19 Prioritized Examination Pilot Program. How long will the Pilot Program continue? The program will continue until the USPTO has accepted a total of 500 requests....

Senator Sasse Proposes Legislation Extending the Patent Term for Inventions Intended to Treat COVID-19

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Posted in Biotech / USPTO

On April 6, 2020

On March 30, 2020, Senator Ben Sasse, R-Neb., introduced a bill that would create the Facilitating Innovation to Fight Coronavirus Act. The first part of the legislation would shield healthcare providers from federal, state, and local civil liability if they are testing or treating coronavirus patients in certain circumstances. The second part of the bill would extend patent protection for new and existing medical devices and drugs intended to treat COVID-19. The added patent protection under the bill would only apply to eligible patents. An eligible patent is “a patent issued for a new or existing pharmaceutical, medical device, or other process, machine, manufacture, or composition of matter, or any new and useful improvement thereof used or intended for use in the treatment of the Coronavirus Disease.” The bill proposes that the term for new eligible patents “not begin until the date on which the national emergency declared by the President …terminates.” Moreover, the bill provides that the term for an eligible patent “shall extend for 10 years longer than it otherwise would under [the Patent Act].” Thus the bill would enhance patent protection for inventions covering technologies created to treat the coronavirus and inventions covering existing technologies adapted to treat the coronavirus. The CARES Act, enacted on March 27, 2020, provides $140.4 billion in...

USPTO Waives Certain Deadlines in Light of the Coronavirus Outbreak

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Posted in Patent / USPTO

On April 3, 2020

On March 31, 2020, the United States Patent and Trademark Office (“USPTO”) issued a notice permitting 30-day extensions to the time allowed to file certain patent-related documents and to pay certain required fees. Gibbons previously analyzed the first USPTO coronavirus guidance. For this second guidance, the USPTO determined, under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), that the COVID-19 “emergency has prejudiced the rights of applicants, patent owners, or others appearing before the USPTO in patent matters, and has prevented applicants, patent owners, or others appearing before the USPTO in patent matters from filing a document or fee with the Office.” The USPTO thus provided parties with the ability to extend certain patent deadlines if the party is personally affected by the COVID-19 outbreak. The USPTO notice expressly provides that three Patent Trial and Appeal Board (PTAB) deadlines may be extended for 30 days upon request: a request for rehearing of a PTAB decision; a petition to the Chief Judge under 37 C.F.R. § 41.3; and a patent owner preliminary response in a trial proceeding. “For all other situations, a request for an extension of time where the COVID-19 outbreak has prevented or interfered with a filing before the Board can be made by contacting the PTAB.” Relief under the notice is...

US Patent and Trademark Office Measures Taken in View of COVID-19 Outbreak: What Applicants and You Should Know

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Posted in Patent / Trademarks / USPTO

On March 20, 2020

The US Patent and Trademark Office (USPTO) has implemented several measures over the past week to assist patent and trademark applicants in view of the COVID-19 outbreak and its disruption to businesses. The USPTO stresses that, until further notice, USPTO operations will continue without interruption. Below are the key USPTO measures and what you should know if you have a pending patent or trademark application, are planning to file such an application, or are involved actively in a PTAB proceeding. Unlike the European Patent Office and Canadian Intellectual Property Office, which have eased the burden on their patent applicants by extending all deadlines until at least the earliest April 17 and April 1, 2020, respectively, the USPTO has offered more limited relief. On March 16, 2020, the USPTO announced that it will not extend any deadlines, including new and existing patent and trademark application, prosecution, and PTAB deadlines. Instead, the USPTO will waive revival petition fees for those whose patent applications were deemed abandoned or had reexamination proceedings terminated when the effects of the COVID-19 outbreak led to a missed deadline. This waiver will also apply to trademark applications labeled abandoned or whose registrations were canceled or expired based on missed deadlines. The USPTO has stated that it “considers the effects of the Coronavirus outbreak”...

The Biologic Transparency Act (S. 659)

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Posted in Biotech / Patent / USPTO

On March 11, 2019

The Biologic Patent Transparency Act (S. 659) was introduced by Senators Susan M. Collins ((R) Maine) and Tim Kaine ((D) Virginia) to address an unintended burden when new biological products are presented to the FDA for approval. According to the sponsors, the Act “seeks to help increase patent transparency, promote biosimilar competition, bring needed biosimilar treatments to patients faster, and ultimately, lower drug prices for consumers.” Currently, there is no “official” listing of patents that relate to biological products comparable to what is available for small molecule drug products that are subject to patent and market exclusivity. Small molecule drug products patent listings are located in the commonly known “Orange Book.” Despite a lot of attention focused on biosimilar products and numerous litigations around the country, there is no official book for biologics that provides the transparency found with small molecule drugs. Instead, an “unofficial” book known as the “Purple Book” purports to identify the patents that cover a biological product. The Biologic Patent Transparency Act remedies this deficiency and requires manufacturers of approved biological products to list the patents covering their products with the FDA. In particular, the Act provides for the following: Codification and publication of the Purple Book to ensure that the public is aware of patents covering a biological product; Listing...

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