PTAB/USPTO Update - October 2022

USPTO Leadership

• This month, Director Kathi Vidal delivered official remarks at the International Copyright Institute and at the Global Forum on Intellectual Property.
• Director Vidal was appointed as a Federal Co-Chair of the National Advisory Council on Innovation & Entrepreneurship.
• The USPTO announced the addition of new Co-Vice Chairs of the Council for Inclusive Innovation (CI2). The new leaders include:
  • Alejandra Castillo, Assistant Secretary of Commerce for Economic Development
  • Don Cravins, Jr., Under Secretary of Commerce for Minority Business Development
  • Laurie E. Locascio, Under Secretary of Commerce for Standards and Technology and National Institute of Standards and Technology (NIST) Director
  • Sethuraman Panchanathan, National Science Foundation (NSF) Director
  • Shira Perlmutter, Register of Copyrights and Director of the U.S. Copyright Office

USPTO News

• On October 11, PTAB E2E will be replaced by the new AIA Trial portal called P-TACTS.
• On September 30, the USPTO's Patent Public Search tool (PPUBS) replaced four legacy systems. The new PPUBS tool can be accessed here.
• The PTAB is extending the Motion to Amend (MTA) Pilot program until September 16, 2024. The PTAB also published the seventh installment of its Motion to Amend Study.
• The USPTO announced a second extension of the Fast-Track Appeals Pilot Program through July 2, 2024.
• The USPTO announced that the After Final Consideration Pilot (AFCP) 2.0 has been extended to September 30, 2023.

Notices, Guidance, and Requests

• Extension of the Cancer Immunotherapy Pilot Program, 87 Fed. Reg. 58772 (September 28, 2022) (announcing that the Cancer Immunotherapy Pilot Program will continue to run until January 31, 2023)
• Submission of Comments Regarding the Patent Subject Matter Eligibility Guidance, 87 Fed. Reg. 53736 (September 1, 2022) [Comments due by October 15, 2022] (USPTO is seeking public feedback on its existing patent subject matter eligibility guidance that was put in place in 2019)
• Request for Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of Patent Trial and Appeal Board Decisions, 87 Fed. Reg. 43249 (July 20, 2022) [Written comments were originally due by September 19, 2022] (USPTO is seeking public comments on practices and policies for the review of PTAB decisions, including seeing input on Director review, Precedential Opinion Panel (POP) review, and internal circulation and review of PTAB decisions)
  • The deadline for written comments has been extended to October 19, 2022

Final Rule

• There are no new final rules.

Interim Rules

• There are no new interim rules.

Proposed Rules

• Changes to the Representation of Others Before the United States Patent and Trademark Office, 87 Fed. Reg. 54930 (September 8, 2022) [Comments period closes November 7, 2022] (proposing to amend the rules of practice in patent cases and the rules regarding the representation of others before the USPTO by formalizing the USPTO's Diversion Pilot Program for patent and trademark practitioners whose physical or mental health issues or law practice management issues resulted in minor misconduct)
• Standardization of the Patent Term Adjustment Statement Regarding Information Disclosure Statements, 87 Fed. Reg. 41267 (July 12, 2022) [Comments period closed September 12, 2022] (proposing to amend the rules of practice pertaining to patent term adjustment to require that the patent term adjustment statement regarding information disclosure statements be submitted on an Office form).
• Establishing Permanent Electronic Filing for Patent Term Extension Applications, 87 Fed. Reg. 27043 (May 6, 2022) [Comments period closed on July 5, 2022] (proposing to amend the Rules of Practice in Patent Cases to require that patent term extension (PTE) applications, interim PTE applications, and any related submissions to the USPTO be submitted electronically via the USPTO patent electronic filing system (EFSWeb or Patent Center)).

PTAB Decisions

• New Precedential PTAB Decisions
  
  • NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (September 7, 2022) [AIA § 314(a), affirming decision denying rehearing – the only appropriate time for a petitioner to offer a stipulation related to Fintiv factor 4 related to the overlap between issues raised in the petition and in parallel proceedings is prior to the Board's decision on institution] (sua sponte Director review decision)
• New Informative PTAB Decisions
  
  • There are no new informative PTAB decisions.

New Requests for POP Review

• Xerox Corporation v. Bytemark, Inc. (IPR2022-00624) [Requesting POP review of Institution Decision on the basis that that the Board "improperly and incorrectly distinguished between the blocking the purchaser and blocking the account of the purchaser, which detrimentally resulted in the determination that Petitioners failed to establish by a preponderance of the evidence that the challenged claims ... are unpatentable."]

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