PTAB/USPTO Update - October 2023

USPTO News

• Patent Center is slated to fully replace the legacy EFS-Web system and Private Patent Application Information Retrieval (Private PAIR) tool on November 8, 2023. The USPTO continues to host virtual training events to help users transition to the new tool.
• Mary Fuller was appointed Regional Director of the USPTO's Silicon Valley Regional Office (SVRO) on September 19, 2023.
• On September 18, 2023, the USPTO launched a beta version of the new cloud-based trademark search system. The legacy Trademark Electronic Search System (TESS) will be retired this year. The USPTO will host two demonstrations on September 26 and September 28, with webinars on basic searching and advanced techniques to follow on October 2 and 16, respectively.
• Commissioner for Trademarks Dave Gooder wrote a guest post on the Director's Blog discussing the new trademark search system.
• On September 21, 2023, the USPTO launched an updated search tool for general information on its webpage, which offers increased control over search results. Additional information on USPTO website improvements can be found here.
• On September 26, 2023, the USPTO issued the 1 millionth design patent to Agustina Huckaby of Fort Worth, Texas.
• Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal wrote a post on the Director's Blog regarding artificial intelligence and intellectual property.

Notices, Guidance, and Requests

• Requiring Identity Verification for Attorney-Sponsored Accounts, 88 Fed. Reg. 60667 (September 5, 2023) ("[A]nnounc[ing] that beginning on January 20, 2024, all existing and new attorney support staff with an attorney-sponsored USPTO.gov account will be required to verify their identity to access trademark filing systems.").
• Changes To Implement Provisions of the Trademark Modernization Act of 2020; Delay of Effective Date, 88 Fed. Reg. 62463 (September 12, 2023) (Delaying effective date for various amendatory instructions implementing provisions of the Trademark Modernization Act of 2020 until the spring or early summer of 2023).
• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Trial and Appeal Board (PTAB) Appeals, 88 Fed. Reg. 63940 (September 18, 2023) (Allowing for an additional 30 days for comments requested regarding information collections in appeals in patent applications and ex parte reexamination proceedings, and appeals in inter partes reexamination proceedings and interference proceedings).
• Elimination of the Postal Postcard in the Patent Center Electronic Office Action Program, 88 Fed. Reg. 64889 (September 20, 2023) (Announcing elimination of the option for a postal courtesy postcard to Patent Center e-Office Action program users as a reminder when there are available USPTO communications that have not been viewed or downloaded after a period of time, effective October 20, 2023. After that time, e-Postcards will be the only option).
• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; DOCX Submission Requirements, 88 Fed. Reg. 66414 (September 27, 2023) (Allowing for an additional 30 days for comments requested regarding the 37 C.F.R. § 1.16(u) non-DOCX filing surcharge fee for nonprovisional utility patent applications).
• Joint ITA-NIST-USPTO Collaboration Initiative Regarding Standards, 88 Fed. Reg. 66415 (September 27, 2023) (Extending until November 6, 2023 deadline for comments requested regarding the Joint ITA–NIST–USPTO Collaboration Initiative Regarding Standards).
• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Response to Office Action and Voluntary Amendment Forms, 88 Fed. Reg. 67256 (September 29, 2023) (Allowing for an additional 30 days for comments requested regarding extension and revision to the information collection regarding Response to Office Action and Voluntary Amendment forms for trademark applicants).
• Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Global Intellectual Property Academy (GIPA) Surveys, 88 Fed. Reg. 67257 (September 29, 2023) (Allowing for an additional 30 days for comments requested regarding extension of information collection of survey data from Global Intellectual Property Academy (GIPA) participants).

Final Rules

• There are no new final rules.

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules

Proposed Legislation

• Medication Affordability and Patent Integrity Act (bill introduced by Representatives Ann M. Kuster, Diana Harshbarger on September 13, 2023 "[t]o require sponsors of drug applications and holders of approved applications to provide certain submissions and communications to the Food and Drug Administration and the United States Patent and Trademark Office.")
• Prohibiting Adversarial Patents Act of 2023 (bill introduced on September 14, 2023 "[t]o amend title 35, United State Code, to require the Director of the United States Patent and Trademark Office to require disclosures in patent applications regarding ties to the People's Republic of China and other foreign adversaries, and for other purposes.")

PTAB Decisions

• New Precedential PTAB Decisions
  • There are no new informative PTAB decisions.
• New Informative PTAB Decisions
  • There are no new informative PTAB decisions.
• Director Review Decisions
  • There are no new director review decisions.

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