Patent Planet
Thursday, July 31, 2025
PTAB - IPR Must Specify Where Prior Art Literature Discloses Each Claim Element - Effective September 1, 2025
Wednesday, July 23, 2025
PTAB - Patent Trial and Appeal Board Hearings Held in Person Absent Good Cause
Today, the USPTO announced:
"Patent Trial and Appeal Board (PTAB) hearings will be held in person. All parties will be expected to appear in person for hearings absent a showing of good cause. Good cause will generally be limited to circumstances such as financial hardship, medical emergencies, or other comparable obstacles to in-person attendance.
For all hearings scheduled on or after September 1:
- A party may request to appear virtually for good cause.
- The fact that one party is permitted to appear virtually does not establish good cause for other parties to do the same.
- Hearings will be held at one of USPTO’s offices, and parties may request a specific office location for their hearing. PTAB will attempt to accommodate such requests.
- Remote attendance will continue to be available to the public.
- To access a hearing virtually or in person, submit a request to PTABHearings@uspto.gov at least three business days before the hearing.
For more information, visit the PTAB hearings webpage, contact PTABHearings@uspto.gov, or call 571-272-9797."
Parties will soon get to "discuss" site of hearing (e.g., Alexandria, VA v. San Jose, CA).
Copyright © 2025 Robert Moll. All rights reserved.
Monday, July 14, 2025
PTAB's Denial of US Patent Challenges Before Merits Considered - Summer 2025
As a follow up on my post on the new PTAB bifurcated process on April 14, PTAB recently denied several dozen US patent validity challenges before consideration of merit.
Professor Crouch's article, Timing is Everything: PTAB’s Renewed Reliance on Litigation Timelines and Patent Longevity covers this in detail.
I haven't read the PTAB denials, but an affected patent owner might check out the winning patent owner papers (e.g., Carmichael IP's papers). Professor Crouch suggests the denials are primarily based on (1) if the trial in district court is scheduled before PTAB's projected final written decision; and (2) a patent owner's settled expectation when US patent has not been challenged for years.
I expect a fight on the legitimacy of this denial before merits approach. The litigation timeline rationale seems defensible as challengers bear the blame for not filing an IPR "timely" in PTAB allowing patent owners a jury trial. In contrast, a patent owner's settled expectation rationale seems subject to factual dispute on what circumstances justify it.
Copyright © 2025 Robert Moll. All rights reserved.
Monday, April 14, 2025
PTAB - USPTO Issues New Interim Process Concerning Institution of AIA Proceedings
Copyright © 2025 Robert Moll. All rights reserved.
Tuesday, January 9, 2024
US Supreme Court - High Court Denies Intel Bid to Nix Patent Office’s Fintiv Rule
Friday, December 1, 2023
PREVAIL Act & Molly Metz - Clear and Convincing: Will changing the standard save America’s greatest patents?
Wednesday, November 8, 2023
USPTO - November 15 New Date for Patent Center Replacing EFS-Web and Private PAIR
Sunday, November 5, 2023
IP Watchdog - Patent Community Slams USPTO’s Rush to Retire Old Software Systems Despite Patent Center Problems
Thursday, March 30, 2023
USPTO - Mixed Bag of News - Non-DOCX Surcharge Delayed (Again) & No Red Ribbon of US Patents (Unless You Pay)
Here are some recent USPTO announcements:
"Filing a new non provisional 111(a) application? Starting June 30, 2023, specification, claims and abstracts not filed in DOCX format will incur a non-DOCX surcharge of up to $400 for this filing type. See the Federal Register notice for more information.
Any known issues and workarounds for Patent Center can be found on the Patent Center information page.
Extended through June 30, 2023, exclusively in Patent Center, applicants have the option to upload a backup (auxiliary) PDF version of their application with their DOCX version. There are no fees associated with this auxiliary PDF. See the Federal Register notice for more information.
Attend a DOCX training webinar or visit the DOCX information page to learn more about filing in DOCX format.
Beginning April 18, 2023, the USPTO will begin issuing electronic patent grants (eGrants) to patent recipients, which minimizes paper waste, potentially reduces patent pendency, and allows recipients to get their patent grant in PDF format on the day of issue."
I don't see this as "such a benefit" as some who like to get the original red ribbon of the US patent will now need to pay for it, and it may create a pitfall for those applicants who cannot decide whether or not to file that continuation near issuance of the parent application.
Copyright © 2023 Robert Moll. All rights reserved.
Wednesday, March 29, 2023
USPTO - Manual of Patent Examining Procedure (MPEP) Published February 2023
The USPTO revised the Manual of Patent Examining Procedure (MPEP) Ninth Edition, Revision 07.2022 in February 2023. It is not legal authority, e.g., like the Federal Circuit decisions, but nonetheless a useful searchable online resource for many details of US patent prosecution.
Copyright © 2023 Robert Moll. All rights reserved.
Thursday, December 29, 2022
USPTO - Delays the Effective Date of the Non-DOCX Filing Fee
Wednesday, February 2, 2022
USPTO - New Patent Public Search Tool
Based on the advanced Patents End-to-End (PE2E) search tool USPTO examiners use to identify prior art, this free, cloud-based platform combines the capabilities of four existing search tools scheduled to be retired in September 2022: Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT).
“This new platform represents a significant step forward in our broader efforts to meet stakeholders where they are, especially in the pandemic,” said Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Knowing that our previous tools did not provide users with the convenience or similar functionality as those used by our examiners, it is incredibly gratifying to know that now more stakeholders can search for patents using the resources of four powerful search platforms in one expansive tool.”
In the past, users could only access legacy search tools PubEAST and PubWEST at a USPTO facility like the headquarters in Alexandria, a regional office, or a Patent and Trademark Resource Center. With the launch of the new tool, remote searching is now available to all users with internet access. Additional benefits include:
- Layouts: Multiple layouts with multiple tools to provide more data at once
- Highlighting: Multi-color highlighting that can be viewed across multiple gadgets and turned on or off
- Tagging: Ability to tag documents into multiple groups that can be renamed and color coordinated
- Notes: Ability to add notes to an image with options to include tags, relevant claims, and highlights
- Quality: Robust full-text searching of U.S. patents and published applications
- Familiar usability: Same searching syntax as PubEAST and PubWEST
In conjunction with the launch of Patent Public Search tool, the USPTO unveiled a new Patent Public Search webpage that includes FAQs, training resources, and other information to help users transition to the new tool. Upcoming public training sessions will be posted on the webpage as soon as they are scheduled.
For questions regarding Patent Public Search, please contact the Public Search Facility at psf@uspto.gov or visit the Public Search Facility and/or Patent and Trademark Resource Centers websites."
Thursday, January 6, 2022
USPTO - Deferred Subject Matter Eligibility Response Pilot Program.
Tuesday, December 28, 2021
RPX - Alice Remains in Narrowed State Post-Berkheimer as Congress Revives Section 101 Reform Debate
RPX's article Alice Remains in Narrowed State Post-Berkheimer as Congress Revives Section 101 Reform Debate is worth reading.
Here's a brief summary:
"Data on patent eligibility rulings reveal that Alice currently remains in a narrowed state as a result of the Federal Circuit’s 2018 Berkheimer and Aatrix decisions, which limited courts’ ability to grant early Section 101 challenges. The result has been a significant drop in the Alice invalidation rate, which has since become the status quo for defensive eligibility motions in district court, impacting both challenges against patents asserted by NPEs and by operating companies."
Copyright © 2021 Robert Moll. All rights reserved.
Sunday, December 26, 2021
Federal Circuit - CosmoKey Solutions GmbH v. Duo Security LLC - Software Patent Eligible
In CosmoKey Solutions GmbH v. Duo Security LLC, the Federal Circuit reversed the district court's decision that a two-factor authentication to software application patent was ineligible under 35 USC § 101.
Claim 1 of US Patent No. 9,246,903 appears to be a broad claim, yet satisfied the Federal Circuit as eligible:
A method of authenticating a user to a transaction at a terminal, comprising the steps of:
transmitting a user identification from the terminal to a transaction partner via a first communication channel,
providing an authentication step in which an authentication device uses a second communication channel for checking an authentication function that is implemented in a mobile device of the user,
as a criterion for deciding whether the authentication to the transaction shall be granted or denied, having the authentication device check whether a predetermined time relation exists between the transmission of the user identification and a response from the second communication channel,
ensuring that the authentication function is normally inactive and is activated by the user only preliminarily for the transaction,
ensuring that said response from the second communication channel includes information that the authentication function is active, and
thereafter ensuring that the authentication function is automatically deactivated.
The Federal Circuit disagreed with the district court ruling of ineligibility, stating "the claims and written description suggest that the focus of the claimed advance is activation of the authentication function, communication of the activation within a predetermined time, and automatic deactivation of the authentication function, such that the invention provides enhanced security and low complexity with minimal user input."
The Court noted the claims "recite a specific improvement to authentication that increases security, prevents unauthorized access by a third party, is easily implemented, and can advantageously be carried out with mobile devices of low complexity." Further, invention solved a problem in computer networks with non-conventional steps as recited in claim 1.
Although the Federal Circuit has held many software patents ineligible, this decision suggests your chance of allowance and validity will increase when the invention is an improvement to computers or networks, and importantly, the claims recite a specific novel solution to a technical problem that is described in the written description.
Copyright © 2021 Robert Moll. All rights reserved.
Wednesday, October 20, 2021
Federal Circuit - In re Surgisil - Favorable to Grant of Design Patents
The USPTO grants three types of patents: utility, design, and plant. Utility patents issue for new and useful processes, machines, manufactures, compositions, and improvements thereof. Plant patents issue for new and distinct plants, and design patents issue for new designs of article of manufacture.
When you read about patents, nearly always people talk about utility patents rather than design patents. Yes, utility patents can protect technology advances in software, hardware, products, and drugs, but design patents also have an important role. Thus, if an invention's appearance is new, you should consider seeking a design patent, because it is relatively inexpensive compared to seeking a utility patent, it may support large damage awards, and it can stop copyists.
Further, the Federal Circuit’s recent decision In re Surgisil has made it easier to obtain a design patent. There, the Federal Circuit held that 35 U.S.C. 171 grants design patents for articles of manufacture rather than for shapes in the abstract. It is not as USPTO argued: "appropriate to ignore the identification of the article of manufacture in the claim." The Federal Circuit held prior designs only anticipate (i.e., block issuance) if they are identical in shape to the claimed design and relate to the same article of manufacture. Thus, a drawing stump (used by illustrators) with the same shape did not anticipate a claim for an ornamental design for a lip implant. It's unclear if "related articles of manufacture" will become the ground of an obviousness rejection, but it should help applicants overcome anticipation rejections based on similar shapes for different articles of manufacture.
Copyright © 2021 Robert Moll. All rights reserved.
Thursday, September 23, 2021
USPTO - Increase Limit on Track One Prioritized Examination
The USPTO is expanding the availability of prioritized examination on September 24, 2021.
Here's the USPTO announcement:
"The United States Patent and Trademark Office (USPTO) has issued an interim rule further expanding the availability of prioritized examination (Track One) by increasing the limit on the number of Track One requests that may be accepted in a fiscal year from 12,000 to 15,000. The USPTO’s continued monitoring of the Track One program confirmed that the program could be further expanded to permit more applications to undergo prioritized examination while maintaining the ability to timely examine all prioritized applications. Track One allows applicants to receive a final disposition on their patent applications within approximately 12 months and grants applications special status with fewer requirements than the current accelerated examination program. More information on Track One is available on the Track One webpage of the USPTO website. The full text of the notice is available in the Federal Register and on the Patent Related Notices webpage." "From the Federal Register: "the number of applications accepted for prioritized examination will remain a small fraction of the patent examinations completed in a fiscal year (the Office examines approximately 640,000 applications and requests for continued examination in total per fiscal year). Accordingly, the Office is further expanding the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year to 15,000, beginning in fiscal year 2021 (October 1, 2020, through September 30, 2021) and continuing every fiscal year thereafter until further notice." So what's the USPTO currently charge applicants? I had to search the uspto.gov fee schedule for those details. The fee for the request for prioritized examination depends on applicant's size: $1,000 (micro entity), $2,000 (small entity), and $4,000 (large entity) plus a processing fee of respectively, $35 (micro entity), $70 (small entity), and $140 (large entity), plus you probably guessed your attorney's fees! Copyright © 2021 Robert Moll. All rights reserved. |
Tuesday, June 8, 2021
USPTO - Changes to Representation of Others Before the United States Patent and Trademark Office
The USPTO published: Changes to Representation of Others Before the United States Patent and Trademark Office on May 26, 2021.
The USPTO states the change "aligns the USPTO Rules of Professional Conduct more closely with the American Bar Association (ABA) Model Rules of Professional Conduct. It also improves clarity in existing regulations to facilitate the public's compliance, including revising various deadlines, the procedures concerning the registration exam, provisions related to the revocation of an individual's registration or limited recognition in limited circumstances, and provisions for reinstatement. It makes non-substantive changes to improve the readability of various provisions as well."
Copyright © 2021 Robert Moll. All rights reserved.
Saturday, June 5, 2021
USPTO - Modernizing Patent Filing with DOCX?
The USPTO Director article: Modernizing Patent Filing with DOCX confirms the USPTO still plans to shift user patent filings to DOCX and charge PDF filers an extra Non-DOCX fee starting on January 1, 2022.
In my experience, PDF has worked well aside from the embedded fonts issue. PDF has been the file format used millions of times since beginning of e-filing. Also PDF is no longer an Adobe only software offering.
If DOCX is better as stated in the article, one might expect some user validation. Instead, nearly all the user comments to the article say DOCX is not ready! Despite many months of USPTO promotion and development it has a number of bugs, pitfalls, and no user benefit over filing of PDF documents.
I don't think the USPTO should ignore the users on this issue. Instead, it should wait until DOCX is ready so users uniformly agree it is a better way of filing, or let users choose PDF or DOCX and continue without tilting costs (i.e., no USPTO surcharge for Non-DOCX filings). Otherwise, the USPTO is penalizing users for avoiding use of substandard software.
Copyright © 2021 Robert Moll. All rights reserved.
Monday, May 17, 2021
USPTO - Updated Inventor and Entrepreneur Resources Web Page - Worth Bookmarking!
The USPTO published a new inventor and entrepreneur resources web page that should save time on accessing intellectual property (IP) basics, patent and trademark search tools, and guidance on applications. It is worth bookmarking to save time searching for basic information on the USPTO website.
Copyright © 2021 Robert Moll. All rights reserved.
Friday, December 4, 2020
RPX - Former Operating Company Patents Have Been at Issue in the Majority of NPE Litigation
Thursday, December 3, 2020
USPTO - PTAB’s Motion to Amend Pilot Program
Today, the USPTO Blog (Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board of the USPTO) stated the PTAB's Motion to Amend Pilot Program shows promising results:
"On March 15, 2019, the USPTO implemented a pilot program for motions to amend (MTAs) in AIA trials before the PTAB. In MTAs, patent owners may request to cancel challenged claims or propose substitute claims to replace challenged claims if they are found unpatentable. We have seen promising results for claim amendments made under this pilot program and want to share these with you.
Under the pilot program, a patent owner has two new options. First, the patent owner can request preliminary guidance from the Board on its MTA. Second, the patent owner may file a revised MTA in response to preliminary guidance (if requested) or to the petitioner’s opposition. In short, by providing for guidance and an opportunity to revise the MTA, the pilot program provides for back and forth between the Board and the patent owner that did not previously exist.
If a patent owner requests preliminary guidance, the Board will provide feedback on the statutory and regulatory requirements for an MTA, as well as on patentability of the proposed substitute claims based on the record at that time. The patent owner may then file a revised MTA in response to the preliminary guidance. Alternatively, if the patent owner does not request preliminary guidance, it may file a revised MTA in response to the petitioner’s opposition to the original MTA. Notably, if a patent owner does not choose either pilot option, then the MTA proceeds under effectively the same practice as before implementation of the pilot program.
The pilot program applies to all AIA trials instituted on or after March 15, 2019, and patent owners could start filing MTAs under the program in June of 2019. Between June 1, 2019 and September 30, 2020, patent owners requested preliminary guidance in 76% of MTAs, or 78 out of 102 MTAs. Thereafter, 79% of patent owners filed a revised MTA. From April 1, 2020 through September 30, 2020, the PTAB issued 31 Final Written Decisions addressing pilot-eligible MTAs. So far, the pilot program options are being used in the vast majority of MTAs. Moreover, early results suggest that patent owners who chose at least one of the pilot program options are more likely to have their MTAs granted for at least one proposed substitute claim as compared to MTAs that do not use the pilot program options.
Specifically, out of the 31 Final Written Decisions with MTAs that were eligible for the pilot program, 22 elected at least one of the pilot program options. And out of the 22 MTAs in which patent owners elected at least one pilot program option, 36% had at least one proposed substitute claim granted. By contrast, of the nine MTAs where patent owners did not elect either pilot program option only 11% had at least one proposed substitute claim granted. Before the pilot program, only about 14% of MTAs had at least one proposed substitute claim granted.
The USPTO implemented the MTA pilot program with the goal of providing a more robust amendment practice in AIA trials, in a manner that is fair and balanced for all parties and stakeholders. Through this practice, the aim is to ensure that patent owners have viable opportunities to amend claims challenged by third parties. Preliminary data indicates that the pilot program is working as intended."
Copyright © 2020 Robert Moll. All rights reserved.
Thursday, October 29, 2020
USPTO - Report Inventing AI - Tracing the Diffusion of Artificial Intelligence with US Patents
On October 27, the USPTO report "Inventing AI - Tracing the diffusion of artificial intelligence with U.S. patents" states that US patent applications received on AI have sharply increased.
Here's the USPTO announcement:
"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.
The number of individual inventor-patentees active in AI also expanded dramatically during this period, from 1% in 1976 to 25% in 2018. There was similar growth in AI activity by organizations, with most of the top 30 AI companies being in the information and communications technology sector. The top five U.S. patent owners at time of grant from 1976 to 2018 were IBM, Microsoft, Google, Hewlett Packard, and Intel.
While AI inventor-patentees between 1976 and 2000 tended to be concentrated in larger cities and technology hubs, the report found that from 2000 to 2018 there was a marked diffusion of AI into other areas of the country, with notable growth in the Midwest.
'AI has the potential to vastly broaden the inventor community in the United States,' said Director Iancu. 'We have entered a new era of invention, entrepreneurship, and technological development. It is imperative that we train the next generation of Americans in the STEM subjects and innovation skills that will enable them to be part of this revolution.'"
Copyright © 2020 Robert Moll. All rights reserved.
Friday, October 23, 2020
USPTO - International Filing Tools for Inventors Seeking Foreign Patents
Today, the USPTO published a web page International Filing Tools to assist inventors seeking foreign patent protection.
Copyright © 2020 Robert Moll. All rights reserved.
Sunday, October 11, 2020
Michel & Battaglia - EBay the Right to Exclude, and the Two Classes of Patent Owners
In Patently-O, an article Michel & Battaglia - EBay the Right to Exclude, and the Two Classes of Patent Owners worth reading.
The article reviews the Supreme Court's EBay decision, which cautioned courts from categorically denying injunctions to patent owner that seek to license rather than commercialize their patented invention. Despite the caution, when it comes time to grant injunctive relief some courts think we have two class of patent owners. Time for patent owners to remind the court what did and didn't happen in EBay.
Copyright © 2020 Robert Moll. All rights reserved.