FEBRUARY 2023 - IP UPDATES

WIPO Updates: Joint Statement from the G7 Heads of IP Office Conversation

BY KASUMI KANETAKA

The Intellectual Property Offices operating in the Group of Seven (G7) countries participated in the Intellectual Property Heads of Office Conversation 2022 on December 9, 2022. As a result of the conversation, the G7 Heads issued a Joint Statement. In the Joint Statement, the G7 Heads state that they recognize that an effective international IP system is necessary to incentivize innovation and creativity worldwide. To develop the system, the G7 heads especially focused on “establishing a positive culture of IP” and “fighting counterfeiting and policy.” Our summary of the statement may be found here, and the Joint Statement may be found here.

AI & IP UPDATE

USPTO Seeks Stakeholder Input on AI and Inventorship

BY SAMEER GOKHALE

In the current issue of the Federal Register dated February 14, 2023 (read the Federal Register here), the United States Patent and Trademark Office (USPTO) is seeking stakeholder input on the current state of AI technologies and inventorship issues that may arise as AI technologies continue to advance. Specifically, the USPTO invites written responses to the several questions (read more on the questions here). The USPTO is requesting comments and response to the questions by May 15, 2023. Additionally, the “Journal of the Patent and Trademark Office Society” plans to publish a special issue focused on inventorship and AI-enabled innovation, and submissions for this special issue may be made by July 1, 2023. We will provide our own analysis of the above issues in upcoming posts on the AI Patent blog. 

JPO Updates: New Year Greetings from the JPO Commissioner Koichi HAMANO

BY KASUMI KANETAKA

On January 4, 2023, Koichi Hamano, the JPO Commissioner, issued New Year Greetings. The full message may be found here. In the message, Mr. Hamano summarizes that from January through September 2022, the number of applications for patents and trademarks declined, while the number of applications for designs increased compared to the same period in 2021. Mr. Hamano also states that the JPO has implemented the Patent Prosecution Highway (PPH) with the largest number of IP offices in the world (44 as of November 2022), and the use of PPH will support the international application strategies of JPO users through examination results. Read more here.

USPTO UPDATES

USPTO Announces Further Extension for Comments on Initiatives to Improve the Robustness and Reliability of Patent Rights

BY EVAN SMITH & GRACE KIM

The U.S. Patent and Trademark Office (USPTO) has once again extended the period during which it is accepting comments on the notice titled “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights” to February 28, 2023. This request for comments (RFC) originally published on October 4, 2022 at 87 FR 60130. The notice’s comment period was previously extended at 87 FR 66282 until February 1, 2023. The USPTO has indicated that there will be no further extensions of the comment period.

This notice is directed towards gathering public comments on a variety of proposed USPTO initiatives. Topics addressed by this RFC include prior art searching, support for claimed subject matter, request for continued examination (RCE) practice, and restriction practice. This RFC also seeks comments on certain initiatives related to these topics that are outlined in the USPTO's July 6, 2022, letter to the Food and Drug Administration (FDA) and questions set forth in a June 8, 2022, letter to the USPTO from six United States Senators.

Comments must be submitted through the Federal eRulemaking Portal at https://www.regulations.gov/docket/PTO-P-2022-0025. Please note that comments will be made available for public inspection, so private information should not be included. This February 14th announcement published in the Federal Register and is available at https://www.federalregister.gov/documents/2023/02/14/2023-03119/request-for-comments-on-uspto-initiatives-to-ensure-the-robustness-and-reliability-of-patent-rights.

USPTO Withdraws Continuing Legal Education Certification for Patent Practitioners

BY GRACE KIM

The United States Patent and Trademark Office (USPTO or Office) has issued a final rule eliminating provisions of 37 CFR part 11 that pertain to continuing legal education (CLE) certification and recognition for patent practitioners. The final rule eliminates 37 CFR 11.11(a)(3), which previously provided that registered patent practitioners and individuals granted limited recognition to practice in patent matters before the USPTO could certify their completion of a specified amount of CLE to the Director for the Office of Enrollment and Discipline (OED). After considering public comments, the USPTO has determined that the voluntary CLE certification and recognition for patent practitioners will not be implemented. The USPTO relayed its intent to continue releasing more detailed guidance, both for those within the USPTO and for those who practice before the USPTO, to provide education (e.g., via video sessions and materials) on applicable cases and guidance, and on any updates to USPTO practice. The USPTO encouraged practitioners to avail themselves of all materials relevant to their practice and to add themselves to the relevant USPTO email lists. The USPTO also encouraged practitioners to engage in pro bono efforts.

CAFC Resolves District Court Split: Defendant Cannot Use Post-Suit Unilateral Statement of Consent to Preclude Rule 4(k)(2) and Transfer Case to Alternative Forum

BY DON MCPHAIL

In re Stingray IP Solutions, LLC., No. 2023-102 (January 9, 2023) (Lourie, Taranto, Stark*)

Stingray petitioned for a writ of mandamus seeking to undo an order transferring the case from the United States District Court for the Eastern District of Texas to the United States District Court for the Central District of California. Stingray had filed suit against TP-Link Technology Co., Ltd., a company headquartered in China, and TP-Link International Ltd. (which later changed its name to TP-Link Corporation Limited), a company headquartered in Hong Kong. The TP-Link entities moved to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case to the Central District of California. At the Federal Circuit, the panel observed that there existed a split between the district courts on whether a defendant can defeat jurisdiction under Rule 4(k)(2) by unilaterally consenting to suit in a different district. This division rendered mandamus review appropriate in this situation, since it provided the panel the opportunity to resolve that dispute. The panel therefore rejected the TP-Link entities’ argument that mandamus review of a ruling on a motion under 28 U.S.C. § 1406(a) was inappropriate since it could be appealed from a final judgment. Regarding the merits of Stingray’s petition, the panel held that a defendant, such as the TP-Link entities, could not use a “unilateral statement of consent” to preclude application of Rule 4(k)(2) and thereby obtain a transfer of the case. The panel confirmed that a defendant such as the TP-Link entities bears the burden of showing that the suit could have been brought in the transferee forum regardless of consent. Read more.

LIFE SCIENCES UPDATES 

Comments On USPTO Initiatives To Ensure The Robustness And Reliability Of Patent Rights Received

BY RICHARD D. KELLY

The period for comments on the USPTO initiative is extended to February 28, 2023. The initiative raises issues of particular concern to the life science sector. The initiative was prompted by Executive Order “Promoting Competition in the American Economy,” 86 FR 36987 (July 14, 2021) (Competition E.O.). The E.O. was concerned that the patent system “while incentivizing innovation, does not also unjustifiably delay generic drug and biosimilar competition beyond that reasonably contemplated by applicable law.” This was followed by a letter from Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun raising the issue that the large number of patents covering a single product or obvious variants, impede the entry of generic drugs. Dick Kelly outlines here the six questions raised by the Senators for rule-making or public comment which were included as questions 6 – 11 in the USPTO request for comments along with other questions from the USPTO. A copy of the Initiative is here. The topics presented except for topic 1 are controversial and imply a bias against patenting in the life science field. Copies of the comments received are found here.