PTAB/USPTO Update – April 2024 – Trademark

USPTO News

• On March 8, the USPTO joined other intellectual property offices in
  celebrating International Women’s Day with a theme of “Invest in Women: Accelerate
  Progress.”




• On March 11, the USPTO announced the new Office of Public Engagement (OPE) “to
  advance the agency’s mission of increasing participation in the
  innovation ecosystem by strengthening outreach and support to
  American communities.”




• On March 12, the USPTO and U.S. Copyright Office released a report to Congress titled Non-Fungible Tokens and Intellectual Property.
  The report, which responded to a June 9, 2022 letter from Senator
  Leahy and Senator Tillis, summarized comments from stakeholders,
  the current state of the law, and the two Offices’ analyses,
  and found that no new legislation is required to address NFTs at
  this time.




• On March 18, the USPTO announced the creation of a Diversity Information Platform (DI Platform),
  which “provides the latest available data on demographic
  trends by industry and U.S. state, allows organizations to gauge
  how they compare, facilitates the sharing of information and best
  practices, and reports on USPTO’s geographic and workforce
  diversity.”




• On March 20, the USPTO launched the Community Outreach Campaign: Intellectual Property
  (IP) Champions, which will “connect[] … USPTO employees
  (our designated “IP Champions”)—trained in
  providing IP awareness and educational resources to diverse
  audiences—with high schools and local community
  centers.”

Notices, Guidance, and Requests

• WIPO Diplomatic Conference on the Design Law
  Treaty, 89 FR 21242 (March 27, 2024) (requesting “public
  comments on negotiations at the World Intellectual Property
  Organization (WIPO) regarding a proposed Design Law Treaty
  (DLT)”).




• Setting and Adjusting Trademark Fees During Fiscal
  Year 2025, 89 FR 20897 (March 26, 2024) (providing notice of
  proposed adjustments to various trademark fees).




• Resources for Examining Means-Plus-Function and
  Step-Plus-Function Claim Limitations, 89 FR 19817 (March 20,
  2024) (requesting comments on a March 18, 2024 memorandum issued to the patent examining
  corps titled “Resources for Examining Means-Plus-Function and
  Step-Plus-Function Claim Limitations (35 U.S.C.
  112(f))”).




• Request for Comments: Unlocking the Full Potential
  of Intellectual Property by Translating More Innovation to the
  Marketplace, 89 FR 18907 (March 15, 2024) (requesting comments
  “on how the agency can build on current initiatives to”
  “foster[] pathways for innovation to reach the marketplace,
  with particular attention to green, critical, and emerging
  technologies”).




• Extension of the First-Time Filer Expedited
  Examination Pilot Program, 89 FR 17441 (March 11, 2024)
  (extending “First-Time Filer Expedited Examination Pilot
  Program … until either March 11, 2025, or until the date on which
  the USPTO grants a total of 1,000 petitions since the start of the
  pilot program, whichever occurs first.”).




• USPTO AI/ET Partnership: Public Symposium on
  Artificial Intelligence and Intellectual Property, 89 FR 16734
  (March 8, 2024) (providing notice of “a public symposium on IP
  and AI virtually and in person at Loyola Law School on March 27,
  2024.”).

Final Rules

• Electronic Submission of Notices of Appeal to the
  United States Court of Appeals for the Federal Circuit, Notices of
  Election, and Requests for Extension of Time for Seeking Judicial
  Review, 89 FR 22084 (March 29, 2024) (requiring any
  “notice of appeal to the United States Court of Appeals for
  the Federal Circuit, … notice of election to proceed by civil
  action in district court, and … request for extension of time for
  filing a notice of appeal or commencing a civil action” to
  “be filed with the Director of the USPTO by email”).




• Signature Requirements Related to Acceptance of
  Electronic Signatures for Patent Correspondence, 89 FR 20321
  (March 22, 2024) (“[U]pdat[ing] the signature rule” in
  patent cases “to provide for the broader permissibility of
  electronic signatures using third-party document-signing software,
  such as DocuSign® and Acrobat® Sign, and more closely align
  signature requirements with the rules of practice in trademark
  cases.”).

Interim Rules

• There are no new interim rules.

Proposed Rules

Proposed Legislation

• There is no new proposed legislation.

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




• • SynAffix B.V. v. Hangzhou DAC Biotech Co., Ltd.,
    IPR2022-01531

  
  

  • • Decision subject to Director Review – Paper 17 (August 22, 2023) [Institution
      Decision denying institution]

    
    

    • Order delegating Director Review to a Delegated Rehearing Panel
      – Paper 19 (November 16, 2023) [ordering review
      by an independent Delegated Rehearing Panel to “review the
      Decision and determine whether the record demonstrates that the
      Decision misapprehended or overlooked any issue raised in the
      Director Review request” and “to determine whether to
      grant rehearing”]

    
    

    • (NEW) Delegated Rehearing Panel Decision granting rehearing,
      vacating decision denying institution, and remanding for further
      proceedings – Paper 23 (DRP March 4, 2024) [granting
      rehearing and vacating prior decision on the basis that the
      “version of the [prosecution history] disclaimer [applied in
      the decision was] erroneous, as it misapprehend[ed] or overlook[ed]
      … portions of the prosecution history.”]

  
  

  • ASSA ABLOY AB v. CPC Patent Technologies Pty, Ltd.,
    IPR2022-01006, IPR2022-01045 & IPR2022-01089

  
  

  • • Decision subject to Director Review – Paper 47 (November 30, 2023) [Final Written
      Decision Determining No Challenged Claims Unpatentable]

    
    

    • (NEW) Decision vacating Final Written Decision and remanding
      for further proceedings – Paper 49 (March 15, 2024) [vacating Final
      Written Decision and remanding for further proceedings on the basis
      that “The Board’s Final Written Decisions employ[ed] a
      construction … that was not proposed by either party” and
      which requires supplemental briefing]

  
  

  • Ford Motor Company v. Neo Wireless LLC,
    IPR2023-00763

  
  

  • • Decision subject to Director Review – Paper 17 (November 9, 2023) [Institution
      Decision denying institution]

    
    

    • Order granting Director Review – Paper 19 (December 21, 2023) [ordering review
      by Director]

    
    

    • (NEW) Decision vacating decision on institution and remanding
      for further proceedings – Paper 28 (March 22, 2024) [vacating decision
      on institution and remanding for further proceedings on the basis
      that coordination with another Petitioner in a related
      multidistrict litigation (“MDL”) is not a
      “significant relationship” under General Plastic for
      purposes of whether the Board should exercise discretion to deny
      institution as a follow-on petition]

  
  

  • American Honda Motor Co., Inc. v. Neo Wireless LLC,
    IPR2023-00797

  
  

  • • Decision subject to Director Review – Paper 14 (November 9, 2023) [Institution
      Decision denying institution]

    
    

    • Order granting Director Review – Paper 18 (December 21, 2023) [ordering review
      by Director]

    
    

    • (NEW) Decision vacating decision on institution and remanding
      for further proceedings – Paper 27 (March 22, 2024) [vacating decision
      on institution and remanding for further proceedings on the basis
      that coordination with another Petitioner in a related
      multidistrict litigation (“MDL”) is not a
      “significant relationship” under General Plastic for
      purposes of whether the Board should exercise discretion to deny
      institution as a follow-on petition]

  
  

  • General Motors LLC and Nissan North America, Inc. v. Neo
    Wireless LLC, IPR2023-00962

  
  

  • • Decision subject to Director Review – Paper 11 (December 6, 2023) [Institution
      Decision denying institution]

    
    

    • Order granting Director Review – Paper 12 (December 21, 2023) [ordering review
      by Director]

    
    

    • (NEW) Decision vacating decision on institution and remanding
      for further proceedings – Paper 16 (March 22, 2024) [vacating decision
      on institution and remanding for further proceedings on the basis
      that coordination with another Petitioner in a related
      multidistrict litigation (“MDL”) is not a
      “significant relationship” under General Plastic for
      purposes of whether the Board should exercise discretion to deny
      institution as a follow-on petition]

  
  

  • Nokia of America Corporation v. Alexander Soto and Walter
    Soto, IPR2023-00680, IPR2023-00681 & IPR2023-00682

  
  

  • • Decision subject to Director Review – Paper 10 (November 3, 2023) [Institution
      Decision denying institution]

    
    

    • Order granting Director Review – Paper 12 (January 4, 2024) [ordering review by
      Director]

    
    

    • (NEW) Decision vacating decision on institution and remanding
      for further proceedings – Paper 18 (March 28, 2024) [vacating decision
      on institution and remanding for further proceedings on the basis
      that “the Board did not sufficiently explain its findings that
      substantially the same art and substantially the same arguments
      were previously presented to the Office.”]

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