On November 27, 2017, the U.S. Supreme Court will hear oral arguments in the appeal from the Court of Appeals for the Federal Circuit, Oil States Energy Services v. Greene’s Energy Group.[1] Certiorari was granted earlier this year. The sole question presented is whether the inter partes reviews – adversarial proceedings held before the United States …
PTAB Releases Revision to Operating Procedures for Cases Remanded from Federal Circuit
On November 16, 2017, the Patent Trial and Appeal Board (PTAB) revised its Standard Operating Procedures 9 (SOP9) involving cases remanded for further review from the Federal Circuit. These standard operating procedures are administrative rules governing cases as they wind their way through the appeal or trial processes before the Board, and are designed to …
USPTO Finalizes New Patent Fee Schedule
On November 14, 2017, the USPTO issued its final rule on new fees for Fiscal Year 2017.[1] There are some marked increases, several moderate increases, some nominal increases, a few new fees, and some fees which have been eliminated altogether. The new fee schedule reflects a strategic goal for aligning fees to their associated costs …
The Slants’ Saga Ends: USPTO Registers Service Mark
On November 14, 2017, six years to the day after the application was first filed with the USPTO which precipitated the landmark U.S. Supreme Court ruling in Matal v. Tam[1] striking down the disparagement clause of Section 2(a) of the Lanham Act, the USPTO has registered THE SLANTS service mark in International Class 41 for …
USPTO Issues Final Rule on Patent-Agent Privilege
On November 7, 2017, the USPTO issued its long-awaited new rule extending the USPTO’s attorney-client privilege to registered U.S. patent agents. The final rule can be found here.[1] This new rule has long been wanted by patent practitioners because, up until now, there existed a gray area of the practice which potentially prevented clients from …
USPTO Designates Assignor Estoppel Case as Precedential Authority
On August 1, 2017, the USPTO designated a Patent Trial and Appeal Board case as precedential authority. This case was decided four years ago, on October 25, 2013. That case, Athena Automation Ltd. v. Husky Injection Molding System Ltd.[1], held that the doctrine of assignor estoppel is not an exception to inter partes review (IPR).[2] …
USPTO Issues Exam Guideline on Merely Informational Matter
On July 30, 2017, the USPTO issued an Examination Guideline 2-17 on Merely Informational Matter. The Guideline is meant to assist Trademark Examining Attorney on case law relevant to trademarks and service marks which can merely be considered informational in nature only, and do not function as a source identifier for a particular good or …
USPTO Issues Public Comments for §101 Subject Matter Eligibility
By Brent T. Yonehara On July 30, 2017, the USPTO released its §101 report, Patent Eligible Subject Matter: Report on Views and Recommendations From the Public. The report is a rather dry recitation of the §101 legal framework better suited for a Patent Bar Exam prep course. However, there is an interesting comparative overlay of …
Fed Circuit Watch: Litigation Misconduct and Inequitable Conduct
By Brent T. Yonehara On July 27, 2017, the Court of Appeals for the Federal Circuit decided Regeneron Pharmaceuticals, Inc. v. Merus B.V. In Regeneron, the Federal Circuit affirmed a district court’s finding that Regeneron’s patent 8,502,018 was unenforceable due to inequitable conduct.[1] This case brings up the Therasense New Order of Inequitable Conduct in …
USPTO Issues Exam Guidelines Consistent with Tam Decision
On June 26, 2017, the United States Patent and Trademark Office issued an updated Examination Guideline 01-17, consistent with the recent Matal v. Tam, 582 U.S.___ (2017), ruling by the United States Supreme Court, and for which our analysis was the subject of a previous post. In that decision, the Supreme Court held that the …