Tag: USPTO

Intellectual Property Consolidation in the Agriculture Industry

Ever since agencies around the world such as the USPTO, USDA, and Union for the Protection of New Varieties of Plants (UPOV) have started recognizing and enforcing intellectual property rights relating to plants, there has been a slow yet massive consolidation in global seed markets.  This article discusses a brief history of how intellectual property rights and lax antitrust enforcement in the seed industry created one of the largest industry consolidations and how the current Administration seems to be taking steps in the right direction.

Intellectual Property in the Agriculture Industry

In 1930, the United States began granting plant patents and the USPTO issued the first plant patent in 1931 for a rose.  The UPOV is an international organization that was founded in 1961 to acknowledge and make available exclusive property rights for breeders of new plant varieties in all member states to the UPOV Convention. The U.S. Plant Variety Protection Act (PVPA) was enacted by Congress in 1970 to encourage the development of new varieties and to make them available to the public.  The Plant Variety Protection Act established in the Department of Agriculture an office to be known as the Plant Variety Protection Office.  These regulations are all very important for the protection and continued innovation of certain varieties of crops and plants.  However, when genetically modified seeds were introduced in 1996, seed companies began to take advantage of these protections and began to invest heavily in amassing as many seed-related IP rights as they could.  As these companies have merged and acquired smaller businesses, they remove competition from the industry, harming farmers, families, and consumers.

There are many ways that companies protect intellectual property in the agricultural industry.  For example, companies file for utility patents to protect a wide variety of plant-related inventions, such as breeding methods, plant-based chemicals, plant parts, and plant products. Plant patents are unique to the United States and provide protection to any distinct and new variety of plant that has been asexually reproduced, other than a tuber-propagated plant or a plant found in an uncultivated state.  Plant Variety Protection certificates, which are similar to plant patents, provide certain exclusive rights to breeders of any new, distinct, uniform, and stable sexually or asexually reproduced or tuber-propagated plant varieties.  Other rights, known as Breeders’ Rights, exist in other countries outside the United States and are very similar to the Plant Variety Protection regulations.  These protections generally last for 20 years from the date of filing and, according to the World Intellectual Property Organization, the patent owner has the right to decide who may – or may not – use the patented invention for the period in which the invention is protected.

The Key Players in the Agriculture Industry

Monsanto was a multinational agricultural biotechnology corporation founded in 1901 and based in the United States.  In 1970, Monsanto scientist John Franz discovered that glyphosate was an herbicide and quickly patented it as such.  In 1974, Monsanto brought the patented glyphosate herbicide to the market using the tradename “Roundup.”  In 1996, Monsanto created the first genetically engineered (GE), glyphosate-resistant crop, causing Roundup-resistant soybeans to be planted commercially throughout the United States.  By 1998, glyphosate-resistant corn was available on the market, and Monsanto became the largest supplier of these new GE, “Roundup-Ready” seeds.  This was such a breakthrough in the agriculture industry that in 2003, Roundup-Ready seeds accounted for about 90% of the genetically modified seeds planted around the globe.

As with many industries, the agriculture industry has those companies that are at the top and those that are not.  The agriculture industry’s “Big Six” companies—Monsanto, DuPont, Syngenta, Dow, Bayer, and BASF—turned into the “Big Four”—ChemChina, Corteva, Bayer, and BASF— after a series of mergers and acquisitions that took place in the last decade with very little oversight from some of the antitrust authorities in the United States and around the world.  As a result of these mergers, the “Big Four” companies now control around 60% of the proprietary seed in the world market.

The Consolidation of the Seed Industry

Dr. Phil Howard from Michigan State University discussed the tremendous consolidation of the commercial seed industry in one of his first publications, 2009’s Visualizing Consolidation in the Global Seed Industry: 1996-2008.  Dr. Howard describes how the hybrid-seed corn industry of 1930, the enforcement of patent-like protections, and especially the commercialization of fully patent-protected transgenic, genetically engineered seeds in the mid-late 1990s triggered a wave of consolidation in the agricultural industry.  To make matters worse, when these companies consolidated and amassed massive intellectual property portfolios, it was not uncommon for seed rights to be bundled with other inputs to protect profits in other, agrochemical divisions.  For example, as Dr. Howard details in Visualizing Consolidation, in order to use Monsanto’s herbicide-tolerant transgenic seed, farmers are required to also use Monsanto’s proprietary glyphosate herbicide, rather than a generic herbicide.  Essentially, if you were buying Roundup-Ready seed, you were buying Roundup herbicide, and if you were using Roundup herbicide, it was probably a good idea to buy Roundup-Ready seed.  This type of competitive business practice is one that eventually creates a multitude of problems for smaller, independent businesses, breeders, and farmers.

Antitrust and Anti-Competition in America

Antitrust laws are not a new concept in American society.  Antitrust laws are statutes and regulations that are designed to promote the overall competition in the market by promoting free, open, and competitive markets.  Congress passed the first antitrust law in 1890 when it wrote the Sherman Act, which made it illegal for companies to enter into agreements to compete with one another, resulting in price fixing and monopoly power.  Several years later, in 1914, Congress passed the Clayton Act and Federal Trade Commission Act to protect American consumers by giving the Federal Trade Commission (FTC) and the Department of Justice (DOJ) the authority to oversee and review mergers and acquisitions that are likely to stifle competition.  Under the Hart-Scott-Rodino Act, the FTC and DOJ review most of the proposed transactions that affect commerce in the United States and either agency can take legal action to block deals that it believes would “substantially lessen competition.”

While these laws are all beneficial in theory, their implementation in the agricultural industry has been lacking to say the least.  According to a study in 2018, Bayer alone is estimated to control 35% of corn seed, 28% of soybean seed, and 70% of cottonseed in the global market!  Even more alarming may be the USDA’s 2014 report citing concerns that glyphosate-resistant crops have become ubiquitous with American agriculture with 93% of soybeans, 85% of corn, and 82% of cotton planted being genetically modified to be glyphosate-resistant.  The herbicides that are used to combat the weeds surrounding the crops, in many cases, are supplied by the same company that provides the seeds.

Promoting Competition in the Agriculture Industry

It has been almost a century since the first antitrust laws were enacted, and yet the problem of corporate consolidations remains in many industries across America.  On July 9, 2021, the Biden Administration signed an executive order aimed to promote competition within various industries in the United States.  The order includes 72 initiatives by more than a dozen federal agencies to promptly tackle some of the most pressing competition problems across our economy.  According to the Administration, this order is a “whole-of-government” approach to drive down prices for consumers, increase wages for workers, and facilitate innovation. This was a major step in the right direction to weaken the power that major businesses have obtained as a result of corporate consolidation in industries like healthcare, technology, transportation, and especially agriculture.

This Executive Order also established the White House Competition Council to drive forward the Administration’s whole-of-government effort to promote competition.  On September 10, 2021, the Competition Council held its inaugural meeting to discuss promoting pro-competitive policies and new ways of delivering concrete benefits to America’s consumers, workers, farmers, and small businesses.  During the meeting, the heads of the Department of Health and Human Services, the Department of Transportation, the Department of Justice, the United States Department of Agriculture, and the Federal Trade Commission briefed the council members on their efforts to implement the directives of the Executive Order.

The Challenge of Facing the Consolidated Agriculture Industry

According to an October 20, 2021 report by Thomson Reuters, Tom Vilsack, the U.S. Secretary of Agriculture, said that the Biden Administration plans to take a hard look at the consolidation of the seed industry and figure out “why it’s structured the way it’s structured” and “whether these long patents make sense.”  The White House Competition Council is certainly faced with a difficult challenge to parse through both anti-competition law and intellectual property law.  For centuries these bodies of law have caused great debate.  One body of law restricts monopolization wherein the later grants monopolistic opportunities.

There is no doubt that any changes to the current seed industry scene would shake things up.  But what exactly would that look like?  Are we going to see the “Big-4” morph into another, new identity?  Are changes to the patent law system likely?  Whatever happens, the agriculture industry will likely pay close attention to the actions of the White House Competition Council over the next couple months.

Article By Reinier R. Smit of Summa PLLC

Copyright 2021 Summa PLLC All Rights Reserved

The United States Patent and Trademark Office Remains Operational and Flexible During the COVID-19 Pandemic

In view of the COVID-19 pandemic, the United States Patent and Trademark Office (USPTO) recently announced that its offices will be closed to the public “until further notice.”[1] However, the USPTO also assured the public that USPTO “operations will continue without interruption.”[2] Accordingly, applicants can continue to file related documents with the USPTO (e.g., patent applications, trademark applications, and responses to USPTO communications). Applicants can also hold interviews and oral hearings with the USPTO by video or telephone.[3]

Additionally, the USPTO has provided numerous accommodations for applicants that have been affected by the COVID-19 pandemic. As explained in more detail below, such accommodations for affected applicants include:

(I) a 30-day extension of certain patent-related and trademark-related filing deadlines that fall between March 27 and April 30;

(II) waiver of revival fees for (a) abandoned patent applications, (b) terminated or limited re-examination proceedings, (c) abandoned trademark applications, and (d) cancelled/expired trademark registrations; and

(III) waiver of original handwritten signature requirements for (a) registration to practice before the USPTO in patent cases, (b) enrollment and disciplinary investigations, (c) disciplinary proceedings, and (d) non-electronic payments by credit card.[4]

I.  USPTO extends certain filing deadlines for those affected by COVID-19

The USPTO has exercised temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to provide a 30-day extension of various patent-related and trademark-related deadlines that fall between March 27 and April 30 for applicants affected by the COVID-19 pandemic.[5] Table 1 summarizes the patent-related and trademark-related deadlines that can be extended under USPTO’s temporary authority.

Extendible patent-related deadlines Extendible trademark-related deadlines
Reply to a USPTO notice issued during pre-examination proceedings by a small or micro entity[6] Response to an Office action, including a notice of appeal from a final refusal
Reply to a USPTO notice or action issued during examination[7] Statement of use or request for extension of time to file a statement of use
Reply to a USPTO notice or action issued during patent publication processing[8] Notice of opposition or request for extension of time to file a notice of opposition
Issue fee payment Priority filing basis
Numerous deadlines related to proceedings before the Patent Trial and Appeal Board (PTAB)[9] Transformation of an extension of protection to the United States into a U.S. application
Maintenance fee payment filed by a small or micro entity Affidavits of use or excusable nonuse
  Renewal application

Table 1.  Summary of patent-related and trademark-related deadlines that can be extended for 30 days for applicants affected by COVID-19.  The deadlines must fall between March 27 and April 30.

In order to obtain an extension of time for an applicable deadline, applicants must request the extension along with a statement that the delay was “due to the COVID-19 outbreak.”[10] Fortunately, the USPTO has broadly identified such COVID-19-related delays to include instances where “a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak” through various occurrences, such as “office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.”[11]

Unfortunately, extensions of time are not available for all deadlines affected by the COVID-19 pandemic.  For instance, original filing deadlines, PCT or national-stage filing deadlines, deadlines to file a non-provisional patent application claiming domestic benefit from a provisional patent application, and deadlines to file an inter-partes review petition are not covered.

II. USPTO waives revival fees for matters abandoned or affected due to COVID-19

The USPTO has also agreed to waive revival fees for the revival of matters that were abandoned or affected as a result of applicant’s inability to reply to a USPTO communication due to the COVID-19 pandemic.[12] Such abandoned or affected matters include: (1) abandoned patent applications, (2) terminated or limited re-examination proceedings, (3) abandoned trademark applications, and (4) cancelled/expired trademark registrations.[13] Table 2 provides a summary of the requirements and deadlines for requesting a waiver of revival fees for matters abandoned or affected due to COVID-19.

Matter abandoned or affected due to COVID-19

  Patent applications and re-examination proceedings Trademark applications and registrations
Requirements to waive revival fees
  • Reply to the outstanding Office communication
  • A petition to revive
  • A request for waiver of the petition fee
  • A statement that the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor was personally affected by the COVID-19 outbreak such that they were unable to file a timely reply
  • A petition to revive
    A statement explaining how the failure to respond to the Office communication was due to the effects of the COVID-19 outbreak
Deadline for requesting the waiver of revival fees
  • Two months from the issue date of the notice of abandonment of patent application or notice of termination or limitation of re-examination (“Notice”)
  • Six months from the date of patent application abandonment or termination/limitation of re-examination if the applicant did not receive the Notice.
  • Two months from issue date of the notice of abandonment or cancellation (“Notice”)
  • Six months after the date of abandonment, cancellation or expiration if the applicant did not receive the Notice

Table 2.  Requirements and deadlines for requesting a waiver of revival fees for matters abandoned or affected due to COVID-19.

III. USPTO waives original handwritten signature requirements until further notice

In view of the COVID-19 outbreak, the USPTO is also waiving the requirements for original handwritten signatures until further notice.[14] Accordingly, original handwritten signatures will not be required for the following documents that previously required them: (1) registration to practice before the USPTO in patent cases; (2) enrollment and disciplinary investigations; (3) disciplinary proceedings; and (4) payments by credit cards where the payments are not being made via the USPTO’s electronic filing systems.[15]

IV.  Conclusion

Even though the USPTO is currently closed to the public, the USPTO remains operational.  Furthermore, the CARES Act provides the Director of the USPTO with broad discretionary authority to “toll, waive, adjust, or modify, any timing deadline” established by patent or trademark statute or regulation.  The numerous accommodations already provided by the USPTO should provide applicants that have been affected by the COVID-19 pandemic with flexibility. However, applicants should appreciate that, since the COVID-19 outbreak is a fluid situation, additional changes to the USPTO’s operations and/or further accommodations could be forthcoming.

[1] https://www.uspto.gov/coronavirus

[2] Id.

[3] Id.

[4] Id.

[5] March 31, 2020 USPTO press release entitled “USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act”.

[6] Such extensions can include a Notice of Omitted Items, Notice to File Corrected Application Papers, Notice of Incomplete Application, Notice to Comply with Nucleotide Sequence Requirements, Notice to File Missing Parts of Application, and Notification of Missing Requirements.

[7] Such extensions can include a final or non-final Office Action and a Notice of Non-Compliant Amendment.

[8] Such extensions can include a Notice to File Corrected Application Papers issued by the Office of Data Management.

[9] Such extensions are: (a) the filing of a Notice of Appeal; (b) the filing of an Appeal Brief; (c) the filing of a Reply Brief; (d) payment of the appeal forwarding fee; (e) request for an oral hearing before the PTAB; (f) response to a substitute examiner’s answer; (g) amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection; (h) request for a rehearing of a PTAB decision; (i) request for rehearing of a PTAB decision; (j) a petition to the Chief Judge; and (k) a patent owner preliminary response in a trial proceeding, or any related responsive filings.

[10] See USPTO Patent and Trademark notices provided in the March 31, 2020 USPTO press release.

[11] Id.

[12] USPTO’s March 16, 2020 Notice entitled “Relief to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak.”

[13] Id.

[14] FR 17502, Vol. 85, No. 61. March 30, 2020.

[15] Id.

© 2020 Winstead PC.

For more on USPTO operations, see the National Law Review Intellectual Property law section.

New Platform to Facilitate Development of COVID-19 Technologies

The United States Patent and Trademark Office (USPTO) has launched a new platform that could expedite the development of COVID-19 related technologies. As explained in the USPTO’s press release, the Patents 4 Partnerships web-based marketplace is designed to “facilitate the voluntary licensing and commercialization of innovations in a variety of key technologies” related to “the prevention, treatment, and diagnosis of COVID-19.”

The Patents 4 Partnerships IP marketplace platform currently lists 175 granted U.S. patents and pending U.S. patent applications, covering such diverse technologies as “Methods of Treating Coronavirus Infection,” “Air-Sampling Device and Method of Use,” “Rapid and Highly Fieldable Viral Diagnostic,” and “Dexterous Humanoid Robotic Wrist.” According to the press release, the initially listed items were “drawn from a variety of public sources, including the USPTO, the Federal Laboratory Consortium for Technology Transfer (FLC Business), the AUTM Innovation Marketplace (AIM), universities, and a number of federal agencies.”

Stakeholders wanting to add their U.S. patents or applications to the Patents 4 Partnerships platform can complete this simple form. As noted on the form, the technology should be “reasonably related to the prevention, treatment, diagnosis, protection from or alleviation of symptoms of coronaviruses in general.”

© 2020 Foley & Lardner LLP

For more in COVID-19 tech-development, see the National Law Review Coronavirus News section.

Expunge-Examine-Ex Parte; the Trademark Office Seeks to add Arrows to its Quiver

According to a recent audit carried out by the Trademark Office and evaluating over 8000 registrations, as many as 46% of US use-based registrations were unsupported by actual use, with the percentages for Paris Convention and Madrid Protocol registrations reaching 66% and 65 respectively.

In other words, almost two-thirds of treaty-based applications arriving at the Trademark Office from outside the United States failed to meet a proof-of-use test.

For example, in late January 2018 The United States Patent and Trademark Office received a new application for federal trademark registration and assigned it an “87” series number.  The application was for a mark in standard characters, and was based on a Section 44(d) filing basis (15 USC § 1126(d)); i.e., an application accepted by the USPTO under treaty obligations with reciprocating countries.  (As a quirk of trademark law, practitioners tend to refer to sections of the original 1946 Lanham Act, even though their statutory citations are numbered quite differently.)

Under goods and services, the Applicant listed 115 different items (count ‘em) in International Class 03 (“bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices”).

Because the application was a treaty document, rather than a US use-based application, the Applicant provided neither a specimen nor any other evidence of use.  Following a brief prosecution, the registration issued in February 2019.

Trademark registration, of course, carries some important benefits including (but not limited to) “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate….” (15 USC § 1057).

Hunting down the Registrant’s website (or what appears to be the Registrant’s website) took some effort and indicated that the Registrant does not even provide the goods listed in the application, but rather is a service provider who consults with manufacturers and retailers.  These third parties use their own trademarks on their goods rather than the Registrant’s mark on Registrant’s goods.  Thus, this registrant starts with a presumption of rights to which it may not be entitled.

So, what is a competitor to do?  Respect a registration that is arguably invalid?  Such undeserved respect can result in the loss of business.  Obtain a clearance opinion from your intellectual property attorney?  Better, but potentially expensive depending upon circumstances.  File a cancellation proceeding?  Useful, but drawn out and potentially expensive.

The proposed amendments to the Trademark Act Of 1946 (15 USC § 1051 et seqq.; see, H.R. 6196; congress.gov); are intended to provide relief against invalid registrations that is faster, easier, and less expensive, than litigation, opposition, or cancellation.

The amendments also add some administrative touches that should make life better all around, but that will also introduce some new docketing deadlines for practitioners.

Third Party Submissions:  An amendment to current Section 1 (15 USC § 1051) will allow third parties to gain admission to a pending application and submit evidence that the legislation euphemistically refers to as “for inclusion in the record of an application…relevant to a ground for refusal of registration.” In other words, “Dear Examiner the Applicant should never have been granted a registration because….” This provision requires both submitting the evidence and giving a concise explanation of the grounds for refusing registration provided by that evidence.  The examining attorney is then entitled to use the information as they believe best.  This amendment will take effect one year after the final bill passes

Flexible response deadlines (amendments to Section 12(b); 150USC § 1062(b)):  This is an administrative touch which allows the Trademark Office to establish intermediate deadlines less than the statutory six months with appropriate extensions available (read:  “pay extension fees”) in a manner analogous to extensions granted by the Patent Office.  In accordance with US membership in certain treaty organizations, minimum deadlines are 60 days.

Expungement (a new Section 16A, inserted after current 15 USC § 1066):  This is a substantive provision adding collateral attacks on registrations short of a full cancellation proceeding.  In particular, expungement is based on a registrant’s failure to ever use the mark in commerce with some (or presumably all) of the goods and services identified in the petition to expunge (“never been used in commerce”).  The attack requires both supporting evidence and a fee, following which the Office has the authority to initiate an expungement proceeding.  Expungement will generally follow the examination steps for new applications, with the Director given rulemaking powers to establish potential exceptions.

A registrant can respond to expungement by documenting evidence of use, consistent with the “in commerce” requirements of 1946 Trademark Act.  The registrant is also given the opportunity to show some excusable nonuse.

Once the expungement evaluation has been completed, the examiner has the right to cancel the registration for any goods or services for which the owner cannot establish use in commerce.

The Director can also start such an expungement proceeding on his or her own initiative.

In each case, however, an expungement proceeding cannot be initiated until three years following the date of registration. This provides both docketing obligations and marketing opportunities for practitioners because it would presumably be a practitioner’s responsibility to remind clients that if they had included numerous goods and services in their application and registration, they will need to show such use for all of those specific items.

Ex Parte Reexamination (and its differences from Expungement; a new Section 16B following the proposed Section 16A):  At first glance, ex parte reexamination appears to track expungement, but there is an important difference.  To repeat, in expungement, portions of the registration are deleted based on the fact that the mark has “never been used in commerce” on those particular goods and services.

Reexamination applies a different standard to a different situation:  registrations for which the mark was not in use on the goods or services on or before “the relevant date.”  Normally that “date” would be the filing date for a use-based application or the statement of use date for an intent-to-use (“ITU”) application.

As in the case of expungement, the party petitioning for re-examination needs to raise relevant arguments and submit supporting proofs, and the Director can again cancel the registration for some or all of the goods depending upon the proof presented.

The timing for re-examination, however, moves differently than expungement.  In particular, once the registration reaches the five year anniversary, re-examination is no longer permitted.  This of course differs from expungement which cannot be initiated until three years after registration, but presumably remains available for the lifetime of the registration.

Again, this will potentially require some additional docketing by practitioners.  At a minimum, practitioners will need to docket this for their own clients, and presumably enterprising practitioners might track competitors’ registrations to give their clients an appropriate opportunity is to seek reexamination if they believe it worthwhile.

In summary, the amendments are attractive to at least the Trademark Office and competitors of registrants with flimsy factual support for their trademark claims.  The Office gets to clear out the dead wood, legitimate registrants have nothing to fear, and competitors get three flanking attacks, each of which appears to be faster, easier, and less expensive than any other current option.

Copyright 2020 Summa PLLC All Rights Reserved

ARTICLE BY Philip Summa of Summa PLLC.
For more on USPTO registrations, see the National Law Review Intellectual Property law section.

Patent Trial and Appeal Board Provides Guidance on Timing of Requests for Certificates of Correction During PTAB Proceedings

The Patent Trial and Appeal Board (“Board”) recently issued a decision in Emerson Electric Co. v. Sipco, LLC (IPR2016-00984) (Jan. 24, 2020) that illustrates some important points for patent practitioners to consider when requesting a certificate of correction for a patent subject to a Petition for Inter Partes Review before the United States Patent and Trademark Office (USPTO).

The Board’s recent decision was the result of numerous proceedings before both the Board and the Federal Circuit, which began with Emerson Electric Co. filing a Petition for Inter Partes Review against Sipco, LLC (Patent Owner) on April 29, 2016.  The Board issued a final written decision that found all challenged claims unpatentable under at least one ground on October 25, 2017.  This decision was appealed by the Patent Owner to the Federal Circuit, and on appeal the Patent Owner requested that the Federal Circuit remand the case back to the Board based on a certificate of correction that had issued for the patent in question (8,754,780; “’780 patent”) after the date of the Board’s final written decision.  (Id.)  The Federal Circuit granted this request, and remanded the matter with an Order requesting the Board to address the issue of “what, if any, impact the certificate of correction had” on the Board’s final written decision.

On remand, the Board found that the earliest priority date to which the challenged claims of the ’780 patent were entitled was April 2, 2013, and refused to recognize the belatedly issued certificate of correction that would have changed the earliest priority to an earlier date in favor of the Patent Owner.  This was because the certificate of correction did not issue until March 27, 2018, which was five months after the Board’s final written decision and three months after the Patent Owner appealed to the Federal Circuit.  (Id. at 5.)

A patent owner is permitted to request a certificate of correction in accordance with 37 C.F.R. § 1.323, which allows patent owners to ask the Director to make corrections to “mistakes” in a patent.  See 35 U.S.C. § 255.  In this case, the Board noted a series of mistakes and oversights by the Patent Owner in seeking a proper certificate of correction.  Although the Patent Owner filed a certificate of correction with the USPTO Petitions Branch about one month after the filing date of the Petition for Inter Partes Review, the Patent Owner failed to seek permission from the Board to do so, either before or after this filing.  The USPTO dismissed the Patent Owner’s first request for correction, and although the Patent Owner’s second request was thereafter granted, the second request had no chain of priority to the first, and so the USPTO Petitions Branch treated it as a new request for correction.  (Id. at 7-8.)

The Patent Owner then made a third request for a certificate of correction, and this time made its request to the Board, but this request was ultimately denied.  (Id. at 8.)  The Board later permitted the Patent Owner to submit a request for a certificate of correction to the USPTO Petitions Branch, and the Patent Owner did so.  However, the USPTO Petitions Branch found there was no chain of priority to the first certificate of correction request, because the Patent Owner had again failed to “make a reference to the first (earliest) application and every intermediate application.”  (Id. at 9.)  Finally, and without any motion to the Board, the Patent Owner submitted a final request for a certificate of correction to the USPTO Petitions Branch, and this request was granted – leading to a certificate of correction issuing on March 27, 2018 that set forth a priority claim material to the final written decision of October 25, 2017.

The Board determined that the belatedly issued certificate of correction was well after its initial final written decision and should not be given retroactive effect so as to alter its initial decision.  In considering both sides’ arguments, the Board turned to analyzing the language of 35 U.S.C. § 255, and whether or not it permits retroactive effect of a certificate of correction in an Inter Partes Review proceeding.  The Board ultimately found that section 255 does not authorize such a retroactive effect.  In other words, under the facts presented, the Patent Owner’s corrections of its mistakes in priority claims through a certificate of correction issued after the date of the Board’s final written decision did not apply back to the time when the Petition for Inter Partes Review was filed.  Further, the Board made clear that “once a petition for inter partes review of a patent has been filed, the Board may exercise jurisdiction over a request for a certificate of correction, and may stay the request,” citing to 35 U.S.C. § 315(d), 37 C.F.R. §§ 42.3 and 42.122.  (Id. 22.)  The Board noted that its decision that the finally issued certificate of correction had no impact on its earlier final written decision was consistent with the Board’s exercise of exclusive USPTO jurisdiction over a patent once Inter Partes Review is instituted.  (Id. at 22-23.)

Key Takeaway

Although non-precedential, the Board’s decision illustrates that it is best to file a request for a certificate of correction of a patent before Inter Partes Review is instituted.  After institution, the Board has discretion to stay, and effectively deny, a patent owner’s ability to request a certificate of correction that can determine the outcome of the Inter Partes Review proceeding before the USPTO.

© 2020 Brinks Gilson Lione. All Rights Reserved.

For more PTAB decisions, see the National Law Review Intellectual Property law section.

The U.S. Patent and Trademark Office Takes on Artificial Intelligence

If the hallmark of intelligence is problem solving, then it should be no surprise that artificial intelligence is being called on to solve complex problems that human intelligence alone cannot. Intellectual property laws exist to reward intelligence, creativity and problem solving; yet, as society adapts to a world immersed in artificial intelligence, the nation’s intellectual property laws have yet to do the same. The Constitution seems to only contemplate human inventors when it says, in Article I, Section 8, Clause 8,

“The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

The Patent Act similarly seems to limit patents to humans when it says, at 35 U.S.C. § 100(f),

“The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”

In fact, as far back as 1956, the U.S. Copyright Office refused registration for a musical composition created by a computer on the basis that copyright laws only applied to human authors.

Recognizing the need to adapt, the U.S. Patent and Trademark Office (PTO) recently issued notices seeking public comments on intellectual property protection related to artificial intelligence. In August 2019, the PTO issued a Federal Register Notice, 84 Fed. Reg. 166 (Aug. 27, 2019) entitled, “Request for Comments on Patenting Artificial Intelligence Inventions.” On October 30, the PTO broadened its inquiry by issuing another Notice, 84 Fed. Reg. 210 (Oct. 30, 2019) entitled, “Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation.” Finally, on December 3, 2019, the PTO issued a third notice, extending the comment period on the earlier notices to January 10, 2020. All of the notices can be downloaded from the PTO’s web site.

The January 10, 2020 deadline for public comments on the issues raised in the notices is fast approaching. This is an important topic for the future of technology and intellectual property, and the government is plainly looking at these important issues with a clean slate.

© 2020 Vedder Price

For more on patentable inventions, see the Intellectual Property law section of the National Law Review.

How to Get a PTAB Decision Designated Precedential

This past year, we have seen the Patent Trial and Appeal Board (PTAB) designate a number of decisions as precedential and informative more so than in past years. This is directly a result of the USPTO’s revised Standard Operating Procedure 2 (SOP2). On September 20, 2018, the USPTO announced that Board decisions can now be designated as precedential or informative through either one of two tracks: (1) POP Review or (2) a “ratification” process.

Under both tracks, a newly formed Precedential Opinion Panel (POP) comprising of at least three members will decide whether the decision should be designated as precedential or informative. Members of the POP will be selected by the Director and, by default, will comprise the Director, the Commissioner of Patents and the Chief Judge. The three members of the POP may each decide to delegate their authority in certain circumstances.

POP Review

POP Review under the first track is a rehearing of an issue in a pending trial. A party to a proceeding or any other member of the Board may recommend POP review—or a rehearing—of a particular Board decision. The request for POP review should be limited to situations where the Board decides issues of exceptional importance involving policy or procedure. A screening committee will review the recommendations and forward its recommendations to the Director. The Director will then convene with the POP to decide whether to grant rehearing, and if rehearing is granted, to render a decision on rehearing of the case.

If POP review is ordered, the Order will identify the issues the POP intends to resolve, may request additional briefing from the parties and, in some cases, may authorize amicus briefs. The POP may also order, at its discretion, an oral hearing. The decision resulting from POP Review will then be designated precedential, informative, or “routine.”

At this time, only two decisions have been issued by the newly formed POP:

  • Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019) (designated: Mar. 13, 2019)

  • GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754, Paper 38 (Aug. 23, 2019) (designated: Aug. 23, 2019)

Please see my latest blog post on the GoPro decision regarding the one-year time bar under 35 U.S.C. § 315(b).

To request POP review, a party to the proceeding must submit a request by email to Precedential_Opinion_Panel_Request@uspto.gov. The email must identify with particularity the reasons for recommending POP review along with a request for rehearing filed with the Board under 37 C.F.R. § 41.52(a) or 42.71(d). In addition, counsel must also include a statement that the Board’s decision for which rehearing is requested was contrary to law or is a question of exceptional importance.

“Ratification” process

Under the second track, the public may nominate already issued decisions to be designated precedential or informative. Under this track, the Board is relying on the public to recognize which decisions are valuable to post-grant practice. This is the more traditional path for which a decision may be designated as precedential or informative. In this past year, there have been more than a dozen decisions that have been designated as precedential or informative through this ratification process. As above, a screening committee will review the recommendations and the Director will then convene with the POP to decide whether to designate the decision as precedential or informative.

Nominations should be submitted by email to PTAB_Decision_Nomination@uspto.gov and must set forth with particularity the reasons for the requested designation.

To learn more about the process under either track described above, I recommend reviewing the revised Standard Operating Procedure 2 (SOP2) online which provides the detailed procedural requirements for nominating a decision as precedential or informative.

© Polsinelli PC, Polsinelli LLP in California
ARTICLE BY Margaux A. Savee of Polsinelli PC.

Protecting Your Brand and Trademarks in the Cannabis Space Following the 2018 Farm Bill

The 2018 Farm Bill [1] relaxed restrictions covering hemp-based cannabis products, and it is causing a shift in business strategies in the industry. Instead of a full prohibition of trademark registrations covering cannabis goods or services, a narrow range of filings is now permitted, so long as they conform to the requirements of the Farm Bill and the latest USPTO guidelines. While the regulatory framework is still being developed, cannabis-related business owners who could not previously receive federal trademark protection are now reconsidering their trademark strategies.

The principal change from the 2018 Farm Bill is that while all cannabis products derived from marijuana are still prohibited by federal law under the Controlled Substances Act (CSA), those derived from hemp are now permitted, albeit still tightly regulated. Hemp-based cannabis products are defined as those that contain no more than 0.3 percent THC, the primary active ingredient in marijuana. Accordingly, certain products and services derived from hemp are now legal under federal law, and the USPTO has published guidelines that allow narrow federal trademark registrations covering them.

The USPTO had previously refused any trademark application that covered cannabis products or services. In response, many businesses have filed state-law trademark applications in jurisdictions in which marijuana has been legalized, although this provides only limited protection. Businesses have also tried to circumvent the federal prohibition by filing for goods and services tangentially related to marijuana or cannabis, such as apothecary or pharmacy services for medical marijuana, or services for the provision of information and/or advocacy for cannabis and its uses. The policy at the federal level is still to refuse these applications that cover goods and services that are legal on their face but are in fact related to marijuana. But that policy is now moot for certain hemp-related applications that conform to the new guidelines.

Even for applicants that have succeeded in registering trademarks for cannabis-based products under facially legal goods and services descriptions, attempts to enforce these marks can be hollow. During the course of litigation, it may become clear that the activities of the trademark owner are not permitted under federal law. These registrations are still valuable to block other filers as well as to signal that a business is adopting and is willing to enforce a particular mark, but the new USPTO regulations can provide substantially more protection to businesses that sell qualifying hemp-related products or services.

Under the new USPTO guidelines, marks covering hemp-based cannabis products and services are permitted to be registered as long as they contain no more than 0.3 percent THC and are otherwise legal under federal law. Accordingly, there are certain exceptions and requirements, which include the following:

  • The 2018 Farm Bill left jurisdictional responsibility for regulating certain products to the FDA. As of now, the FDA does not permit cannabidiol (CBD) to be sold in food or drug products. Accordingly, registrations for marks that cover “foods, beverages, dietary supplements, or pet treats containing CBD” are still prohibited. This restriction applies only to CBD at this point. Other non-CBD hemp-based food or drug products would be permitted registration so long as they conform to the applicable FDA guidelines. Also, CBD products that are not a food or drug may still be permitted registration as long as they do not fall under the FDA’s jurisdiction or are not otherwise prohibited by other federal laws.  See USPTO Examination Guide 1-19.
  • For marks covering cultivation and other services related to hemp-based products, applications will be examined not only for compliance with applicable USPTO requirements but also for compliance with the 2018 Farm Bill and applicable state laws. Applicants must show that they have an applicable state license to provide their services, as not all states follow the 2018 Farm Bill’s guidance for hemp products, and in many states, these products are still illegal for commercial purposes or highly restricted.[2]

The new guidelines also allow for applicants to amend pending applications covering cannabis products to conform to the new requirements. To do so, the applicant must limit the list of goods and services to products that contain no more than 0.3 percent THC and submit any required documents showing that the goods and services covered are legal. The application’s filing date would also be amended to coincide with the legalization of hemp-based products, and the USPTO would conduct a new search of the register for prior marks to account for the later filing date.

Under the new regulations, cannabis businesses should consult a trademark attorney to consider their options to protect their trademarks on a federal level. Although the law is in flux and uncertainty abounds, there are several points from a trademark-filing strategy perspective to keep in mind when considering filings under the new guidelines:

  • The new, narrow USPTO guidelines will not be helpful to every business operating in the cannabis space. Businesses that will be helped either already offer or are considering offering hemp-derived goods and services that contain less than 0.3 percent THC, goods that do not constitute food or drug products that contain CBD, and goods that are not otherwise in conflict with FDA or other federal laws or guidelines.
  • A large number of trademark applications will likely be filed for hemp-based products soon, regardless of their applicants’ qualifications. Businesses should explore their options and file quickly, and keep in mind that it will be difficult to show prior use to oppose a third-party filer, as any such use was likely illegal under federal law.
  • Because the USPTO can suspend applications for good cause, it is logical to expect the USPTO to grant suspensions of applications while applicants are in the process of obtaining a license to cultivate hemp-based products.
  • Creating even more uncertainty, the 2018 Farm Bill has directed the U.S. Department of Agriculture (USDA) to derive regulations for hemp-related activities that fall outside of the FDA’s jurisdiction. The USPTO is expected to quickly adopt new guidelines to conform to the USDA.
  • Narrowing an existing application to conform to the new requirements will significantly narrow the filing. After such an amendment, the application cannot be amended back to cover the previous broader range of goods and/or services. If an applicant anticipates a change in law and can draw out the application process to wait for such a change, it may be advisable to file a new application that conforms to the new guidelines rather than amending the old one. The applicant can then keep the broader application alive to preserve their options.
  • In some cases, existing registrations may have made it through the examination process, even if they cover goods and services that were prohibited under federal law at the time of filing. If this is a possibility, businesses should consider their options for re-filing based on the new guidelines which on their face do not apply to amending existing registrations.

The new marijuana legalization framework being put in place state by state, most recently in Illinois, has raised more questions than answers in the state-regulatory sphere. However, until now, the federal guidelines were clear, as all cannabis-related products were prohibited under federal law. After the passage of the 2018 Farm Bill, this is no longer the case. As the law in the cannabis sphere unfolds, businesses should work closely with a trademark attorney to explore options for protecting their valuable brands.

© 2019 Dinsmore & Shohl LLP. All rights reserved.
More on Cannabis & Marijuana law developments on the National Law Review Biotech, Food & Drug law page.

USPTO Issues Examination Guide on Trademark Applications for Cannabis and Cannabis-Related Goods and Services

On May 2, 2019, the United States Patent and Trademark Office (“USPTO”) issued Examination Guide 1-19 (“Examination Guide”), which outlines the path to registration for trademark applications covering hemp-based goods and services.  The issuance of the Examination Guide serves as a departure from the USPTO’s longstanding bar to the registration of cannabis-related marks, and signals the potential for further relaxation of the USPTO’s prohibition on federal registration of trademarks and service marks for cannabis and cannabis-related goods and services as state legalization of cannabis continues to crop up across the country.

To obtain federal registration for a mark, a mark’s use in commerce must be lawful under federal law.  See generally Trademark Manual of Examining Procedure §907.  The USPTO will not issue registrations for marks covering goods or services that violate federal law – even if such goods or services are legal at the state level.  Despite the legalization of cannabis for medical use in 33 states and the legalization of cannabis for recreational use in 10 states, cannabis has been deemed illegal by the federal government under the Controlled Substances Act (“CSA”)1.  Cannabis-related marks have therefore been ineligible for federal trademark registration.

On December 20, 2018, the Agricultural Improvement Act of 2018, better known as the 2018 Farm Bill, was signed into law.  In relevant part, the 2018 Farm Bill removed “hemp”2from the CSA’s definition of marijuana, thus removing “hemp” from the list of controlled substances under the CSA and creating an avenue for federal registration of marks covering some goods and services derived from hemp.  Now, marks covering certain hemp-derived goods and services with less than 0.3% tetrahydrocannabinol (“THC”)3 may be eligible for federal registration.  However, the USPTO will continue to refuse registration when the identified goods or services in an application involve cannabis that meets the definition of marijuana and encompass activities still prohibited under the CSA.

To assist in the prosecution of trademark applications for these newly registerable goods and services, the USPTO outlined the requirements an application must meet before it may be eligible for registration for hemp-derived goods and related services.  First, the USPTO advises that only applications covering hemp-derived goods and services with less than 0.3% THC are registerable.  Second, an application’s identification of goods for all goods derived from hemp must explicitly state that the hemp-derived goods contain less than 0.3% THC.  Third, only applications for marks covering hemp-based products and related services filed after December 20, 2018, are eligible for federal registration.  Any applications filed prior to December 20, 2018, must be amended or refiled.4.  Specifically, applicants must request the USPTO amend their filing date to December 20, 2018, or withdraw their application and submit a new one.   Notably, the USPTO will also examine applications to register service marks for compliance with the CSA and the 2018 Farm Bill; and, as such, an application’s identification of services must also specify that the involved cannabis contains less than 0.3% THC on a dry weight basis.  Moreover, there are additional requirements for applications that include services involving the cultivation or production of hemp.

Restrictions still remain on the registrability of marks for hemp and hemp-derived goods.  For example, applications to register marks covering hemp-derived foods, beverages, dietary supplements, or pet treats will still be refused as unlawful because the use of hemp in items for human or animal consumption has not yet been approved by the Food and Drug Administration (“FDA”)5.

While Examination Guide 1-19 signals the budding federal registrability of marks for certain hemp-derived goods and services, applicants should consider the stringent requirements placed on the same.  Mark owners should think critically about whether their trademarks for cannabis and cannabis-related products and services are potentially eligible for federal protection, as we expect to see a significant influx of applications covering these types of offerings in the near future.  Filing applications for eligible products and services now may help mark owners gain a foothold in what will likely be a competitive business field going forward.

1 Under the Controlled Substances Act the drug class “Marihuana” (also referred to as “cannabis” or “marijuana”) is defined as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin.”  21 U.S.C. §802(16).  Cannabidiol (“CBD”), a chemical constituent of the marijuana plant is included in the Controlled Substances Act’s definition of “Marihuana.”  See id.

2 Hemp is defined as “the plant Cannabis sativa L., and any other part of that plant, including the seeds thereof an all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol (“THC”) concentration of not more than 0.3% on a dry weight basis.”  Agricultural Improvement Act §297A

3 THC is the main psychoactive ingredient of cannabis.

4 The USPTO takes the position that any applications filed before December 20, 2018 lacked a valid basis to support registration at the time of filing because the applied-for goods violated federal law.  See Examination Guide 1-19: Examination of Marks for Cannabis and Cannabis Related Goods and Services after Enactment of the 2018 Farm Bill.

5 The 2018 Farm Bill specifies that the FDA retains its authority to regulate goods containing cannabis and cannabis-derived compounds, and the FDA has taken the position that cannabis-infused items for human or animal consumption require the FDA’s approval before they may be sold to consumers. The FDA is conducting clinical investigations into the safety and efficacy of such products for human and animal consumption.

© 2019 Brinks Gilson Lione. All Rights Reserved.
This post was written by Virginia Wolk Marino and Emily Kappers of  Brinks Gilson & Lione
Read more USPTO & Trademark news on the National Law Review Intellectual Property page

PTO Releases Revised Guidance on Compliance with Mayo/Alice Rule

On April 19, the USPTO released a Memorandum from Robert Bahr, The Deputy Commissioner for Patent Examination Policy, that summarized the support required for a finding if a claim directed to a judicial exception to s. 101 eligibility under Step 2A of the Mayo/Alice analysis chart of MPEP 2106 – a natural phenomenon, an abstract idea or a product of nature [ ed. note “PAIN’]– contains an additional inventive concept that, taken alone or in combination, would not represent well-understood, routine, or conventional [“WRC”] activity. The Memorandum was prompted by the recent decision in Berkheimer v. HP, 881 F.3d 1360 (Fed. Cir. 2018).

At virtually the same time, Director Iancu released a Request for Comments on Determining Whether a claim element is [WRC] for the Purposes of Subject Matter Eligibility, and it pretty much repeats the factors listed in the Bahr Memorandum. For a detailed summary of the factual underpinnings that an examiner must make in order to support a rejection on the basis that a claim directed to a PAIN does not meet the inventive concept requirement because it is WRC, please refer to my post of April 20th.

I criticized the four factors outlined in the Memorandum/Request for using the s. 112 standard that that which is known to the art need not be set forth fully in the specification, as a blaze mark to guide examiners in determining whether the additional elements(s) in the claim are WRC. In other words, if the specification does not give the details of how to measure a biomarker, the examiner can use such facts to support a WRC finding. This relying on material not present in the specification is repeated in Factors 1, 3 and 4. I also criticized Factor 2 as permitting examiners to simply cite to “one or more court decisions discussed in MPEP 2106(5)(d)(2)” as noting the WRC nature of the additional element(s) in the claim, primarily due to the breadth of the summaries of the cases in this section of the MPEP.

The Revised Guidance in the May 8th Presentation (which is available as a slideshow from the PTO) takes these two criticisms to heart. It drops the reference to the value of a s. 112 analysis in Factors relating to the evidence of WRC provided by the specification, the disclosures in the prior art and the ability of the examiner to take official notice of the WRC, which usually will be based upon disclosures in the prior art.

The Revised Guidelines start out by stating that the examiner should conclude that a claim element(s) represents only WRC activity only if he/she can conclude that the element(s) is “widely prevalent or in common use in the relevant industry,” a conclusion that must be supported by factual determinations. Here is a quick run-down of the four “Options” that the examiner can use to demonstrate that a claim directed to PAIN does not contain more than elements that are WRC (These are mostly my words):

  1. Applicant makes a “statement against interest” in the specification or during prosecution that a claim element(s) is conventional, widely prevalent or in common use, or is a commercially available product.

  2. The examiner can cite to one or more court decisions as noting the WRC nature of the additional elements, as reported in MPEP 2106(d)(II). I criticized this as overly broad, especially in view of the fact that there is almost no case law involving diagnostic testing or methods of medical treatment. Interestingly, in Vanda v. West-Ward, the Fed. Cir. stated that the Mayo claims were diagnostic claims. This is a stretch – What condition did they diagnose? The recited patient had been treated with the drug before any sample testing was carried out. However, the revised guidelines make it clear that the additional element in the claim must be the same as the element addressed in the court case, as well as the fact that the case must be on the MPEP list. Vanda v. West-Ward should be added to this list.

  3. The examiner finds prior art publication(s) that demonstrate that the element(s) in questions are WRC, not just in existence at some point in the past. This should come from the prior art located in the search done by the Examiner or disclosed by Applicant.

  4. The examiner is permitted to take official notice of the WRC of the additional element(s) but only to be used when the examiner is certain thereof based upon his/her personal knowledge. For all but the most indisputable WRC, the examiner may be required to provide a declaration under 37 CFR 1.104(d)(2).

If more than one element is present, the examiner must show that the combination of the elements is WRC in the pertinent art. If the examiner cited to a publication not previously of record in response to an argument by applicant, the office action should not be made final.

Comments must be received by Aug. 20, 2018 by submitting them to Eligibilty2018@USPTO.gov.

 

© 2018 Schwegman, Lundberg & Woessner, P.A.
Read more updates on Mayo/Alice on the National Law Review’s Intellectual Property Page.