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New and Upcoming Changes in U.S. Patent & Trademark Law for 2023

Important Developments

At the beginning of 2023, following a year in which new filings declined, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.

Patents

Reduced official fees for small and micro entities

A change in the U.S. patent laws governing fee reductions for small and micro entities was passed as a small part of a wide-ranging legislative budgetary package at the very end of 2022.  The relevant portion was titled the Unleashing American Innovators Act of 2022.  It is characteristic of U.S. politics that certain non-budgetary matters like this are appended to budgetary legislation shortly before passage during a holiday season with little public discussion.  These patent fee reductions therefore came as somewhat of a surprise.  As of December 29, 2022, most official patent fees are now discounted by 60% for small entity applicants (previously this was only a 50% reduction) and by 80% for micro entity applicants (previously this was only a 75% reduction).  These reductions apply to most official fees associated with initial filing fees for new applications, actions during examination (such as extension of time fees, request for continued examination [RCE] fees, etc.), as well as fees after grant such as maintenance fees.  The requirements to qualify as a small or micro entity are unchanged. 

The newly amended law further gives the USPTO power to impose fines for false assertions of small or micro entity status of no less than three (3) times the fee underpayment—with no pre-defined upper limit on that amount.  Such fines are not yet in effect and will require the USPTO to first issue implementing regulations that will establish exactly how they will be assessed.  However, depending on the scope of later regulations, this creates the possibility of significant penalties for innocent or negligent errors.  Historically, a fraudulent assertion of small or micro entity status, done knowingly or willingly with intent to deceive the USPTO, would qualify as inequitable conduct that renders the associated patent unenforceable.  But the appeals court responsible for all patent appeals set the threshold for the required intent to deceive extremely high.  While the possibility for unenforceability due to intentional fraud will remain, the USPTO will have new authority to impose fines if the assertion of entitlement to small or micro entity fee reductions was merely “false”.  There is no explicit statutory requirement for such a “false” assertion to be made with intent to deceive.  Thus, the USPTO can potentially impose fines without establishing intent to deceive, potentially including even good faith mistakes.  Failure to pay such fines will likely have an impact of the enforceability and/or abandonment/lapse of an associated patent or application.  It is unclear how the USPTO will discover or otherwise come to know about false assertions of entity size in order to subject applicants and patentees to fines.  It will therefore be important to monitor subsequent USPTO regulations regarding these fines and to see how existing safe harbor provisions for correction of good faith errors will be affected, if at all.  In the meantime, this highlights the need to accurately determine entity size status and to notify the USPTO at the appropriate time if entitlement to reduced fees is lost. 

Non-DOCX filing format requirements postponed (again)

The highly unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed until April 3, 2023.  Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications.   Additionally, the USPTO has extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format through June 30, 2023, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many objections from U.S. patent practitioners and practitioner organizations

The non-DOCX surcharge is part of the USPTO’s plans to automate certain administrative tasks to reduce administrative overhead costs and staffing associated with legacy systems for processing application materials.  While touted as providing benefits to applicants and practitioners, the reality is that there are no meaningful benefits to applicants or practitioners.  But, alarmingly, the USPTO has pushed forward with its cost-cutting objectives despite substantial problems apparent with its new Patent Center platform used for DOCX format filings and its tendency to introduce errors.  In effect, the USPTO has prioritized budgetary cost-cutting over maintaining the integrity of the contents of newly filed patent applications.  This is what has troubled practitioners most of all. 

In brief, the Patent Center system alters uploaded DOCX-format patent application files and has been shown to introduce errors in the substantive content of some uploaded applications.  These errors occur only some of the time, but in a significant enough percentage of cases for it to matter.  This creates new burdens on applicants and their U.S. patent counsel to review uploaded applications to try to identify errors introduced by the USPTO’s electronic filing platform.  These burdens are particularly difficult to manage for U.S. applications based on a Paris Convention foreign priority claim, where U.S. counsel did not prepare the original application and is therefore less familiar with the intended contents.  In addition, the USPTO has greatly limited opportunities to correct errors resulting from the way its (proprietary) systems process, convert, “validate”, and alter uploaded application documents.  In many circumstances (when a priority claim cannot be relied upon), corrections must be made within one year of initial U.S. filing and will require a petition fee larger than the non-DOCX surcharge.  The USPTO has indicated it will deny petitions filed more than a year after initial filing seeking to correct errors that its proprietary computer systems introduced.  Moreover, the non-DOCX surcharge is essentially punitive.  It far exceeds the estimated administrative savings of $3.15 per application that the USPTO has been able to quantify.  Most problems with the roll-out of the non-DOCX surcharge are the result of the USPTO committing to adopt certain proprietary computer systems based on a cursory and inadequate initial investigation of alternatives, greatly misunderstanding the stability and capabilities of the DOCX file format (and its alleged status as a “standard”), and having unrealistic goals for software development associated with implementation of a new proprietary filing platform (and unrealistic projections of net cost savings), coupled with a Kafkaesque disregard for the burdens imposed on applicants and the general public by its actions. 

Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here.  Bu applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content. 

Hard copies of patents still being issued (for now)

The USPTO previously announced that sometime in 2022 it would cease issuing paper patents and would issue only digital patents instead.  However, the USPTO has continued to issue hard copies of granted patents and has made no further announcements about the date after which only electronic patents will be issued.  Presumably, the USPTO will eventually cease to issue hard copies of patents (except upon an express request) but it is unclear exactly when that will occur.

Patent public search tool

The USPTO’s legacy open-access patent and published patent application search tools (PatFT and AppFT) have been retired. The PubEAST and PubWEST systems previously only available in-person (and to examiners) have also been retired.  In their place a new Patent Public Search tool is now freely available online. It is based on the old PubEAST/PubWEST tools.  Its new USOCR database allows U.S. patents granted before 1970 to be keyword searched—the old PatFT system previously had a 1970 cut-off for keyword searching. The launch of this new tool was rather awkward, with little training or instructional information initially provided on how to use it.  But, since its launch, training guides and frequently asked questions (FAQs) have become available.  This tool currently exists with two different interfaces:  Patent Public Search Basic (PPUBS Basic) and an advanced search. Both allow U.S. patents and published applications to be searched simultaneously.

The Basic search interface allows granted U.S. patents and published patent applications to be fetched by number, and allows some keyword-based searches, but returns only PDF copies. 

As the name implies, the advanced search includes advanced search functionality.  Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops).  The advanced interface is currently the only way the USPTO provides “full text” of published patent documents.  PDF image versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text.  Toggling that button allows switching between text or PDF image displays of a given patent document.   

Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface.  A given patent can be queried using the “.pn.” field code or by typing in an “external search” URL to a web browser. But expect some frustration because these “external search” URLs do not seem to consistently work at all.

An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number.  From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “Application Data” tab.  The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, you might say too many, using it may still be easier than the other alternatives available through the USPTO.

More information about using Patent Public Search is available here.

More U.S. patent filing information

Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.


Trademarks

Shortened response periods in effect

The time period for responding to U.S. trademark office actions is now only three (3) months.  This shortened response period is indicated in new office actions.  Applicants can, however, request a single 3-month extension of time by paying an official fee (currently $125 if filed electronically). An extension must be expressly requested by the original 3-month deadline.  This shortened response period does not apply to Madrid Protocol extensions, which will still enjoy a full 6-month office action response period.  Moreover, shortened response periods will not apply to post-registration office actions until October 7, 2023. 

Unlimited window for expungement requests still open

Any party may request cancellation by expungement of some or all of the goods or services in a U.S. trademark registration because the registrant never used the mark in commerce with those goods or services.  Normally an expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, a temporarily unlimited expungement filing period is in effect until December 27, 2023 during which expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit.  In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023.  Expungement proceedings are available for all U.S. registrations but are especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required prior to registration.  Additional general information about expungement proceedings is available here, and a listing of reexamination and expungement requests made to date is available here

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.

January 2023
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.