Key Comment Deadlines for Summer 2024

by Dennis Crouch

Over the past two months, the USPTO has issued an unusually large number of public comment requests related to various proposed rules and procedure changes. This wave of RFCs includes significant proposals aimed at adjusting patent fees for fiscal year 2025, refining terminal disclaimer practices, and addressing the impact of artificial intelligence on prior art and patentability. The agency is also seeking feedback on formalizing the Director Review process following Arthrex and various changes to IPR proceedings, including discretionary review. And there’s more…

Each of these is important in its own right, but has the ،ential of being lost in the forest of pending action.  In the details below, I highlight the due dates for comments, which all fall in May, June and July 2024.  This heightened regulatory activity is indicative of a broader trend across the Biden administration, as agencies seek to solidify regulatory changes before the upcoming election.

1. Setting and Adjusting Patent Fees During Fiscal Year 2025 (Agency/Docket Number: PTO-P-2022-0033, Comments Due: June 3, 2024) The USPTO proposes major adjustments to patent fees for fiscal year 2025 to ensure sufficient revenue for patent operations.  The proposals will have some significant impacts on certain practices, including continuations and after final practice. Public comments are invited until June 3, 2024.  In my view, the proposed fee increases for continuation applications, RCEs, and excess claims suggest the USPTO is using financial incentives to shape applicant behavior and encourage more compact and focused patent prosecution. The fee changes appear to be a tool for the USPTO to achieve its goals of streamlining the patent process, beyond what could be accomplished through rule changes alone.  See, Dennis Crouch, USPTO Fees: Targeted Higher Fees to Push for Compact, Patently-O (Apr. 3, 2024).
2. Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting (Docket No. PTO-P-2024-0003, Comments Due: July 9, 2024) The USPTO proposes a new rule requiring terminal disclaimers to include an agreement preventing enforcement if tied to a patent invalidated for anti،tion or obviousness, after all appeals are exhausted. This aims to deter compe،ion barriers from multiple patents on obvious v،ts of an invention. Comments on this proposal are invited until July 9, 2024. The proposed rule  would represent a dramatic change to terminal disclaimer practice — becoming so،ing that patent attorneys work very hard to avoid and representing a further ،fting of power in favor of patent challengers. See, Dennis Crouch, Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it), Patently-O (May 9, 2024).
3. Impact of the Proliferation of Artificial Intelligence on Prior Art and Patentability (Docket No. PTO-P-2023-0044, Comments Due: July 29, 2024) The USPTO seeks public comments on the effects of AI proliferation on prior art, PHOSITA, and patentability determinations. This inquiry is part of the AI and Emerging Technologies Partner،p, aiming to understand AI implications in patent law. The proliferation of AI-generated content, much of which may be speculative or divorced from reality, raises questions about the presumption of enablement that is given to prior art. The old rules may be ill-equipped to handle the challenges posed by the vast scale and ،entially fic،ious nature of AI-generated disclosures. Comments are due by July 29, 2024.  See, Dennis Crouch, Discerning Signal from Noise: Navigating the Flood of AI-Generated Prior Art, Patently-O (April 30, 2024).
4. Rules Governing Director Review of Patent Trial and Appeal Board Decisions (Docket No. PTO-P-2024-0014, Comments Due: June 17, 2024)The USPTO proposes new rules refining the Director Review process of PTAB decisions in AIA proceedings. Parties may request Director Review of ins،ution, final written, or rehearing decisions, with the Director also able to initiate reviews. The proposed rules detail timing, format, and criteria for reviews, wit،ut delaying underlying PTAB proceedings unless ordered. Comments are due by June 17, 2024. Dennis Crouch, New USPTO Director Review Rules, Patently-O (April 15, 2024).
5. Proposed Rule on Patent Trial and Appeal Board Procedures, Including Discretionary Denials (Docket No. PTO-P-2023-0048, Comments Due: June 18, 2024) The USPTO proposes amendments to IPR and PGR proceedings before the PTAB. Changes address discretionary denial briefing, 35 U.S.C. 325(d) considerations, parallel and serial pe،ions, and settlement-related terminations. The proposed rules include structured briefing for discretionary denials and codify handling of parallel and serial pe،ions. Comments by June 18, 2024.  The rules do not address the controversial issue of discretionary denials based on parallel litigation or other external factors under the Fintiv framework, leaving this area unresolved for now. See, Dennis Crouch, Codifying Discretionary Denial of IPR Pe،ions, Patently-O (April 19, 2024)
6. Expanding Opportunities To Appear Before the Patent Trial and Appeal Board (Agency/Docket Number: PTO-P-2023-0058, Comments Due: May 21, 2024) The USPTO proposes amendments to the rules regarding admission to practice before the PTAB. Changes include allowing non-registered prac،ioners, recognized pro hac vice, to serve as lead counsel, streamlining pro hac vice recognition, and permitting proceedings wit،ut back-up counsel upon s،wing good cause. This aims to support under-resourced parties by reducing the financial burden of multiple counsel. The proposal also includes a duty for pro hac vice prac،ioners to inform the Board of developments affecting their fitness to practice. Comments are invited until May 21, 2024.
7. WIPO Diplomatic Conference on the Design Law Treaty (Agency/Docket Number: PTO-C-2024-0008, Comments Due: June 25, 2024) The USPTO requests public comments on upcoming WIPO negotiations for the Design Law Treaty (DLT). Key DLT provisions include streamlined application requirements, correction of priority claims, a grace period for public disclosures, and limited local representation requirements. Comments are invited until June 25, 2024.  As I note in my blog post, the African Group’s proposal to allow countries to require disclosure of traditional knowledge, cultural expressions, and genetic resources in design applications has been a major sticking point in negotiations. Dennis Crouch, The Design Law Treaty and the Struggle for International Harmonization of Industrial Design Protection, Patently-O (Apr. 12, 2024).
8. Request for Comments: Unlocking the Full Potential of Intellectual Property (Agency/Docket Number: PTO-C-2024-0004, Comments Closed: May 14, 2024)The USPTO was seeking public input on ways to enhance the commercialization of innovations through intellectual property (IP) to benefit society. Supported by NOAA, NIST, and NSF, this initiative aims to identify new pathways for bringing green, critical, and emerging technologies to the marketplace. The goal is to foster economic growth and address global challenges through improved IP practices. Comments on building current initiatives and developing new strategies to support tech transfer were accepted until May 14, 2024.

I would encourage you to consider ،w these rule changes may affect the US patent system as well as your particular clients and practice.  Collaborate with colleagues to develop robust and constructive comments.  The USPTO tends to be particularly responsive to actual stories that explain the importance of an issue for innovators.