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US Patent and Trademark Office

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2024

2023

2022

AIPLA Comments on USPTO’s Diversion Program
November 10, 2022

Arlington, VA. November 7, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office of Enrollment and Discipline’s (OED) Diversion Pilot Program.
AIPLA Comments to USPTO on Subject Matter Guidance
October 21, 2022

Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office’s guidance on patent subject matter eligibility under Section 101 of the Patent Act.
AIPLA Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of PTAB Decisions
October 21, 2022

Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) offered its response to the United States Patent and Trademark Office (“USPTO”) regarding the USPTO’s Request for Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of Patent Trial and Appeal Board Decisions.
AIPLA Files Comments on Proposed Final Pretrial Conference Pilot and Order
August 26, 2022

Arlington, VA. August 26, 2022 - The American Intellectual Property Law Association (AIPLA) filed comments to the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) on the proposed pilot program for instituting a Final Pretrial Conference (PFC) requirement in certain TTAB opposition and cancellation proceedings.
AIPLA Files Brief In Support of Neither Party Regarding Order Setting Schedule for Director Review
August 4, 2022

Arlington, VA. August 4, 2022 - The American Intellectual Property Law Association (AIPLA) filed an amicus brief in the two PTAB cases of OpenSky Industries, LLC, Patent Quality Assurance, LLC, and Intel Corporation v. VLSI Technology LLC, which USPTO Director Vidal has taken up to address what actions the USPTO Director should take when faced with assertions of an abuse of process or conduct that otherwise thwarts, as opposed to advances, the goals of the Office and/or the AIA. AIPLA’s brief argues that the review procedures implemented in these proceedings are adequate to address the rare instances of alleged abuse of process or alleged conduct contrary to the goals of the Office and/or the AIA.
AIPLA Comments on the USPTO in Response to the Interim Process for Director Review
July 11, 2022

On July 11, the American Intellectual Property Law Association (AIPLA) offered its initial views to the United States Patent and Trademark Office (“USPTO”) in response to the Interim Process for PTAB Director Review. AIPLA appreciates the USPTO’s focus on improving fairness to all parties and achieving greater consistency and predictability in these proceedings.
AIPLA Comments on Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments
February 4, 2022

The American Intellectual Property Law Association ("AIPLA") is pleased to submit comments to the "Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments issued on December 6, 20211 ("draft policy statement" or "draft") by the U.S. Department of Justice, Antitrust Division ("DOJ"), the U.S. Patent & Trademark Office ("USPTO"), and the National Institute of Standards and Technology ("NIST") (together "the agencies").

2021

USPTO Indefinitely Delays Implementation of the Voluntary Continuing Legal Education (CLE) Certification
December 16, 2021

On December 16, 2021, The United States Patent and Trademark Office (USPTO) indefinitely delayed implementation of the voluntary continuing legal education (CLE) certification for registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters. The American Intellectual Property Law Association (AIPLA) assembled a joint committee task force to ensure that the proposed rules did not disproportionately impact patent agents and other practitioners for whom CLE self-certification would be a significant burden and/or legal risk, and to ensure that practitioners were made aware of requirements for the registration statement and the CLE self-certification.
AIPLA Submits Comments to USPTO Regarding Request for Information to Assist Preparation of Patent Eligibility Jurisprudence Study
October 15, 2021

On October 15, 2021, AIPLA submitted a comment letter to the United States Patent & Trademark Office (USPTO) following the Office’s request for information to assist in preparation of the Patent Eligibility Jurisprudence Study. In its comments, AIPLA addressed how the current state of patent eligibility jurisprudence in the U.S. affects patent protection in this country as compared to other jurisdictions (including instances of denial of patent protection in the U.S.), its impact on business strategies, the U.S. economy and the public as a whole. It was noted that, since 2012, Section 101 has been the most important issue facing AIPLA members and IP practitioners as they try to advise clients on how to best invest their limited resources. IP practitioners have been unable to advise clients with enough certainty about what inventions would be deemed patent eligible by patent examiners and later by the courts.
AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Changes to Implement Provisions of the Trademark Modernization Act of 2020
July 19, 2021

On July 19, 2021, AIPLA submitted comments to the United States Patent and Trademark Office (USPTO) regarding the Notice of Proposed Rulemaking (NPRM) Regarding Changes to Implement Provisions of the Trademark Modernization Act (TMA) of 2020. The comments addressed seven aspects of the NPRM: (1) ex parte expungement and reexamination proceedings; (2) the petition filing fee; (3) the identification of the real party in interest in a petition; (4) flexible response periods; (5) letters of protest; (6) attorney recognition; and (7) the proposed burden hours for private sector respondents.
AIPLA Submits Comments on Proposed Administrative Updates to the General Requirements Bulletin
May 24, 2021

On May 24, 2021, AIPLA submitted comments to the Director for the Office of Enrollment and Discipline at the U.S. Patent and Trademark Office (USPTO) regarding the proposed administrative updates to the General Requirements Bulletin (GRB). The comments made were in support of the proposal to add the common Category B categories to Category A to reflect current and anticipated patenting activity, and of the proposal to amend Category B, Options 2 and 4, to permit a combination of courses that need not be sequential. AIPLA also advised considering the addition of degrees matching emerging technical fields on a regular basis and supports the inclusion of master’s and doctoral degrees as acceptable under the requirements of Category A.
AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Disclaimer Practice in Patents and Patent Applications
March 22, 2021

On March 22, 2021, AIPLA submitted comments regarding the notice of proposed rulemaking regarding disclaimer practice in patents and patent applications. AIPLA supports the Office’s proposed revisions to the rules and includes a suggestion to clarify the rules regarding disclaimers by parties to a joint research agreement.
AIPLA Submits Comments to USPTO Regarding National Strategy for Expanding American Innovation
February 23, 2021

On February 23, 2021, AIPLA filed comments in response to the USPTO’s Notice regarding the National Strategy for Expanding American Innovation. AIPLA's comments include suggestions for the support of individuals, including the implementation of shared workspaces, hubs, and labs, workshops, internships, and promotion of meetings and clubs, among other ideas. Some of AIPLA's comments regarding lowering the barriers to innovation in underrepresented groups include adjusting internal culture and increasing representation in leadership. READ MORE
Comments Submitted by AIPLA to USPTO Pursuant to Sovereign Immunity Study
February 22, 2021

On February 22, 2021, AIPLA filed comments in response to the USPTO’s Sovereign Immunity Study: Notice and Request for Public Comment, 85 Fed. Reg. 70,589 (November 5, 2020) (Docket Number: PTO–T–2020–0043). With respect to patent and trademark infringement, AIPLA believes that the record of reported cases provides support for abrogation of state immunity. With respect to trademark infringement, however, there are critical differences between those cases and patent and copyright infringement actions. READ MORE
AIPLA Comments on Implementation of the Trademark Modernization Act
February 3, 2021

AIPLA provided feedback to the USPTO on the implementation of the Trademark Modernization Act (TMA). The feedback three aspects of the TMA: general comments, comments on flexible response times, and comments regarding ex parte expungement and ex parte reexamination proceedings. AIPLA continues to advocate for a shorter response period to Office Action refusals that include only ministerial or procedural objections. AIPLA also provided feedback on a number of subsections regarding ex parte expungement and ex parte reexamination proceedings.
AIPLA Submits Comments to USPTO Regarding the Article of Manufacture Requirement
February 2, 2021

On February 2, 2021, AIPLA filed comments in response to the USPTO’s Notice regarding the Article of Manufacture Requirement for Design Patents under 35 U.S.C. 171. AIPLA indicated its support for a change in the interpretation of eligibility guidelines for computer-generated images to accept other articles of manufacture associated with the underlying programmed computer, instead of requiring that the image appear on a display screen.
AIPLA Comments on the Request for Comments on Proposed Continuing Legal Education Guidelines
January 7, 2021

AIPLA filed a response to the USPTO’s request for comments on proposed continuing legal education guidelines objecting to ongoing efforts by the USPTO to institute a de facto federal CLE requirement and reporting system, noting that the biennial registration requirements and reporting systems are unnecessary and may lead to an active practitioner fee. AIPLA also expressed concern that the proposal would eventually result in a mandatory CLE program requiring a costly infrastructure which would ultimately result in fees increases to support it. AIPLA expressed further concern that the rulemaking efforts may not have complied with rulemaking requirements.

2020

AIPLA Comments on Discretion to Institute Trials Before the Patent Trial and Appeal Board
December 3, 2020

The American Intellectual Property Law Association today filed a response to the USPTO’s October 20, 2020 request for comments on discretion to institute trials in inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). The USPTO’s request solicits input on whether rulemaking is necessary and the type of rules it should adopt, but does not propose any rules.
AIPLA Comments on Revised Trademark Examination Guide 3-19 Examination of Specimens in Commerce: Digitally Created/Altered or Mockup Specimens
October 12, 2020

AIPLA appreciates the Trademark Office’s efforts to address the issue of fraudulent trademark specimens that incorporate digital alterations, thereby creating the false impression of use of a trademark in the marketplace. We also appreciate the Office’s transparency in providing clarity as to how the USPTO and Examiners will address fraudulent specimens. While AIPLA further recognizes the need for the USPTO to focus its attention on the authenticity of submitted specimens and whether they show marks as actually used in commerce as required by the Trademark Act, AIPLA has suggestions and comments on the revised Examination Guide.
AIPLA Comments on Proposed Rule Changes in Representation of Others Before the USPTO
September 29, 2020

AIPLA appreciates the USPTO’s willingness to continuously improve the conduct rules applicable to practice before the USPTO. AIPLA previously provided substantive comments to the last major revision of the USPTO Rules of Professional Conduct (“USPTO Rules”), which overhauled the landscape of practice before the USPTO from being based upon the former American Bar Association (“ABA”) Code of Professional Responsibility to the more current Model Rules of Professional Conduct. Within those comments, AIPLA addressed concerns regarding the confidentiality rules. In response to comments, USPTO clarified the ability of a representative to withdraw in certain situations. See, e.g., 78 FR 21090.
AIPLA Comments on Proposed Rulemaking for the Proposed Trademark Fee Schedule
July 31, 2020

AIPLA appreciates the Trademark Office’s efforts to take into consideration the comments previously submitted by AIPLA and other stakeholders regarding new trademark fees. AIPLA understands the needs of the Office to generate additional revenue from its users in order to facilitate effective operations. For this reason, our comments are limited to a small number of proposed fees.
AIPLA Comments to USPTO on the Proposed PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence
June 26, 2020

AIPLA supports the proposed rulemaking that is the subject of this comment, including updating the rules to comply with the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), expressly providing for filing of sur-reply briefs, and removing the presumption favoring petitioners on contested facts based on pre-institution testimonial evidence from the patent owner under 37 C.F.R. §§ 42.108(c) and 42.208(c).
AIPLA Comments to USPTO on the “Small Entity Government Use License Exception”
March 24, 2020

AIPLA agrees that the proposed 37 CFR §1.27(a)(4)(i)(B) will provide clarity regarding the exception for a government use license under 15 U.S.C. § 3710d(a) that a Federal employee is obligated to grant if he/she is allowed to retain title to the workplace invention.
AIPLA Comments to USPTO Regarding the Updated Examination Guide for Mandatory Electronic Filing of Trademark Applications
February 26, 2020

AIPLA believes that the revised guidance regarding the submission of an acceptable email address for a trademark owner who is represented by counsel is subject to various interpretations, leading to significant uncertainty for our members.
AIPLA Comments to USPTO on Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation
January 13, 2020

AIPLA submitted these comments in response to the Department of Commerce’s Request regarding issues related to copyright, trademark, and other intellectual property rights impacted by artificial intelligence innovation.

2019

AIPLA Comments to USPTO on Rules of Practice To Allocate the Burden of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board
December 23, 2019

AIPLA appreciates the Office’s efforts to improve AIA trial proceedings, which have become pervasive since their initial implementation in September 2012.
AIPLA Submits Amicus Brief to PTAB in Hunting Titan, Inc. v. Dynaenergetics & Co. Kg
December 20, 2019

The Patent Trial and Appeal Board should make any determination of unpatentability based on the arguments and evidence of record.
AIPLA Comments to USPTO on Patent Term Adjustment Reductions in View of the Federal Circuit Decision in Supernus Pharm., Inc. v. Iancu
December 3, 2019

AIPLA agrees that that many of the Office’s proposed revisions to 37 CFR §§ 1.704(c)(1) through (c)(14) are consistent with the requirement set forth in the Supernus decision that a reduction in patent term adjustment correspond to “the period from the beginning to the end of the applicant’s failure to engage in reasonable efforts to conclude prosecution.”
AIPLA Comments to TTAB Regarding Issuance of Precedential Decisions by the Trademark Trial and Appeal Board
November 20, 2019

AIPLA believes that an increased number of precedential TTAB decisions would be helpful to trademark owners, trademark practitioners, educators, and students.
AIPLA Comments to USPTO on Patenting Artificial Intelligence Inventions
November 8, 2019

AIPLA proposes adopting the distinguishing terms “inventive AI” and “AI inventions.”
AIPLA Comments to USPTO on Annual Patent Practitioner Fee Proposal
November 8, 2019

AIPLA believes the proposal for an annual patent practitioner fee, if implemented, would fundamentally change the relationship between the Office, the practitioners and the applicants.
AIPLA Comments to TPAC on Proposed Trademark Fees
September 30, 2019

AIPLA thanks the Trademark Public Advisory Committee (“TPAC”) for conducting the hearing on the Proposed Trademark Fee Schedule on September 23, 2019, and for this opportunity to express our views on the proposal.
AIPLA Comments on USPTO Setting and Adjusting Patent Fees
September 30, 2019

AIPLA comments on seven aspects of the proposed fee schedule: general comments on the proposed fees; comments on the surcharge for not filing patent applications in docx format, comments on the surcharge for late payment of maintenance fees within 6 months, comments on the patent trial and appeal fees, comments on the annual practitioner fee, and comments on the CLE discount for this fee.
Proposal to Eliminate the Restriction on Additional Extensions of Time Following the Filing of a Statement of Use After the Notice of Allowance Has Issued
July 15, 2019

INTA, AIPLA, and IPO urge the United States Patent & Trademark Office to revise the Rules of Practice and the Trademark Manual of Examining Procedure (37 C.F.R. §§ 2.88(f) and 2.89(e)(1)).
AIPLA Comments on the Report Required by the Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act of 2018
July 1, 2019
Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, amicus brief filed 5/1/2019.
May 7, 2019

This Amicus Brief addresses the question of what is required for a petitioner to establish that an asserted non-patent reference qualifies as a “printed publication” at the institution stage.
Comments of the AIPLA to the current Standard Protective Order
March 29, 2019

The American Intellectual Property Law Association (AIPLA) is pleased to have this opportunity to provide comments on the current version of the USPTO’s Standard Protective Order for use in Trademark Trial and Appeals Board (TTAB) opposition and cancellation proceedings. In particular, this is to respond to the questions posed by the Board regarding access by in-house counsel to “Confidential – For Attorneys' Eyes Only” (AEO) material.
Letter to USPTO on TTAB Standard Protective Order
March 29, 2019

AIPLA believes that whether it is appropriate for in-house counsel to have access to AEO information and documents should be a case-by-case determination, considering a variety of factors, including whether that counsel is in a competitive decision-making position, whether the parties are competitors, whether both parties have in-house counsel, the preference of individual clients, and the issues that may be relevant to the particular matter.
AIPLA Comments on Proposed Rulemaking for Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants
March 18, 2019

AIPLA believes that the USPTO's proposed rule requiring the appointment of U.S. counsel to guide non-U.S. applicants, registrants, and parties in trademark matters is a useful and necessary first step in minimizing problematic filings, but is concerned that it will not fully address the issue.
Comments on 2019 Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. § 112
March 8, 2019

AIPLA applauds the Office for again providing practitioners and examiners with instructions on how to analyze patent claims including functional limitations under 35 U.S.C. §§ 112(f) and 112(b) and how to analyze claims for compliance with the enablement and written-description requirements under 35 U.S.C. §112(a).
Comments on 2019 Revised Patent Subject Matter Eligibility Guidance
March 8, 2019

AIPLA applauds the Office for providing a valuable guide for determining patent eligibility and is grateful to the Office for providing what AIPLA believes is a better framework for analyzing subject matter eligibility than was provided by the multiple previous guidance documents.
Comments on Access to Relevant Prior Art Initiative
March 8, 2019

AIPLA applauds the Office for working to reduce the burden on applicants filing a continuation application by automatically importing citations from the immediate parent application into continuing application and for creating a mechanism to document references filed in a parent application which have received consideration by the Examiner in the continuing application.
Proppant Express Investments, LLC v. Oren Technologies, LLC., PTAB, Case No. IPR2018-00914, amicus brief filed 12/28/2018.
January 8, 2019

AIPLA on December 28, 2018, argued in an amicus brief to the Precedential Opinion Panel of the Patent Trial and Appeal Board that the circumstances in which the Director may grant a motion for self-joinder should be the exception, not the rule.

2018

AIPLA Comments to United States Patent and Trademark Office on Motion to Amend Practice and Procedures in Trial Proceedings under the America Invents Act before the Patent Trial and Appeal Board
December 20, 2018

AIPLA appreciates the Office’s efforts to improve AIA trial proceedings, which have become pervasive since their initial implementation in September 2012. On several prior occasions, AIPLA has expressed its concerns with the existing motions to amend practice and procedure, and especially appreciates the Office’s attempt to improve this practice and make motions to amend, as contemplated by the statute, a more viable option as part of a trial proceeding.
AIPLA Comments on United States Patent and Trademark Office Draft Strategic Plan for FY 2018-2022
October 5, 2018

As we emphasized in our comments submitted during the preparation of the 2014-2018 USPTO Strategic Plan, AIPLA believes the most important factor for the success of the USPTO in furthering the patent system is full funding of the USPTO.
AIPLA Comments to the Patent Public Advisory Committee Public Hearing in the Proposed Patent Fee Schedule
September 11, 2018

AIPLA has, in the past, expressed the view that fees, in the aggregate, should recover 100% of the costs of the USPTO, and that the relationship between “front-end” (filing, search, examination etc.) and “back-end” (maintenance, renewal, etc.) fees should be maintained.
AIPLA Comments on Determining Whether a Claim Element is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility ("Berkheimer Memorandum")
August 13, 2018

AIPLA applauds the Office for publishing the Memorandum to promote uniform application of the guidance provided by the Federal Circuit in Berkheimer v. HP Inc. While we find the Memorandum to be helpful, we have a few suggestions on how it might be improved.
AIPLA Comments on Changes to the Trademark Rules of Practice to Mandate Electronic Filing
July 25, 2018

AIPLA supports the Trademark Office’s efforts to streamline and increase the end-to-end electronic trademark filing program via the electronic filing mandate. AIPLA recognizes the benefits and efficiencies that electronic filing provides, not the least of which is faster prosecution time for pending trademark applications.
AIPLA Comments on the Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board
July 9, 2018

As indicated in the Notice, the Office has proposed to change the claim construction standard for AIA trials from the broadest reasonable interpretation (“BRI”) standard to the Phillips standard. Phillips v. AWH Corp.,415 F.3d 1303 (Fed. Cir. 2005) (en banc).
AIPLA Comments on the Draft Convention on the Recognition and Enforcement of Foreign Judgments Relating to Civil or Commercial Matters
March 19, 2018

Consistent with that defined mission, AIPLA strongly encourages the U.S. to advocate for the exclusion of intellectual property from the scope of the Draft Convention.
AIPLA Comments Regarding the TTAB Standard Protective Order
January 2, 2018

The American Intellectual Property Law Association (AIPLA) is pleased to have this opportunity to provide comments on the current version of the USPTO’s Standard Protective Order for use in TTAB opposition and cancellation proceedings.
AIPLA Comments to the Current TTAB Standard Protective Order
January 2, 2018

The American Intellectual Property Law Association (AIPLA) is pleased to have this opportunity to provide comments on the current version of the USPTO’s Standard Protective Order for use in TTAB opposition and cancellation proceedings.

2017 and Earlier

2017

AIPLA Comments to Improving the Accuracy of the Trademark Register: Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and Nonuse, August 1, 2017 (PDF)
AIPLA Statement on Fraudulent and Misleading Solicitations to Trademark Owners, USPTO Public Roundtable on Fraudulent and Misleading Solicitations, July 26, 2017 (PDF)
AIPLA and PhRMA Comments on Draft Convention on the Recognition and Enforcement of Foreign Judgments Relating to Civil or Commercial Matters Currently Being Negotiated at The Hague Conference on Private International Law, July 19, 2017 (PDF)
AIPLA Comments on PTAB Procedural Reform Initiative, July 14, 2017 (PDF)
AIPLA Recommendations to the Patent Public Advisory Committee (PPAC), July 6, 2017 (PDF)
AIPLA Comment for Consideration by the Working Group on Regulatory Reforms in Relation to Executive Order 13771 (“Presidential Executive Order on Reducing and Controlling Regulatory Costs”) and Executive Order 13777 (“Presidential Executive Order on Enforcing the Regulatory Reform Agenda”), June 23, 2017 (PDF)
AIPLA Comments on Examination Guide Entitled “Incapable Informational Matter”, March 15, 2017 (PDF)
AIPLA Comments Regarding the Continuation of the Accelerated Examination Program, March 13, 2017 (PDF)
AIPLA Comments of the AIPLA on Examination Time Goals, January 26, 2017 (PDF)
AIPLA Comments on Patent Eligibility after Section 101 Roundtables, January 18, 2017 (PDF)
AIPLA Comments on a Preliminary Draft Convention on the Recognition and Enforcement of Foreign Judgments Currently Being Negotiated at The Hague Conference on Private International Law, January 18, 2017 (PDF)

2016

AIPLA Comments on Revival and Reinstatement of Abandoned/Cancelled/Expired Trademarks, Dec 23, 2016 (PDF)
AIPLA Comments on Duty of Disclosure, Dec 22, 2016 (PDF)
AIPLA Comments on Proposed ST.26 Standard for Sequence Listings, Dec 21, 2016 (PDF)
AIPLA Comments on Proposed Rule Recognizing Privileged Communications between Clients and Patent Practitioners at the Patent Trial and Appeal Board, Dec 19, 2016 (PDF )
AIPLA Comments on USPTO Patent Fee Proposal FY2017, Dec 2, 2016 (PDF)
AIPLA Comments on Post-Prosecution Pilot Program (P3), Nov 8 2016 (PDF)
AIPLA Comments on Leveraging Electronic Resources to Retrieve Information from Applicant's Other Applications and Streamline Patent Issuance, Nov 8 2016 (PDF)
AIPLA Comments on Continuation of Random Audit Pilot Program, August 17, 2016 (PDF)
AIPLA Comments to USPTO on TM Fees Proposal, July 11, 2016 (PDF)
AIPLA Comments on Written Description Requirements in Design Applications, June 14, 2016 (PDF
AIPLA Comments on Proposed Amendments to TTAB rules, June 3, 2016 (PDF)
AIPLA Patent Quality Metrics Comments, May 24, 2016 (PDF)
AIPLA Response to Submission of Topics for USPTO Quality Case Studies (Consolidated), February 12, 2016 (PDF)

2015

AIPLA Comments to the Department of Commerce and USPTO on the Shared Services Initiative, December 14, 2015 (PDF)
AIPLA Comments on Proposed Patent Fee Schedule Considered at the Public Hearing by the Patent Public Advisory Committee, November 25, 2015 (PDF)
AIPLA Comments on Proposed Trademark Fee Schedule Considered at Public Hearing by the Trademark Public Advisory Committee, November 10, 2015 (PDF)
AIPLA Comments in Response to the Request for Comments on the "July 2015 Update on Subject Matter Eligibility," October 28, 2015 (PDF)
AIPLA Comments in Response to Proposed “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board," October 21, 2015 (PDF)
AIPLA Comments in Response to "Request for Comments on Enhancing Patent Quality," May 20, 2015 (PDF)
AIPLA Comments in Response to the USPTO "Request for Comments on 2014 Interim Guidance on Patent Subject Matter Eligibility," March 16, 2015 (PDF)
AIPLA Comments on USPTO Draft Examination Guide on "Repeating-Pattern Marks," March 16, 2015 (PDF)
AIPLA Comments in Response to the USPTO "Notice of Roundtable and Request for Comments on Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients,"March 6, 2015 (PDF)
AIPLA Recommendation Regarding Consideration by the PCT Receiving Office of the USPTO of Requests for Restoration of Priority Based Upon the “Due Care” Standard, February 24, 2015 (PDF)
AIPLA Recommendation Regarding Deference to Favorable Findings of the International Searching Authority of the USPTO During Examination of a U.S. National Phase from a PCT Application, January 13, 2015 (PDF)

2014

AIPLA Comments in Response to the USPTO Announcement, “Trademark: Next Generation Acceptable Identification of Goods and Services Manual,” December 16, 2014 (PDF)
AIPLA Comments in Response to the USPTO Announcement, “Request for Comments on Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution,” October 30, 2014 (PDF)
AIPLA Response to the "Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board," October 16, 2014 (PDF)
AIPLA Response to "Request for Comments on Optimum First Action and Total Pendency," September 8, 2014 (PDF)
AIPLA Response to the Notice of Proposed Rulemaking Entitled, "Changes to Facilitate Applicant's Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices," September 8, 2014 (PDF)
AIPLA Response to the Notice of Proposed Rulemaking Entitled, "Changes to Patent Term Adjustment in View of the Federal Circuit Decision in Novartis v. Lee," August 13, 2014 (PDF)
AIPLA Response to "Request for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent Eligible Subject Matter (re: Alice), July 31, 2014 (PDF)
AIPLA Comments on "Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, and Natural Products," (re: Myriad), July 31, 2014 (PDF)
AIPLA Response to "Request for Comments on Virtual Marking," July 16, 2014 (PDF)
AIPLA Comments in Response to the USPTO Announcement, "Share Comments/Suggestions on Draft Examination Guide: Service Mark Specimens," July 16, 2014 (PDF)
AIPLA Comments on the Notice of Proposed Rulemaking, "Reduction of Fees for Trademark Applications and Renewals," June 23, 2014 (PDF)
AIPLA Response to "Request for Comments on the Use of Crowdsourcing and Third-Party Preissuance Submissions To Identify Relevant Prior Art," April 25, 2014 (PDF)
AIPLA Response to the Notice of Proposed Rulemaking (Extension of Comment Period): "Changes to Require Identification of Attributable Owner," April 24, 2014 (PDF)
AIPLA Response to "Request for Comments and Notice of Roundtable Event on the Written Description Requirement for Design Applications," March 14, 2014 (PDF)
AIPLA Comments on "Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs," January 31, 2014 (PDF)
AIPLA Response to "Request for Comments on Methods for Studying the Diversity of Patent Applicants," January 31, 2014 (PDF)

2013

AIPLA Response to "Request for Comments: Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution," December 2, 2013 (PDF)
AIPLA Comments on USPTO Draft Strategic Plan for Fiscal Years 2014-2018, November 27, 2013 (PDF)
AIPLA Comments in Response to the USPTO Announcement, "Share Comments/Suggestions on Draft of Examination Guide: Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services," September 6, 2013 (PDF)
AIPLA Comments on "Changes To Implement the Patent Law Treaty," June 10, 2013 (PDF)
AIPLA Recommendation Regarding Automatic Applicant Authorization for USPTO To Transmit Pre-Publication Search Results to Foreign Patent Offices, May 22, 2013 (PDF)
AIPLA Comments to OMB Regarding Negative Impact of Sequestration on USPTO Funding and Operations, May 21, 2013 (PDF)
AIPLA Recommendations for Reducing Paperwork, Time, and Cost for the Office and Applicants With Respect to Sequence Listings, May 20, 2013 (PDF)
AIPLA Response to "Request for Comments on a Patent Small Claims Proceeding in the United States," April 30, 2013 (PDF)
AIPLA Response to "Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents," April 12, 2013 (PDF)
AIPLA Comments on Preparation of Patent Applications, March 15, 2013 (PDF)
AIPLA Comments on Matters Related to the Harmonization of Substantive Patent Law, February 28, 2013 (PDF)
AIPLA Written Comments in Relation to Leahy-Smith America Invents Act Section 27 Genetic Testing Study and Public Roundtable, February 8, 2013 (PDF)
AIPLA Comments on "Request for Continued Examination (RCE) Practice," February 4, 2013 (PDF)
AIPLA Comments on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term, January 25, 2013 (PDF)

2012

AIPLA Comments on Notice of Proposed Rulemaking, "Changes to Representation of Others Before the United States Patent and Trademark Office," December 17, 2012 (PDF)
AIPLA Comments on Notice of Proposed Rulemaking, "Setting and Adjusting Patent Fees," November 5, 2012 (PDF)
AIPLA Comments on Proposal To Amend the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse, November 5, 2012 (PDF)
AIPLA Comments on Adjustment of Fees for Trademark Applications, October 22, 2012 (PDF)
AIPLA Comments on "Changes To Implement the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act" and "Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act," October 5, 2012 (PDF)
Joint Letter to NTIA and USPTO from U.S. Brand Owners Regarding Second-Level Rights Protection Mechanisms in ICANN's New gTLD Program, August 29, 2012 (PDF)
AIPLA Comments to the USPTO on the US/UK Proposal to WIPO on "PCT 20/20," August 17, 2012 (PDF)
AIPLA Comments on "Extension of the Full First Action Interview Pilot Program," August 8, 2012 (PDF)
AIPLA Comments on "Changes to Implement Micro Entity Status for Paying Patent Fees," July 30, 2012 (PDF)
AIPLA Comments on the "Recommendation for the Disclosure of Sequence Listings Using XML," July 16, 2012 (PDF)
AIPLA Comments on "Feasibility of Placing Economically Significant Patents Under a Secrecy Order and the Need To Review Criteria Used in Determining Secrecy Orders Related to National Security," June 18, 2012 (PDF)
AIPLA Comments on "CPI Adjustment of Patent Fees for Fiscal Year 2013," June 6, 2012 (PDF)
AIPLA Comments on "Changes To Implement Inter Partes Review Proceedings," April 10, 2012 (PDF)
AIPLA Comments on "Changes To Implement Post-Grant Review Proceedings," April 10, 2012 (PDF)
AIPLA Submission on USPTO Proposed AIA Rulemaking (AIPLA, IPO, ABA-IPL), April 9, 2012 (PDF)
AIPLA Comments on "Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions," April 9, 2012 (PDF)
AIPLA Comments on the "Practice Guide for Proposed Trial Rules," April 6, 2012 (PDF)
AIPLA Comments on "Changes To Implement Transitional Program for Covered Business Method Patents, April 5, 2012 (PDF)
AIPLA Comments on "Changes To Implement Derivation Proceedings," April 5, 2012 (PDF)
AIPLA Supplemental Comments on Leahy-Smith America Invents Act Section 27, Genetic Diagnostic Testing Study, April 5, 2012 (PDF)
AIPLA Comments on Transitional Program for Covered Business Method Patents--Definition of "Technological Invention," April 2, 2012 (PDF)
AIPLA Comments on First-Inventor-to-File (Before Proposed Rules), March 28, 2012 (PDF)
AIPLA Comments on Leahy-Smith America Invents Act Section 27, Genetic Diagnostic Testing Study, March 26, 2012 (PDF)
AIPLA Comments on "Changes To Implement Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees, March 26, 2012 (PDF)
AIPLA Comments on "Changes to Implement Miscellaneous Post-Patent Provisions of the Leahy-Smith America Invents Act," March 5, 2012 (PDF)
AIPLA Comments on "Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings," March 5, 2012 (PDF)
AIPLA Comments on "Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act," March 5, 2012 (PDF)
AIPLA Comments on "Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act," March 5, 2012 (PDF)
AIPLA Comments to the Patent Public Advisory Committee (PPAC) on the "Proposed Patent Fee Schedule," February 29, 2012 (PDF)
AIPLA Comments on "Additional USPTO Satellite Offices for the Nationwide Workforce Program," January 30, 2012 (PDF)
AIPLA Comments on "Eliciting More Complete Patent Assignment Information," January 23, 2012 (PDF)

2011

AIPLA Comments on Leahy-Smith America Invents Act Implementation - Group 2 Rulemakings, November 18, 2011 (PDF)
AIPLA Comments on the "Study of Prior User Rights," November 8, 2011 (PDF)
AIPLA Comments on the "Study of International Patent Protection for Small Businesses," November 8, 2011 (PDF)
AIPLA Comments on Trademark Trilateral Cooperation, October 31, 2011 (PDF)
AIPLA Comments on "Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases," September 22, 2011 (PDF)
AIPLA Comments on "Revision of the Materiality to Patentability Standard for the Duty to Disclose Information in Patent Applications," September 19, 2011 (PDF)
AIPLA Comments Recommending New Metrics for Judging Timeliness of Interference Decisions, July 22, 2011 (PDF)
AIPLA Comments on "Streamlined Patent Reexamination Proceedings," July 15, 2011 (PDF)
AIPLA Response to Notice of Inquiry Regarding "Trademark Trial and Appeal Board Participation in Settlement Discussions," June 21, 2011 (PDF)
AIPLA Comments on "Improving Regulation and Regulatory Review," April 21, 2011 (PDF)
AIPLA Comments on "Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications," April 11, 2011, (PDF)
AIPLA Resolution Concerning USPTO Solicitor's Amicus Participation in Court Review of USPTO Board Decisions in Interferences, March 23, 2011 (PDF)
Response to USPTO regarding Request for Comments on Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, March 7, 2011 (PDF)
AIPLA Response to USPTO on Request for Comments regarding “Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex”, 11 February, 2011 (PDF)
AIPLA Response to USPTO on Request for Comments regarding “Proposed Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals”, January 14, 2011 (PDF)
AIPLA Comments to USPTO on the Bose Roundtable Suggestions to Improve the Accuracy of Identifications of Goods and Services in Trademark Applications and Registrations at the USPTO, January 12, 2011 (PDF)
AIPLA Response to USPTO “Request for Comments on Trademark Litigation Tactics”, January 7, 2011 (PDF)

2010

AIPLA Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System, November 19, 2010 (PDF)
AIPLA Comments on the TTAB’s Accelerated Case Resolution "Plug and Play" Proposal, September 29, 2010. (PDF)
AIPLA Comments on the Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, September 27, 2010 (PDF)
AIPLA Comments on the “Enhanced Examination Timing Control Initiative” (75 Fed. Reg. 31763 (June 4, 2010)), August 20, 2010. (PDF)
AIPLA Comments on Proposed Changes to Restriction Practice in Patent Applications Requesting, August 13, 2010. (PDF)
AIPLA Comments to the Patent and Trademark Office Draft Strategic Plan for FY 2010–2015, August 2, 2010. (PDF)
AIPLA Comments to Honorable Gary Locke re resources available to the U.S. Patent and Trademark Office, July 14, 2010. (PDF)
AIPLA Letter on Enhancement in the Quality of Patents and Metrics, June 23, 2010. (PDF)
AIPLA Comments to the Patent and Trademark Office Fee Modernization Act of 2010, May 17, 2010. (PDF)
AIPLA Comments on “Trademarks Next Generation” Information Technology Initiative, April 15, 2010 (PDF)
AIPLA Comments on Enhancement in the Quality of Patents; 74 Federal Register 65093 (December 9, 2009), April 5, 2010 (PDF)
AIPLA Comments on Pilot Program for Green Technologies Including Greenhouse Gas Reduction,” 74 Federal Register 64666 (December 8, 2009), April 2, 2010 (PDF).
AIPLA Comments on revisions to proposed rules on practice before the Board of Patent Appeals and Interferences in ex parte patent appeals, 74 Fed. Reg. 67987 (Dec. 22, 2010), February 25, 2010 (PDF);
AIPLA comments on discussion of proposed rules at January 20, 2010 Roundtable, February 25, 2010 (PDF).
AIPLA Comments in response to the Notice of the U.S. Patent and Trademark Office (PTO) regarding Procedures for Treating Rejected Claims That Are Not Being Appealed, January 13, 2010. (PDF)
AIPLA Comments on Improvement of the USPTO’s efficiency, operation and utilization of the PCT, January 8, 2010. (PDF)

2009

AIPLA Comments on USPTO’s Work Sharing for Patent Applications, filed December 11, 2009. (PDF)
AIPLA Encourages the Administration to move forward in implementing Resolution of Advice and Consent to the ratification of the Patent Law Treaty as well as to ratification of the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs, filed July 22, 2009. (PDF)
AIPLA Comments on Deferred Examination for Patent Applications, filed February 26, 2009. (PDF)

2008

AIPLA Comments on Proposed Changes to Practice for Documents Submitted to the United States Patent and Trademark Office, filed October 6, 2008 (PDF)
AIPLA Comments on Proposed Changes to the PCT Transmittal and Search Fees, filed August 15, 2008 (PDF)
AIPLA Comments on design patents as invited by the USPTO at the Town Hall Meeting on the Protection of Industrial Designs which it hosted on June 16 in Alexandria, Virginia, filed July 15, 2008 (PDF)
AIPLA Comments on encouraging enhancement of the quality of international searches and examinations and their greater use in national stage processing, filed May 23, 2008 (PDF)
AIPLA Comments on Proposed Rules Concerning the Changes in Rules Regarding Filing Trademark Correspondence by Express Mail, filed April 29, 2008 (PDF)
AIPLA Comments on Proposed Rules Concerning the Time for Filing and the Date of Availability of a Biological Deposit, filed April 21, 2008 (PDF)

2007

AIPLA Comments on the proposed revision of the rules of practice pertaining to claims using alternative language, filed October 15, 2007 (PDF)
AIPLA Comments on the proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences in ex parte patent appeals, 72 Federal Register 41472 (July 30, 2007), filed September 28, 2007 (PDF)
AIPLA Comments on “International Efforts to Harmonize Substantive Requirements of Patent Laws,” 72 Federal Register 24566 (May 3, 2007), filed June 22, 2007 (PDF)
AIPLA Comments on the Supplemental Notice of Proposed Rule Making on “Changes to Representation of Others Before the USPTO," filed May 26, 2007 (PDF)
AIPLA Comments on Proposed Rule Changes in the: “Requirements for Filing Requests for Reconsideration of Final Office Actions in Trademark Cases", filed April 16, 2007 (PDF)
AIPLA Comments on the Final Rule re Changes to Implement Priority Document Exchange Between Intellectual Property Offices, March 21, 2007 (PDF)
AIPLA Comments on the Proposed Rule Making entitled “April 2007 Revision of Patent Cooperation Treaty Procedures” filed March 16, 2007 (PDF)
AIPLA Comments on Proposed Rule: “Changes to Request for Reconsideration After Final Action” 72 Federal Register 6984, filed February 14, 2007 (PDF)
AIPLA Comments of AIPLA on the Government Working Group Report on the concept of a Global Patent Application, filed January 31, 2007 (PDF)
AIPLA Comments to the Patent Public Advisory Committee of the United States Patent and Trademark Office in response to a solicitation for input from stakeholders [REQUEST] on steps the USPTO can take to enhance the quality of examination, reduce pendency, and improve the efficient and effective use of patents, filed January 29, 2007 [RESPONSE]

2006

AIPLA Comments on USPTO 2007-12 Strategic Plan, filed October 6, 2006 (PDF)
AIPLA Comments on Changes to Information Disclosure Statement Requirements, filed September 6, 2006 (PDF)
AIPLA Comments on the proposed rules on the “Removal of Paper Search Collection of Marks That Include Design Elements," filed August 22, 2006 (PDF)
AIPLA Comments on the Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, filed July 28, 2006 (PDF)
AIPLA Comments on the proposed rules: "Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination - 71 Fed. Reg. 16072 (March 30, 2006), filed May 30, 2006 (PDF)
AIPLA Comments on the proposed notice to eliminate the Disclosure Document Program —71 Fed. Reg. 17399 (April 6, 2006), filed May 3, 2006 with The Honorable Jon Dudas (PDF)
AIPLA Comments on Proposed Rules: Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims” 71 Fed. Reg. 48 (January 3, 2006), filed April 24, 2006 with The Honorable Jon Dudas (PDF)
AIPLA Comments on Proposed Rules: “Changes to Practice for the Examination of Claims in Patent Applications” 71 Fed. Reg. 61 (January 3, 2006), filed April 24, 2006 with The Honorable Jon Dudas (PDF)
AIPLA Comments on Proposed Changes to TTAB Rules, filed March 16, 2006, with The Honorable Jon Dudas (HTML, PDF)
AIPLA Comments on Electronic Filing of International Patent Applications, filed January 2, 2006, with The Honorable Jon Dudas (PDF)

2005

AIPLA Comments on: Choice of International Searching Authorities, filed November 25, 2005 (HTML- Not available)
AIPLA Comments on the PTO's advance notice of proposed rule making regarding the acceptance, processing, use and dissemination of chemical and three-dimensional biological structural data in electronic format, August 22, 2005 (PDF)
AIPLA Comments on the proposed changes to implement the patent search fee refund provisions of the 2005 Consolidated Appropriations Act, August 22, 2005 (PDF)
Resolution: Harmonization of Patent Systems, May 2005 (PDF – 67K*)
AIPLA Comments to the Notice of Proposed Rule Making: “Requirements to Receive a Reduced Fee for Filing an Application through the “Trademark Electronic Application System” 70 Federal Register 17636 (April 7, 2005) (PDF - 30K*)
AIPLA Comments the Interim Rule on the Revision of Search and Examination Fees for Patent Cooperation Treaty Applications, submitted April 1, 2005 (PDF - 40K*)
AIPLA Comments on Proposed Rule: “Changes to the Practice for Handling Patent Applications Filed Without the Appropriate Fees," submitted March 29, 2005 (PDF - 23K*)
AIPLA Comments to the USPTO on the Interim Rule to Implement the Cooperative Research and Technology Enhancement Act of 2004, submitted February 10, 2005 ( PDF - 45K*)

2004 and earlier (links coming soon!)

Industry Trilateral comments on Proposed PCT Filing Fee Increase, September 22, 2004 (PDF – 287K*)
AIPLA Comments to Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office regarding the PCT Fee increases, submitted September 13, 2004. (HTML or PDF)
AIPLA Comments on the revisions to the enrollment and discipline rules proposed December 12, 2003 (68 Fed. Reg. 69442), subject to the notices extending the comment period (69 Fed. Reg. 4269 (January 29, 2004) and 69 Fed. Reg. 9986 (March 3, 2004)). The comments and suggestions below address the proposed definitions of Subpart A, Subpart D, and the proposed rules in general as they relate to Subpart D. (Comments submitted on June 6, 2004) PDF only (208K)
Resolution for a Path Forward in WIPO Harmonization Talks from the Industry Trilateral, February 2004 (PDF – 229K*)
AIPLA Comments on the Equities of Inter Partes Reexamination Proceedings in Response to the Notice and Invitation Published at 68 Fed. Reg. 75217 (December 30, 2003) (Comments submitted on February 20, 2004). HTML or PDF (48K)
AIPLA Comments on the Notice of Proposed Rulemaking Changes to Representation of Others Before the Patent and Trademark Office 68 Federal Register 69442 (December 12, 2003) (Comments submitted on February 7, 2004). (PDF)
AIPLA Comments on the proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences, 68 Federal Register 66648 (November 26, 2003) (Comments submitted on January 26, 2004). PDF (121K)
AIPLA Comments on Notice of Office Plan to Cease Supplying Copies of Cited U.S. Patent References With Office Actions, and Pilot to Evaluate the Alternative of Providing Electronic Access to Such U.S. Patent References (Comments submitted on January 15, 2004). HTML or PDF (48K)
AIPLA Comments on Notice of Proposed Rulemaking Revision of Patent Term Extension and Patent Term Adjustment Provisions Related to Decisions by the Board of Patent Appeals and Interferences 68 Fed. Reg. 67818 (Comments submitted on January 2, 2004) PDF (51K)
AIPLA Comments on Notice of Proposed Rulemaking Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan 68 Fed. Reg. 53816, September 12, 2003, (Comments submitted on November 12, 2003). (PDF)
AIPLA Comments on the Proposed Rulemaking Clarification of Power of Attorney Practice and Revisions to Assignment Rules—68 Fed. Reg. 38258; June 27, 2003, (Comments submitted August 25, 2003). PDF
AIPLA Comments on the Notice of Proposed Rulemaking—January 2004 Revision of Patent Cooperation Treaty Application Procedure—68 Fed. Reg. 32441; May 30, 2003, (Comments submitted, June 26, 2003) HTML or PDF (42K)
AIPLA Response to the USPTO’s Notice of Proposed Rulemaking for Trademark—Related Filings Under the Madrid Protocol Implementation Act, 68 Fed. Reg. 15119 (March 28, 2003) (Comments submitted, May 26, 2003) PDF (76K)
AIPLA Comments on the Notice of Proposed Rulemaking Changes to Implement the 2002 Inter Partes Reexamination and Other Technical Amendments to the Patent Statute 68 Fed. Reg. 22343 (April 28, 2003), Comments submitted, June 26, 2003. PDF (38K)
Highlights of the New USPTO Fee Bill. PDF (44K)
On February 5th, the USPTO released a revised fee bill to support its Strategic Plan. The revised fee bill can be found at the following link:
http://www.uspto.gov/web/offices/com/strat21/feebill.htm
Highlights of Changes to the USPTO's 21st Century Strategic Plan PDF (11K)
On February 3rd, the USPTO released a revised 21st Century Strategic Plan, which can be viewed at the following link (295K):
http://www.uspto.gov/web/offices/com/strat21/stratplan_03feb2003.pdf
AIPLA Comments on the Notice of Proposed Rulemaking, Changes to Implement Electronic Maintenance of
Official Patent Application Records (68 Fed. Reg. 14365 (March 25, 2003)), April 24, 2003
HTML or (PDF-60K*)
AIPLA Comments on "Recording Assignments," December 18, 2001 (29K*).
AIPLA Comments on the USPTO's Notice of Request for Comments on Proposed Rules to Make Electronic Filing of Trademark Documents Mandatory, October 29, 2001 (32K*).
AIPLA Comments on the USPTO's "Notice of Request for Comments on Development of a Plan to Remove the Patent and Trademark Classified Paper Files From the Public Search Facilities," October 29, 2001 (39K*).
AIPLA Comments on the "Preliminary Draft Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters in response to the notice published in the Federal Register on August 20, 2001 (66 Fed. Reg. 43575)," October 24, 2001 (66K*).
AIPLA Comments on "Notice of Request for Comments on Development of a Plan to Remove the Patent and Trademark Classified Paper Files From the Public Search Facilities," October 9, 2001 (41K*).
AIPLA Comments on "Requirements for Claiming the Benefit of Prior-Filed Applications Under Eighteen-Month Publication of Patent Applications," October 5, 2001 (53K*).
AIPLA Comments in response to the USPTO notice of March 19, 2001, (66 Federal Register 15409-15411) requesting input on 17 issues relating to patent harmonization, April 30, 2001 (3.5M*)
AIPLA Comments on "Standard for Declaring a Patent Interference," March 27, 2001 (37K*).
AIPLA Comments to USPTO on the Hague Convention (Jurisdiction/Judgments), December 8, 2001 (42K*).
AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Treatment of Unlocatable Application and Patent Files" 65 Fed. Reg. 42309, July 10, 2000.
AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Rules to Implement Optional Inter Partes Reexamination Proceedings" 65 Fed. Reg. 18154, April 6, 2000.
AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Changes to Implement 18-Month Publication of Patent Applications" 65 Fed. Reg. 17946, April 5, 2000.
AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Changes to Implement Patent Term Adjustment Under Twenty- Year Patent Term" 65 Fed. Reg. 17215 (March 31, 2000)
AIPLA Comments on the Notice of Interim Rulemaking Entitled "Changes to Application Examination and Provisional Application Practice" 65 Fed. Reg. 14865, March 20, 2000.
Comments to PTO on Written Description and Utility Requirements Guidelines, March 27, 2000.
Comments on the Notice of Proposed Rulemaking Entitled "Changes to Implement the Patent Business Goals" 64 Fed. Reg. 53772, October 4, 1999.
Comments on the Interim Supplemental Examination Guidelines for Determining the Applicability of 35 U.S.C. § 112, paragraph 6, 64 Fed. Reg. 41392, July 30, 1999.

Recent Advocacy

AIPLA Files Amicus Brief in The TriZetto Group, Inc. v. Syntel Sterling Best Shores Mauritius Limited
October 24, 2023

On October 18, 2023, the American Intellectual Property Law Association (AIPLA) filed an amicus brief in support of a petition for certiorari to the Supreme Court in The TriZetto Group, Inc. v. Syntel Sterling Best Shores Mauritius Limited (23-306) on the issue of whether unjust enrichment damages in a trade secret case should be considered independently of the victim’s own loss.
AIPLA Files Amicus Brief with Court of Appeals for the Federal Circuit in In re: Xencor, Inc.
October 16, 2023

On October 6, 2023, the American Intellectual Property Law Association (AIPLA) filed an amicus brief with the Court of Appeals for the Federal Circuit in In re: Xencor, Inc., a case on appeal from the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board. The case concerns the Board’s rejection of patent claims directed to a treatment method involving administration of an antibody containing certain amino acid substitutions that increase the antibody’s half-life. The Board rejected the claims for lack of written description and as indefinite.
AIPLA Comments on Changes to Duration of Attorney Recognition
October 10, 2023

Arlington, VA. October 6, 2023 - The American Intellectual Property Law Association (AIPLA) submitted comments to the US Patent and Trademark Office (USPTO) on their recent proposal on the changes to the duration of attorney recognition.
AIPLA Issues Letter in Support of Deborah Robinson's Nomination to be the Intellectual Property Enforcement Coordinator
September 15, 2023

On September 14, 2023, The American Intellectual Property Law Association (AIPLA) submitted a letter to the Senate Judiciary Committee regarding Deborah Robinson’s nomination to be the United States Intellectual Property Enforcement Coordinator (IPEC). In view of her impressive background, AIPLA believes Ms. Robinson will be highly successful in this role and appreciates the Judiciary Committee giving this nomination prompt consideration.
AIPLA Files Amicus Brief with Court of Appeals for the Federal Circuit in LKQ Corp. v. GM Global Technology Operations LLC
September 5, 2023

Arlington, VA. August 29, 2023 - The American Intellectual Property Law Association (AIPLA) filed an amicus brief with the Court of Appeals for the Federal Circuit in support of neither party in LKQ Corp. v. GM Global Technology Operations LLC, a case that the Federal Circuit agreed to rehear en banc in June 2023. The case concerns the test for obviousness for design patents and whether the Supreme Court’s decision in KSR (which involved a utility patent) overrules or abrogates the current Rosen-Durling framework.

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AIPLA Comments on Discretion to Institute Trials Before the Patent Trial and Appeal Board
December 3, 2020

The American Intellectual Property Law Association today filed a response to the USPTO’s October 20, 2020 request for comments on discretion to institute trials in inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). The USPTO’s request solicits input on whether rulemaking is necessary and the type of rules it should adopt, but does not propose any rules.
UNITED STATES OF AMERICA, Petitioner, v. ARTHREX, INC. ET AL., Respondents. Case No. 19-1434, 19-1452, amicus brief filed 12/2/2020.
December 2, 2020

AIPLA’s brief supports reversal of the Federal Circuit’s decision and argues that Supreme Court precedent does not support such a rigid, factor-specific approach, instead favoring a flexible analysis to assess whether an officer is “principal” or “inferior.” The brief explains that, while the question is a close one, the totality of the circumstances under this flexible approach supports finding that APJs are inferior officers who are constitutionally appointed.
AIPLA Comments on Revised Trademark Examination Guide 3-19 Examination of Specimens in Commerce: Digitally Created/Altered or Mockup Specimens
October 12, 2020

AIPLA appreciates the Trademark Office’s efforts to address the issue of fraudulent trademark specimens that incorporate digital alterations, thereby creating the false impression of use of a trademark in the marketplace. We also appreciate the Office’s transparency in providing clarity as to how the USPTO and Examiners will address fraudulent specimens. While AIPLA further recognizes the need for the USPTO to focus its attention on the authenticity of submitted specimens and whether they show marks as actually used in commerce as required by the Trademark Act, AIPLA has suggestions and comments on the revised Examination Guide.
AIPLA Comments on Proposed Rule Changes in Representation of Others Before the USPTO
September 29, 2020

AIPLA appreciates the USPTO’s willingness to continuously improve the conduct rules applicable to practice before the USPTO. AIPLA previously provided substantive comments to the last major revision of the USPTO Rules of Professional Conduct (“USPTO Rules”), which overhauled the landscape of practice before the USPTO from being based upon the former American Bar Association (“ABA”) Code of Professional Responsibility to the more current Model Rules of Professional Conduct. Within those comments, AIPLA addressed concerns regarding the confidentiality rules. In response to comments, USPTO clarified the ability of a representative to withdraw in certain situations. See, e.g., 78 FR 21090.
AIPLA's Comments on the H.R. 6196, the Trademark Modernization Act of 2020
September 8, 2020

AIPLA supports the Trademark Modernization Act, legislation amending the federal Lanham Act to authorize the administrative invalidation by the Director of the U.S. Patent and Trademark Office of registrations covering marks that either have never been used in commerce, or are not used in commerce by the relevant date under the statute for obtaining a registration.

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