News & Publications

The United States Patent and Trademark Office (USPTO) issued a final rule to delay the effective date of the non-DOCX filing fee for an additional calendar year, until January 1, 2023. The fee adjustment would apply to any nonprovisional utility patent application filed under 35 U.S.C. 111, including any continuing application, that is not filed in DOCX format. The USPTO noted that this delay allows applicants additional time to adjust to filing patent applications in the new format and also enables the USPTO to conduct further testing of its systems. AIPLA was at the fore of expressing concern to the USPTO about requiring patent applications to be filed exclusively in a DOCX format, noting the potentially significant impact on its members and the system.

On November 10, 2021, AIPLA, alongside nine other entities, joined on a letter to House Committee on Ways and Means Chairman Richard Neal and Ranking Member Kevin Brady regarding enforcement of intellectual property rights at the border. The letter expressed concern with the flow of counterfeit goods across the United States border, calling for stronger, more effective trade enforcement and information sharing with the private sector. The letter encouraged support for pending legislation, including key provisions which will clarify CBP’s ability to share information with rights holders.

On November 10, 2021, AIPLA submitted comments to the U.S. Copyright Office pursuant to the Notice of Proposed Rulemaking (NPRM) related to CASE Act regulations. Comments provided included support for requiring claimants to provide contact information in the initial notice form and support for charging filing fees for counterclaims. A staggered fee structure was again suggested, and support was provided for an initial notice in a form that includes information required by the statute and additional basic information. An opt-out mechanism for claimants who receive a counterclaim was not supported, and concern was expressed regarding implementation of a mechanism whereby a respondent who has opted out of a CCB proceeding can change their mind and opt back in.

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.

The survey examines the economic aspects of intellectual property law practice, including individual billing rates and typical charges for representative IP law services.

On September 21, 2021, AIPLA submitted comments to the China National Intellectual Property Administration (CNIPA) regarding the Draft Revision to the Chinese Patent Examination Guidelines (Draft for Solicitation of Comments). AIPLA provided comments and suggestions on more than fifteen guidelines outlined in a table format for readability. With respect to patent term compensation due to unreasonable delay at the CNIPA, drug patent term extension, and open license, in addition to seeking various classifications, AIPLA submitted a number of suggestions.

On August 10, 2021, AIPLA filed an amicus brief in the Supreme Court case, Unicolors, Inc., v. H&M Hennes & Mauritz, L.P. (Case No. 20-915). The brief notes that the Ninth Circuit decision in the case increases the risk to copyright owners in that any erroneous legal conclusions set forth in a copyright application may have draconian repercussions, and if upheld, will likely increase the costs and burdens of copyright litigation. Two courses of action are suggested, including reversing the Ninth Circuit’s decision and recognizing the inherent power of district court judges to determine whether an allegation that a registrant has knowingly included inaccurate facts is reasonably plausible before referring a case to the Register of Copyrights.

On July 29, 2021, the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Owners Association (IPO) submitted a joint letter to Senators Leahy, Shaheen, Tillis, and Moran expressing concern over resources appropriated to the U.S. Patent and Trademark Office (USPTO) in FY 2022. The letter asserted that it is imperative for the USPTO to receive access to all its fees, urging passage of a funding measure that reflects the intent of the Leahy-Smith America Invents Act to fund the USPTO at a level equal to fee collection estimates.

On July 29, 2021, AIPLA filed an amicus brief in the Supreme Court case, Ezaki Glico Co. v. Lotte International America Corp. (Case No. 20-1817). The brief addresses the Third Circuit’s conclusion that product design trade dress is functional, and therefore not protectable, if it is “useful.” The brief also questions the Third Circuit’s displacement of what remained of the traditional rule with principles of the separate doctrine of aesthetic functionality. Moreover, because trade dress is typically associated with ubiquitous products (especially the trade dress that is copied), it is likely that a trade dress owner would be forced to defend its trade dress in the Third Circuit under the new rule.

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.