What Happened at the USPTO in 2024—and What’s to Come

This year was a busy one for U.S. Patent and Trademark Office (USPTO) policy changes, with a number of proposed rules packages introduced, proposed legislation being considered by Congress, and several U.S. Court of Appeals for the Federal Circuit and Supreme Court decisions that are likely to have lasting impacts on the USPTO. Now, we await potentially significant changes under the incoming Trump Administration and a new Director. Below, we’ve recapped a number of the more significant changes and proposed changes.

New Director

On November 12, 2024, Director Vidal announced that she is resigning  as of the second week in December and returning to private practice. Deputy Director Derrick Brent will lead the USPTO until the Trump Administration appoints a new Director. If recent history is any guide, we can expect the appointment of a new Director to take a year or so. Recent reports that Vishal Amin, Intel’s head of IP policy, is the front runner to be named next Director may indicate that the USPTO may continue to follow Director Vidal’s Big Tech friendly policies under the next Administration.

Proposed Rule Packages

In the meantime, the more controversial rules packages proposed over the last year will likely be abandoned. On December 4, 2024, the USPTO withdrew its proposed rule that would have required terminal disclaimers filed to obviate nonstatutory double patenting to include an agreement by the applicant or patentee that the patent and any children issuing therefrom will not be enforced if any claim of the original patent is invalidated by prior art. This proposed rule had drawn widespread criticism about the continued overreach of the nonstatutory double patenting doctrine, a judicially-created doctrine with no statutory basis and questionable relevance under the current (post-General Agreement on Tariffs and Trade [GATT]) statutory regime.

Another proposed rule that may be dead in the water is the proposed rule package creating a separate briefing schedule for discretionary denial issues and defining parallel and serial petitions. No final rule has issued, and the separate briefing schedule for discretionary denial issues has been widely criticized.

Several less controversial final rules have issued over the second half of 2024. On October 31, 2024, a final rule on the Director Review process went into effect. The rule essentially formalizes existing policies on Director Review. Thus, Director Review is available for decisions on institution, final written decisions, decisions granting rehearing of a decision on institution or final written decision, or any other decision concluding an America Invents Act (AIA) proceeding. Further, the rule provides that the Director can institute Director Review sua sponte and sets forth the timing for the Director Review process.

Another rules package that became effective November 12, 2024 allows parties at the Patent Trial and Appeal Board (PTAB) to proceed without backup counsel (i.e., with only a single lead practitioner) upon a showing of good cause. This package also streamlines the pro hac requirements for attorneys that have previously been recognized pro hac in a prior PTAB proceeding. Interestingly, the rules package did not adopt the proposed rule allowing attorneys that are not registered to practice at the PTAB to appear as lead counsel. Thus, a registration number is still required to serve as lead counsel at the PTAB.

Finally, practitioners should be aware of patent fee increases taking effect on January 19, 2025. On November 20 ,2024, the USPTO announced new fees as the result of a notice of proposed rulemaking published on April 3, 2024. Not all of the proposed fee increases were adopted. However, the Office is moving forward with fee increases relating to the timing of continuation applications (i.e., filing continuation, divisional, or continuation-in-part applications becomes more expensive after six and nine years from the earliest filing date in the family), a reduction to the adjusted patent term extension fee, and elimination of the proposed new tier for third and subsequent requests for continued examination, and corresponding adjustments to the existing fee for second and subsequent requests. In addition, PTAB filing and institution fees will increase by 25% while many other patent and PTAB fees will increase by about 7.5%. Consider how these fee increases will impact your clients and plan accordingly.

Looking Forward To 2025

All eyes in 2025 will be on the announcement of a new Director and the impact the new Director and new Administration have on USPTO policies. The assumption is that a new Director could shift USPTO policies in a more patent-friendly direction than under Director Vidal, whose term was generally viewed as making it more difficult to obtain and maintain patent protection. Policies put in place under Director Vidal without formal rulemaking, such as a preference not to discretionarily deny institution of inter partes reviews (IPRs) (and the corresponding drop in Fintiv denials), may be rolled back. However, with the new Administration’s focus on cutting government agencies to increase efficiency, the policies and priorities of the next Director could be a significant departure from those under either Director Iancu or Vidal.

Pending Bills

There are also several pending bills that would change practice at the PTAB and are being watched with interest.

One is the Promoting and Respecting Economically Vital American Innovation Leadership Act, or PREVAIL Act. The PREVAIL Act, if passed, would institute myriad changes at the PTAB, including raising the burden of proof from preponderance of the evidence to clear and convincing and requiring petitioners to essentially have declaratory judgment standing to institute an inter partes review (IPR). On November 21, 2024, the PREVAIL Act moved forward to the Senate floor for a full vote by a close 11-10 committee vote.

Another pending bill is the Inventor Diversity for Economic Advancement (IDEA) Act of 2024. The IDEA Act  was voted out of committee by a 15-6 vote and will now advance to a vote of the full Senate. The IDEA Act allows for the collection of voluntary demographic information from inventors.

Finally, the  Patent Eligibility Restoration Act, or PERA, would address 35 U.S.C. §101, abolishing all judicial exceptions to patent eligibility in favor of a more permissive statutory framework. If passed, the current Alice framework for evaluating patent eligibility would be eliminated. PERA, however, has yet to be put up for a vote by the committee.

Cases That May Impact the USPTO in 2025

USPTO rules and policies are also likely to be adjusted in response to Supreme Court and Federal Circuit jurisprudence. The Supreme Court’s decision in Loper Bright v. Raimondo is likely to continue to generate challenges over USPTO substantive rulemaking and internal policies.

For design patents, the en banc Federal Circuit in LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, 2024 WL 2280728 (Fed. Cir. May 21, 2024) recently abandoned the longstanding Rosen-Durling test for design patent obviousness in favor of the more flexible approach for utility patents laid out in KSR v Teleflex. The standard for design patent obviousness at the USPTO will change as a result and the expectation is that many more design patent claims will be rejected as obvious under the KSR framework.

Another case to watch is Apple Inc. v. Vidal (No. 20-CV-06128-EJD, 2024 WL 1382465, at *11 (N.D. Cal. Mar. 31, 2024)), currently on appeal to the Federal Circuit for the second time, this time on the issue of whether the Fintiv standard is a substantive rule that requires notice-and-comment rulemaking. The ultimate outcome of this case could gut Fintiv or spur future rulemaking with respect to the PTAB’s discretionary denial practices.

Finally, despite the apparent withdrawal of the proposed rules regarding terminal disclaimers, the judicially-created doctrine of obviousness-type double patenting remains in flux, particularly with respect to its impact on Patent Term Adjustment (PTA). While the Supreme Court denied certiorari on In re Cellect, the Federal Circuit’s August 13, 2024 decision in Allergan v MSN appears to have limited the holding of Cellect to the specific facts in that case. Subsequent Federal Circuit decisions may further abrogate the continued viability of the judicially-created doctrine of obviousness-type double patenting.

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Author: donscarpo
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