The first half of 2024 has been a busy time for the United States Patent and Trademark Office (USPTO), with the introduction of five different notices of proposed rulemaking. While the first three proposed rules packages are relatively straightforward, the last two have stirred up controversy and are expected to face significant opposition.
The proposed rules cover a range of topics, including admission to practice before the Patent Trial and Appeal Board (PTAB), motions to amend, and Director Review of PTAB proceedings. These rules aim to streamline processes, clarify responsibilities, and ensure fair outcomes in patent disputes.
One of the more contentious rules packages relates to discretionary denial issues. This proposal seeks to define and address parallel and serial petitions challenging the same patent, as well as introduce a separate briefing process for discretionary denial issues. The goal is to enhance transparency and efficiency in PTAB proceedings.
Additionally, the USPTO has unexpectedly published rules regarding terminal disclaimers. These proposed requirements would impact the enforceability of patents with terminal disclaimers if certain conditions are not met. This move has the potential to reshape patent prosecution strategies and discourage the use of terminal disclaimers.
In response to these proposed rule changes, the USPTO has also suggested fee increases for fiscal year 2025. These fee adjustments are designed to influence patent prosecution practices by introducing surcharges for certain actions and encouraging timeliness in proceedings.
Looking ahead to the second half of 2024, with the upcoming elections in November, it is expected that rulemaking activity will slow down. Contentious proposals may struggle to progress, and significant rule packages are unlikely to be introduced. While non-controversial rules packages may have a better chance of adoption, those generating negative responses, such as the rules on discretionary denial and terminal disclaimers, may face challenges in implementation.
Furthermore, practitioners should be prepared for changes in response to recent Federal Circuit decisions, such as In re Cellect and LKQ Corp. v. GM Glob. Tech. Operations LLC. These decisions have the potential to impact patent prosecution practices and design patent obviousness standards.
In conclusion, the USPTO’s rulemaking activity in the first half of 2024 has set the stage for potential changes in patent practices and procedures. Practitioners and stakeholders should stay informed and be prepared to adapt to evolving regulations and legal developments in the patent landscape.