On June 21, 2021, the U.S. Supreme Court decided the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were not constitutionally appointed, and that the patent owner, Arthrex, Inc., is entitled to a remand for a rehearing by the Director of the United States Patent and Trademark Office (USPTO). United States v. Arthrex, Inc., 593 U.S. _ (June 21, 2021).
This is an unsettled and truly unprecedented time for companies and for individuals. We are each being confronted by COVID-19 in different ways. The pandemic affects our everyday lives, our businesses and our unpredictable futures. We have to live with uncomfortable restrictions on our usual movements and lack of certainty about when things will return to a “normal” that might not be like the “normal” we knew before.
U.S. Patent and Trademark Office 37 CFR Rule 1.56: How Should Patent Applicants Approach Compliance?
All companies should be aware of the Rule and determine at an early stage how inventors should be educated regarding compliance. Often, companies and their patent counsel train inventors to avoid attempting to perform prior art searches or compare their inventions to “what is out there.” This is prudent for a couple reasons.
Patents, trademarks, and copyrights are commonly known as “intellectual property” or IP. As occasional high-profile lawsuits between large corporations illustrate, IP can be extremely valuable, causing companies to budget significant amounts of money to acquire, defend, and assert IP rights. The concept of IP can be controversial, prompting various constituencies to condemn the entire idea (e.g., as dampening innovation or hampering individuals and smaller entities), or to object to the vast sums spent on high-profile lawsuits and their resulting awards/settlement.
Many clients ask this question no matter how many patents they already hold. Even for inside counsel at large companies or serial inventors who have been through the patent process end-to-end multiple times, the production timelines of the U.S. Patent and Trademark Office (USPTO) are ever evolving.