by Dennis Crouch

The USPTO is shrinking the typical timeline from issuance to he USPTO has announced a significant improvement to their patent issuance process that will benefit inventors and patent holders across the nation. Beginning May 13, 2025, the time between Issue Notification and Issue Date will be reduced from approximately three weeks to just two weeks.   When everything is in order, the issue notification typically comes 1-2 weeks after paying the Issue Fee.

The USPTO formerly needed time for formatting the printing, but now that we have moved to electronic grants (eGrants), the issuance will come that much sooner.  Good work USPTO.

In addition to quicker patent issuance, the timeline also reduces the lame duck period where the inventors and attorneys still have a duty to submit known prior art relevant to patentability, but where such submission could significantly delay issuance.

But . . .

by Dennis Crouch

In this post, I use the Federal Circuit's recent decision in Sage Products, LLC v. Stewart, Appeal No. 23-1603 (Fed. Cir. April 15, 2025) to delve into the increasingly fictional construct at the center of patent law: the Person Having Ordinary Skill in the Art (PHOSITA).  In our stories, PHOSITA is typically the antagonist, attempting to undermine our hero, the inventor. PHOSITA didn't invent, but now says that he would have done so if only he were a real boy.  And, the ever-expanding knowledge base imputed to PHOSITA helps justify that claim--while naturally raising concerns about the system's fairness, predictability, and effectiveness.

In this case involving sterilized chlorhexidine products, the court imputed detailed knowledge of British regulatory standards to a U.S.-based innovator—another example of how "ordinary skill" has become anything but ordinary. This decision continues a troubling evolution in which courts attribute unrealistic knowledge and capabilities to the hypothetical PHOSITA, creating an ever-widening gap between this legal fiction and the actual capabilities of real-world mechanics and artisans.

by Dennis Crouch

Federal Circuit has affirmed the Trademark Trial and Appeal Board's (TTAB) finding that "iVoterGuide" and "iVoterGuide.com" are highly descriptive terms that failed to acquire distinctiveness. Heritage Alliance, AFA Action, Inc. v. The American Policy Roundtable, No. 2024-1155 (Fed. Cir. Apr. 9, 2025). The ruling maintains the dismissal of Heritage's opposition to American Policy Roundtable's (APR) applications to register "iVoters" and "iVoters.com" as trademarks.

This case presents a classic trademark problem: When is a mark distinctive enough to receive protection, especially when it describes the service being offered?

by Dennis Crouch

The Federal Circuit issued a significant trade secret remedies decision AMS-OSRAM USA Inc. v. Renesas Electronics America, Inc., Nos. 2022-2185, 2022-2186 (Fed. Cir. Apr. 4, 2025). The court made a number of holdings (applying Texas trade secrecy law), most notably:

1. A trade secret becomes "properly accessible" when it could have been reverse-engineered rather than when it actually was reverse-engineered - limiting the appropriate "head-start period" for calculating damages; and
2. But, disgorgement of profits is proper for all sales arising from a misappropriation-based "design win" that occurred during the head-start period, even if actual sales occurred later;
3. A plaintiff may recover damages for both trade secret misappropriation and breach of contract when the damages are based on different sales or injuries.

by Dennis Crouch

In a unique decision, the Federal Circuit has dismissed an appeal seeking to obtain a patent that would have issued after its expiration date. In re Forest, No. 2023-1178 (Fed. Cir. Apr. 3, 2025).   The dismissal on jurisdictional grounds holds that the would-be patent owner (here, the inventor) has no standing to appeal because any resulting patent would have no zero patent term.  (Note - I might have written "appears to hold" since the court does not actually use the term "standing")

The focus of the decision is on a novel argument about provisional rights under 35 U.S.C. § 154(d).  Ordinarily, we think of a patentee having only inchoate rights until the patent issues. While that is generally true, "provisional rights" provide some potential of back-pay for infringement that occurs between publication and issuance.  In particular, once a patent issues, the a patentee can collect a reasonable royalty from parties were infringing the claims even while pending - so long as they were on actual notice of the application publication and the issued claims are "substantially identical" to those that in the published application.  Importantly, as suggested, these provisional rights can only be enforced retroactively after a patent actually issues.

by Dennis Crouch

Last week, Acting USPTO Director Coke Morgan Stewart granted Director Review and vacated the PTAB's decision instituting several inter partes reviews (IPRs) in Motorola Solutions, Inc. v. Stellar, LLC. [IPR2024-01205, -01206, -01207, -01208 Director Review Decision] Stewart's March 28 decision applies the Fintiv factors more aggressively than the Board, signaling a shift toward increased discretionary denials under 35 U.S.C. § 314(a). This is a situation where denial seems appropriate in my opinion. The Stellar's infringement lawsuit was filed in August 2024, with Motorola waiting 11 months to file IPR petitions.  District Court Judge Sam Jordan (E.D.Tx) has has already issued Markman orders and parties have filed their summary judgment. A jury trial is set for July 2025.

by Dennis crouch

In October 2024, the USPTO terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a U.S. practitioner’s signature. The bulk of the applications are Chinese origin filed through Dr. Yu "Mark" Wang, who operated a patent services firm called Wayne and King LLC (W&K). According to USPTO findings, Wang, who was not a registered patent practitioner, used the electronic signature of registered patent agent without her knowledge or consent. Most recently, one of the impacted patentees - Diamond Art Club LLC - filed a lawsuit challenging the the termination based upon "arbitrary and capricious" action by the agency.  In particular, the patent applicant argues that it is being unfairly punished as the victim: "If the misconduct described by the Defendants did in fact occur, Plaintiff was the victim of the misconduct." [DAC Complaint]

by Dennis Crouch

In a significant development affecting the legal profession and potentially patent practice, Judge Richard J. Leon of the U.S. District Court for the District of Columbia has partially granted WilmerHale's motion for a temporary restraining order against President Trump's recent executive order targeting the firm. Wilmer Cutler Pickering Hale and Dorr LLP v. Executive Office of the President, No. 25-cv-917 (D.D.C. Mar. 28, 2025).

The firm's complaint, filed on March 28, 2025, names dozens of federal agencies and officials as defendants, including Coke Morgan Stewart in her official capacity as Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office. This inclusion is particularly relevant to patent practitioners, as the order threatened to severely impair WilmerHale's ability to represent clients before the USPTO.

WilmerHale's complaint noted that its Intellectual Property department regularly represents "patent applicants, patent holders, and patent challengers before U.S. Patent and Trademark Office in patent prosecution and post-grant proceedings." The executive order, if fully implemented, would have restricted WilmerHale attorneys' access to federal buildings and limited federal employees from engaging with them, potentially preventing effective advocacy before the USPTO.

Judge Leon granted temporary relief as to Sections 3 and 5 of the executive order, which would have required government contractors to disclose business relationships with WilmerHale, threatened government contracts involving the firm, restricted WilmerHale employees' access to federal buildings, and limited government employees from engaging with firm personnel. The court found these provisions likely violate the First Amendment, with Judge Leon noting that "the retaliatory nature of the Executive Order at issue here is clear from its face."  The parties must file a joint status report by March 31, 2025, proposing an expedited schedule for further proceedings.

by Dennis Crouch

In a significant procedural shift, Acting USPTO Director Coke Morgan Stewart has announced a new "Interim Process for PTAB Workload Management" that fundamentally changes aspects of how America Invents Act (AIA) patent challenges are handled. The March 26, 2025 memorandum bifurcates the institution decision process by centralizing discretionary denial authority with the Director herself.  This follows the Feburary 28, 2025 action rescinding former Director Vidal's June 2022 memorandum that had significantly curtailed discretionary denials based on the Fintiv factors when parallel district court litigation is pending. I expect this change will substantially increase the percent of IPR/PRG petitions denied at the institution stage.

USPTO leadership appears to have a goal of increasing discretionary denials to protect patentees from harassment and delay in enforcing their property right.  In addition, though, it appears that the Office has a genuine concern about workload management as stated in the memo. The PTAB is being stretched thin by staff shortages caused by the return-to-office (RTO) requirement coupled with reduction-in-force (RIF) efforts from President Trump and Elon Musk's White House.  A substantial number of PTAB judges have quit and further reductions are expected in the coming month.  The memorandum indicates that the new procedures are "temporary in nature due, in part, to the current workload needs of the PTAB."

One difficulty with discretionary denials in the past is that patentees had little room in their briefs to address the issue in any detail.  As discussed below, the new rule provides substantial space for patentees to brief the issue. This will also alter district court proceedings, with patentees again seeking to move faster at the outset to obtain an early trial date and accused infringers seeking delay as well as preemptive stays.

by Dennis Crouch

The pending cert petition in Celanese v. ITC asks whether the sale of products made using a secret process triggers the on-sale bar post-AIA.  In my view, the case sets up a fundamental tension between a straight reading of the statutory text and longstanding precedent.  My bet is on the precedent.

Although Congress has repeatedly tinkered with U.S. patent law over the past several decades, the America Invents Act of 2011 was clearly the most dramatic rewriting of  the law since 1952. The fundamental change to Section 102 was the transition from first-to-invent to first-to-file.   In addition, the law was amended throughout to focus on the "claimed invention" rather than simply the "invention."  This second change is important for the Celanese case.  35 U.S.C. § 102(a)(1)  now reads:

A person shall be entitled to a patent unless ... (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

The AIA also added a definition of the new term, defining "claimed invention" as "the subject matter defined by a claim in a patent or an application for a patent." 35 U.S.C. § 100(j).  This heightened specificity was largely downplayed as a clarification that courts were already following. In particular, for anticipation situations courts were already asking whether the asserted prior art disclosed the invention as claimed.

But, one key divergence from this practice involves ...