White House
Home / Policy & Advocacy / Executive Advocacy

US Patent and Trademark Office

In This Section

2024

Written October 21, 2022

Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office’s guidance on patent subject matter eligibility under Section 101 of the Patent Act. 

The response recommends maintaining the current guidance for the time being, but offers suggested improvements, including continuing to stress to examiners that the guidance be closely followed to ensure greater predictability, quality, and efficiency of patent examination.

Additionally, the response suggests that the guidance be updated to clarify how claims directed to functional improvements in various technological fields could integrate an abstract idea into a practical application, and that, for certain technologies, subject matter eligibility decisions are more unpredictable. With few judicial opinions on which to base examples for these technologies, AIPLA recommends the Office develop guidance in these technical areas. 

Finally, as there is sometimes reasonable disagreement between the applicant and examiner on how the claims should be interpreted with a rejection based on ineligibility, The response recommends providing additional guidance on claim interpretation in the context of a section 101 analysis, and that the Office should continue to emphasize that subject matter eligibility must be evaluated on a claim-by-claim basis. 

 

To view the complete comments, please download the comment letter posted to the right of this page.   

2023

Written October 21, 2022

Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office’s guidance on patent subject matter eligibility under Section 101 of the Patent Act. 

The response recommends maintaining the current guidance for the time being, but offers suggested improvements, including continuing to stress to examiners that the guidance be closely followed to ensure greater predictability, quality, and efficiency of patent examination.

Additionally, the response suggests that the guidance be updated to clarify how claims directed to functional improvements in various technological fields could integrate an abstract idea into a practical application, and that, for certain technologies, subject matter eligibility decisions are more unpredictable. With few judicial opinions on which to base examples for these technologies, AIPLA recommends the Office develop guidance in these technical areas. 

Finally, as there is sometimes reasonable disagreement between the applicant and examiner on how the claims should be interpreted with a rejection based on ineligibility, The response recommends providing additional guidance on claim interpretation in the context of a section 101 analysis, and that the Office should continue to emphasize that subject matter eligibility must be evaluated on a claim-by-claim basis. 

 

To view the complete comments, please download the comment letter posted to the right of this page.   

2022

  • AIPLA Comments on USPTO’s Diversion Program

    November 10, 2022

    Arlington, VA. November 7, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office of Enrollment and Discipline’s (OED) Diversion Pilot Program.  
  • AIPLA Comments to USPTO on Subject Matter Guidance

    October 21, 2022

    Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office’s guidance on patent subject matter eligibility under Section 101 of the Patent Act. 
  • AIPLA Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of PTAB Decisions

    October 21, 2022

    Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) offered its response to the United States Patent and Trademark Office (“USPTO”) regarding the USPTO’s Request for Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of Patent Trial and Appeal Board Decisions.
  • AIPLA Files Comments on Proposed Final Pretrial Conference Pilot and Order

    August 26, 2022

    Arlington, VA. August 26, 2022 - The American Intellectual Property Law Association (AIPLA) filed comments to the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) on the proposed pilot program for instituting a Final Pretrial Conference (PFC) requirement in certain TTAB opposition and cancellation proceedings.  
  • AIPLA Files Brief In Support of Neither Party Regarding Order Setting Schedule for Director Review

    August 4, 2022

    Arlington, VA. August 4, 2022 - The American Intellectual Property Law Association (AIPLA) filed an amicus brief  in the two PTAB cases of OpenSky Industries, LLC, Patent Quality Assurance, LLC, and Intel Corporation v. VLSI Technology LLC, which USPTO Director Vidal has taken up to address what actions the USPTO Director should take when faced with assertions of an abuse of process or conduct that otherwise thwarts, as opposed to advances, the goals of the Office and/or the AIA. AIPLA’s brief argues that the review procedures implemented in these proceedings are adequate to address the rare instances of alleged abuse of process or alleged conduct contrary to the goals of the Office and/or the AIA. 
  • AIPLA Comments on the USPTO in Response to the Interim Process for Director Review

    July 11, 2022

    On July 11, the American Intellectual Property Law Association (AIPLA) offered its initial views to the United States Patent and Trademark Office (“USPTO”) in response to the Interim Process for PTAB Director Review. AIPLA appreciates the USPTO’s focus on improving fairness to all parties and achieving greater consistency and predictability in these proceedings. 

  • AIPLA Comments on Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments

    February 4, 2022

    The American Intellectual Property Law Association ("AIPLA") is pleased to submit comments to the "Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments issued on December 6, 20211 ("draft policy statement" or "draft") by the U.S. Department of Justice, Antitrust Division ("DOJ"), the U.S. Patent & Trademark Office ("USPTO"), and the National Institute of Standards and Technology ("NIST") (together "the agencies").

Written October 21, 2022

Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office’s guidance on patent subject matter eligibility under Section 101 of the Patent Act. 

The response recommends maintaining the current guidance for the time being, but offers suggested improvements, including continuing to stress to examiners that the guidance be closely followed to ensure greater predictability, quality, and efficiency of patent examination.

Additionally, the response suggests that the guidance be updated to clarify how claims directed to functional improvements in various technological fields could integrate an abstract idea into a practical application, and that, for certain technologies, subject matter eligibility decisions are more unpredictable. With few judicial opinions on which to base examples for these technologies, AIPLA recommends the Office develop guidance in these technical areas. 

Finally, as there is sometimes reasonable disagreement between the applicant and examiner on how the claims should be interpreted with a rejection based on ineligibility, The response recommends providing additional guidance on claim interpretation in the context of a section 101 analysis, and that the Office should continue to emphasize that subject matter eligibility must be evaluated on a claim-by-claim basis. 

 

To view the complete comments, please download the comment letter posted to the right of this page.   

2021

  • USPTO Indefinitely Delays Implementation of the Voluntary Continuing Legal Education (CLE) Certification

    December 16, 2021

    On December 16, 2021, The United States Patent and Trademark Office (USPTO) indefinitely delayed implementation of the voluntary continuing legal education (CLE) certification for registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters. The American Intellectual Property Law Association (AIPLA) assembled a joint committee task force to ensure that the proposed rules did not disproportionately impact patent agents and other practitioners for whom CLE self-certification would be a significant burden and/or legal risk, and to ensure that practitioners were made aware of requirements for the registration statement and the CLE self-certification.
  • AIPLA Submits Comments to USPTO Regarding Request for Information to Assist Preparation of Patent Eligibility Jurisprudence Study

    October 15, 2021

    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.

  • AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Changes to Implement Provisions of the Trademark Modernization Act of 2020

    July 19, 2021

    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.

  • AIPLA Submits Comments on Proposed Administrative Updates to the General Requirements Bulletin

    May 24, 2021

    On May 24, 2021, AIPLA submitted comments to the Director for the Office of Enrollment and Discipline at the U.S. Patent and Trademark Office (USPTO) regarding the proposed administrative updates to the General Requirements Bulletin (GRB). The comments made were in support of the proposal to add the common Category B categories to Category A to reflect current and anticipated patenting activity, and of the proposal to amend Category B, Options 2 and 4, to permit a combination of courses that need not be sequential. AIPLA also advised considering the addition of degrees matching emerging technical fields on a regular basis and supports the inclusion of master’s and doctoral degrees as acceptable under the requirements of Category A.
  • AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Disclaimer Practice in Patents and Patent Applications

    March 22, 2021

    On March 22, 2021, AIPLA submitted comments regarding the notice of proposed rulemaking regarding disclaimer practice in patents and patent applications. AIPLA supports the Office’s proposed revisions to the rules and includes a suggestion to clarify the rules regarding disclaimers by parties to a joint research agreement. 
  • AIPLA Submits Comments to USPTO Regarding National Strategy for Expanding American Innovation

    February 23, 2021

    On February 23, 2021, AIPLA filed comments in response to the USPTO’s Notice regarding the National Strategy for Expanding American Innovation. AIPLA's comments include suggestions for the support of individuals, including the implementation of shared workspaces, hubs, and labs, workshops, internships, and promotion of meetings and clubs, among other ideas. Some of AIPLA's comments regarding lowering the barriers to innovation in underrepresented groups include adjusting internal culture and increasing representation in leadership. READ MORE
  • Comments Submitted by AIPLA to USPTO Pursuant to Sovereign Immunity Study

    February 22, 2021

    On February 22, 2021, AIPLA filed comments in response to the USPTO’s Sovereign Immunity Study: Notice and Request for Public Comment, 85 Fed. Reg. 70,589 (November 5, 2020) (Docket Number: PTO–T–2020–0043). With respect to patent and trademark infringement, AIPLA believes that the record of reported cases provides support for abrogation of state immunity. With respect to trademark infringement, however, there are critical differences between those cases and patent and copyright infringement actions.  READ MORE
  • AIPLA Comments on Implementation of the Trademark Modernization Act

    February 3, 2021

    AIPLA provided feedback to the USPTO on the implementation of the Trademark Modernization Act (TMA). The feedback three aspects of the TMA: general comments, comments on flexible response times, and comments regarding ex parte expungement and ex parte reexamination proceedings. AIPLA continues to advocate for a shorter response period to Office Action refusals that include only ministerial or procedural objections. AIPLA also provided feedback on a number of subsections regarding ex parte expungement and ex parte reexamination proceedings.
  • AIPLA Submits Comments to USPTO Regarding the Article of Manufacture Requirement

    February 2, 2021

    On February 2, 2021, AIPLA filed comments in response to the USPTO’s Notice regarding the Article of Manufacture Requirement for Design Patents under 35 U.S.C. 171. AIPLA indicated its support for a change in the interpretation of eligibility guidelines for computer-generated images to accept other articles of manufacture associated with the underlying programmed computer, instead of requiring that the image appear on a display screen.
  • AIPLA Comments on the Request for Comments on Proposed Continuing Legal Education Guidelines

    January 7, 2021

    AIPLA filed a response to the USPTO’s request for comments on proposed continuing legal education guidelines objecting to ongoing efforts by the USPTO to institute a de facto federal CLE requirement and reporting system, noting that the biennial registration requirements and reporting systems are unnecessary and may lead to an active practitioner fee. AIPLA also expressed concern that the proposal would eventually result in a mandatory CLE program requiring a costly infrastructure which would ultimately result in fees increases to support it. AIPLA expressed further concern that the rulemaking efforts may not have complied with rulemaking requirements.

2020

 

 

2019

 

 

2018

2017 and Earlier

2017

  • AIPLA Comments to Improving the Accuracy of the Trademark Register:  Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and Nonuse, August 1, 2017 (PDF)
  • AIPLA Statement on Fraudulent and Misleading Solicitations to Trademark Owners, USPTO Public Roundtable on Fraudulent and Misleading Solicitations, July 26, 2017 (PDF)
  • AIPLA and PhRMA Comments on Draft Convention on the Recognition and Enforcement of Foreign Judgments Relating to Civil or Commercial Matters​ Currently Being Negotiated at The Hague Conference on Private International Law​, July 19, 2017 (PDF)​
  • AIPLA Comments on PTAB Procedural Reform Initiative, July 14, 2017 (PDF)
  • AIPLA Recommendations to the Patent Public Advisory Committee (PPAC), July 6, 2017 (PDF)
  • AIPLA Comment for Consideration by the Working Group on Regulatory Reforms  in Relation to Executive Order 13771 (“Presidential Executive Order on Reducing and Controlling Regulatory Costs”) and Executive Order 13777 (“Presidential Executive Order on Enforcing the Regulatory Reform Agenda”), June 23, 2017 (PDF)
  • AIPLA Comments on Examination Guide Entitled “Incapable Informational Matter”​, March 15, 2017 (PDF​)
  • AIPLA Comments Regarding the Continuation of the Accelerated Examination Program​, March 13, 2017 (PDF​)
  • AIPLA Comments of the AIPLA on Examination Time Goals, January 26, 2017 (PDF​)
  • AIPLA Comments on Patent Eligibility after Section 101 Roundtables, January 18, 2017 (PDF)
  • AIPLA Comments on a Preliminary Draft Convention on the Recognition and Enforcement of Foreign Judgments Currently Being Negotiated at The Hague Conference on Private International Law​, January 18, 2017 (PDF)

2016

  • AIPLA Comments on Revival and Reinstatement of Abandoned/Cancelled/Expired Trademarks​,​ Dec 23, 2016 (PDF​)
  • AIPLA Comments on Duty of Disclosure, Dec 22, 2016 (PDF​)
  • AIPLA Comments on Proposed ST.26 Standard for Sequence Listings​, Dec 21, 2016 (PDF​)
  • AIPLA Comments on Proposed Rule Recognizing Privileged Communications between Clients and Patent Practitioners at the Patent Trial and Appeal Board​, Dec 19, 2016 (PDF​ ​)
  • AIPLA Comments on USPTO Patent Fee Proposal FY2017, Dec 2, 2016 (PDF​)
  • AIPLA Comments on Post-Prosecution Pilot Program (P3), Nov 8 2016​ (PDF​)
  • AIPLA Comments on Leveraging Electronic Resources to Retrieve Information from Applicant's Other Applications and Streamline Patent Issuance, Nov 8 2016​ (PDF)
  • AIPLA Comments on Continuation of Random Audit Pilot Program, August 17, 2016 (PDF​)
  • AIPLA Comments to USPTO on TM Fees Proposal​, July 11, 2016 (PDF​)
  • AIPLA Comments on Written Description Requirements in Design Applications​, June 14, 2016 (PDF​
  • AIPLA Comments on Proposed Amendments to TTAB rules, June 3, 2016 (PDF)
  • AIPLA Patent Quality Metrics Comments, May 24, 2016 (PDF​)
  • AIPLA Response to Submission of Topics for USPTO Quality Case Studies (Consolidated), February 12, 2016 (PDF)

2015

  • AIPLA Comments to the Department of Commerce and USPTO on the Shared Services Initiative, December 14, 2015 (PDF)
  • AIPLA Comments on Proposed Patent Fee Schedule Considered at the Public Hearing by the Patent Public Advisory Committee, November 25, 2015 (PDF)
  • AIPLA Comments on Proposed Trademark Fee Schedule Considered at Public Hearing by the Trademark Public Advisory Committee, November 10, 2015 (PDF)
  • AIPLA Comments in Response to the Request for Comments on the "July 2015 Update on Subject Matter Eligibility," October 28, 2015 (PDF)
  • AIPLA Comments in Response to Proposed “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board," October 21, 2015 (PDF)
  • AIPLA Comments in Response to "Request for Comments on Enhancing Patent Quality," May 20, 2015 (PDF)
  • AIPLA Comments in Response to the USPTO "Request for Comments on 2014 Interim Guidance on Patent Subject Matter Eligibility," March 16, 2015 (PDF)
  • AIPLA Comments on USPTO Draft Examination Guide on "Repeating-Pattern Marks," March 16, 2015 (PDF)
  • AIPLA Comments in Response to the USPTO "Notice of Roundtable and Request for Comments on Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients,"March 6, 2015 (PDF)
  • AIPLA Recommendation Regarding Consideration by the PCT Receiving Office of the USPTO of Requests for Restoration of Priority Based Upon the “Due Care” Standard, February 24, 2015 (PDF)
  • AIPLA Recommendation Regarding Deference to Favorable Findings of the International Searching Authority of the USPTO During Examination of a U.S. National Phase from a PCT Application, January 13, 2015 (PDF)

2014

  • AIPLA Comments in Response to the USPTO Announcement, “Trademark:  Next Generation Acceptable Identification of Goods and Services Manual,” December 16, 2014 (PDF)
  • AIPLA Comments in Response to the USPTO Announcement, “Request for Comments on Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution,” October 30, 2014 (PDF)
  • AIPLA Response to the "Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board," October 16, 2014 (PDF)
  • AIPLA Response to "Request for Comments on Optimum First Action and Total Pendency," September 8, 2014 (PDF)
  • AIPLA Response to the Notice of Proposed Rulemaking Entitled, "Changes to Facilitate Applicant's Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices," September 8, 2014 (PDF)
  • AIPLA Response to the Notice of Proposed Rulemaking Entitled, "Changes to Patent Term Adjustment in View of the Federal Circuit Decision in Novartis v. Lee," August 13, 2014 (PDF)
  • AIPLA Response to "Request for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent Eligible Subject Matter (re: Alice), July 31, 2014 (PDF)
  • AIPLA Comments on "Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, and Natural Products," (re: Myriad), July 31, 2014 (PDF)
  • AIPLA Response to "Request for Comments on Virtual Marking," July 16, 2014 (PDF)
  • AIPLA Comments in Response to the USPTO Announcement, "Share Comments/Suggestions on Draft Examination Guide:  Service Mark Specimens," July 16, 2014 (PDF)
  • AIPLA Comments on the Notice of Proposed Rulemaking, "Reduction of Fees for Trademark Applications and Renewals," June 23, 2014 (PDF)
  • AIPLA Response to "Request for Comments on the Use of Crowdsourcing and Third-Party Preissuance Submissions To Identify Relevant Prior Art," April 25, 2014 (PDF)
  • AIPLA Response to the Notice of Proposed Rulemaking (Extension of Comment Period):  "Changes to Require Identification of Attributable Owner," April 24, 2014 (PDF)
  • AIPLA Response to "Request for Comments and Notice of Roundtable Event on the Written Description Requirement for Design Applications," March 14, 2014 (PDF)
  • AIPLA Comments on "Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs," January 31, 2014 (PDF)
  • AIPLA Response to "Request for Comments on Methods for Studying the Diversity of Patent Applicants," January 31, 2014 (PDF)

2013

  • AIPLA Response to "Request for Comments:  Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution," December 2, 2013 (PDF)
  • AIPLA Comments on USPTO Draft Strategic Plan for Fiscal Years 2014-2018, November 27, 2013 (PDF)
  • AIPLA Comments in Response to the USPTO Announcement, "Share Comments/Suggestions on Draft of Examination Guide:  Applications for Marks Comprised of gTLDs for Domain Name Registration or Registry Services," September 6, 2013 (PDF)
  • AIPLA Comments on "Changes To Implement the Patent Law Treaty," June 10, 2013 (PDF)
  • AIPLA Recommendation Regarding Automatic Applicant Authorization for USPTO To Transmit Pre-Publication Search Results to Foreign Patent Offices, May 22, 2013 (PDF)
  • AIPLA Comments to OMB Regarding Negative Impact of Sequestration on USPTO Funding and Operations, May 21, 2013 (PDF)
  • AIPLA Recommendations for Reducing Paperwork, Time, and Cost for the Office and Applicants With Respect to Sequence Listings, May 20, 2013 (PDF)
  • AIPLA Response to "Request for Comments on a Patent Small Claims Proceeding in the United States," April 30, 2013 (PDF)
  • AIPLA Response to "Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents," April 12, 2013 (PDF)
  • AIPLA Comments on Preparation of Patent Applications, March 15, 2013 (PDF)
  • AIPLA Comments on Matters Related to the Harmonization of Substantive Patent Law, February 28, 2013 (PDF)
  • AIPLA Written Comments in Relation to Leahy-Smith America Invents Act Section 27 Genetic Testing Study and Public Roundtable, February 8, 2013 (PDF)​
  • AIPLA Comments on "Request for Continued Examination (RCE) Practice," February 4, 2013 (PDF)
  • AIPLA Comments on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term, January 25, 2013 (PDF)​

2012

  • AIPLA Comments on Notice of Proposed Rulemaking, "Changes to Representation of Others Before the United States Patent and Trademark Office," December 17, 2012 (PDF)
  • AIPLA Comments on Notice of Proposed Rulemaking, "Setting and Adjusting Patent Fees," November 5, 2012 (PDF)
  • AIPLA Comments on Proposal To Amend the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse, November 5, 2012 (PDF)
  • AIPLA Comments on Adjustment of Fees for Trademark Applications, October 22, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act" and "Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act," October 5, 2012 (PDF)
  • Joint Letter to NTIA and USPTO from U.S. Brand Owners Regarding Second-Level Rights Protection Mechanisms in ICANN's New gTLD Program, August 29, 2012 (PDF)
  • AIPLA Comments to the USPTO on the US/UK Proposal to WIPO on "PCT 20/20," August 17, 2012 (PDF)
  • AIPLA Comments on "Extension of the Full First Action Interview Pilot Program," August 8, 2012 (PDF)
  • AIPLA Comments on "Changes to Implement Micro Entity Status for Paying Patent Fees," July 30, 2012 (PDF)
  • AIPLA Comments on the "Recommendation for the Disclosure of Sequence Listings Using XML," July 16, 2012 (PDF)
  • AIPLA Comments on "Feasibility of Placing Economically Significant Patents Under a Secrecy Order and the Need To Review Criteria Used in Determining Secrecy Orders Related to National Security," June 18, 2012 (PDF)
  • AIPLA Comments on "CPI Adjustment of Patent Fees for Fiscal Year 2013," June 6, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement Inter Partes Review Proceedings," April 10, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement Post-Grant Review Proceedings," April 10, 2012 (PDF)
  • AIPLA Submission on USPTO Proposed AIA Rulemaking (AIPLA, IPO, ABA-IPL), April 9, 2012 (PDF)
  • AIPLA Comments on "Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions," April 9, 2012 (PDF)
  • AIPLA Comments on the "Practice Guide for Proposed Trial Rules," April 6, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement Transitional Program for Covered Business Method Patents,  April 5, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement Derivation Proceedings," April 5, 2012 (PDF)
  • AIPLA Supplemental Comments on Leahy-Smith America Invents Act Section 27, Genetic Diagnostic Testing Study, April 5, 2012 (PDF)
  • AIPLA Comments on Transitional Program for Covered Business Method Patents--Definition of "Technological Invention," April 2, 2012 (PDF)
  • AIPLA Comments on First-Inventor-to-File (Before Proposed Rules), March 28, 2012 (PDF)
  • AIPLA Comments on Leahy-Smith America Invents Act Section 27, Genetic Diagnostic Testing Study, March 26, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees, March 26, 2012 (PDF)
  • AIPLA Comments on "Changes to Implement Miscellaneous Post-Patent Provisions of the Leahy-Smith America Invents Act," March 5, 2012 (PDF)
  • AIPLA Comments on "Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings," March 5, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act," March 5, 2012 (PDF)
  • AIPLA Comments on "Changes To Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act," March 5, 2012 (PDF)
  • AIPLA Comments to the Patent Public Advisory Committee (PPAC) on the "Proposed Patent Fee Schedule," February 29, 2012 (PDF)
  • AIPLA Comments on "Additional USPTO Satellite Offices for the Nationwide Workforce Program," January 30, 2012 (PDF)
  • AIPLA Comments on "Eliciting More Complete Patent Assignment Information," January 23, 2012 (PDF)

2011

  • AIPLA Comments on Leahy-Smith America Invents Act Implementation - Group 2 Rulemakings, November 18, 2011 (PDF)
  • AIPLA Comments on the "Study of Prior User Rights," November 8, 2011 (PDF)
  • AIPLA Comments on the "Study of International Patent Protection for Small Businesses," November 8, 2011 (PDF)
  • AIPLA Comments on Trademark Trilateral Cooperation, October 31, 2011 (PDF)
  • AIPLA Comments on "Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases," September 22, 2011 (PDF)
  • AIPLA Comments on "Revision of the Materiality to Patentability Standard for the Duty to Disclose Information in Patent Applications," September 19, 2011 (PDF)
  • AIPLA Comments Recommending New Metrics for Judging Timeliness of Interference Decisions, July 22, 2011 (PDF)
  • AIPLA Comments on "Streamlined Patent Reexamination Proceedings," July 15, 2011 (PDF)
  • AIPLA Response to Notice of Inquiry Regarding "Trademark Trial and Appeal Board Participation in Settlement Discussions," June 21, 2011 (PDF)
  • AIPLA Comments on "Improving Regulation and Regulatory Review," April 21, 2011 (PDF)
  • AIPLA Comments on "Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications," April 11, 2011, (PDF)
  • AIPLA Resolution Concerning USPTO Solicitor's Amicus Participation in Court Review of USPTO Board Decisions in Interferences, March 23, 2011 (PDF)
  • Response to USPTO regarding Request for Comments on Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures, March 7, 2011 (PDF)
  • AIPLA Response to USPTO on Request for Comments regarding “Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex”, 11 February, 2011 (PDF)
  • AIPLA Response to USPTO on Request for Comments regarding “Proposed Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals”, January 14, 2011 (PDF)
  • AIPLA Comments to USPTO on the Bose Roundtable Suggestions to Improve the Accuracy of Identifications of Goods and Services in Trademark Applications and Registrations at the USPTO, January 12, 2011 (PDF)
  • AIPLA Response to USPTO “Request for Comments on Trademark Litigation Tactics”, January 7, 2011 (PDF)

2010

  • AIPLA Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System, November 19, 2010 (PDF)
  • AIPLA Comments on the TTAB’s Accelerated Case Resolution "Plug and Play" Proposal, September 29, 2010. (PDF)
  • AIPLA Comments on the Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, September 27, 2010 (PDF)
  • AIPLA Comments on the “Enhanced Examination Timing Control Initiative” (75 Fed. Reg. 31763 (June 4, 2010)), August 20, 2010. (PDF)
  • AIPLA Comments on Proposed Changes to Restriction Practice in Patent Applications Requesting, August 13, 2010. (PDF)
  • AIPLA Comments to the Patent and Trademark Office Draft Strategic Plan for FY 2010–2015, August 2, 2010. (PDF)
  • AIPLA Comments to Honorable Gary Locke re resources available to the U.S. Patent and Trademark Office, July 14, 2010. (PDF)
  • AIPLA Letter on Enhancement in the Quality of Patents and Metrics, June 23, 2010. (PDF)
  • AIPLA Comments to the Patent and Trademark Office Fee Modernization Act of 2010, May 17, 2010. (PDF)
  • AIPLA Comments on “Trademarks Next Generation” Information Technology Initiative, April 15, 2010 (PDF)
  • AIPLA Comments on Enhancement in the Quality of Patents; 74 Federal Register 65093 (December 9, 2009), April 5, 2010 (PDF)
  • AIPLA Comments on Pilot Program for Green Technologies Including Greenhouse Gas Reduction,” 74 Federal Register 64666 (December 8, 2009), April 2, 2010 (PDF).
  • AIPLA Comments on revisions to proposed rules on practice before the Board of Patent Appeals and Interferences in ex parte patent appeals, 74 Fed. Reg. 67987 (Dec. 22, 2010), February 25, 2010 (PDF);
  • AIPLA comments on discussion of proposed rules at January 20, 2010 Roundtable, February 25, 2010 (PDF).
  • AIPLA Comments in response to the Notice of the U.S. Patent and Trademark Office (PTO) regarding Procedures for Treating Rejected Claims That Are Not Being Appealed, January 13, 2010. (PDF)
  • AIPLA Comments on Improvement of the USPTO’s efficiency, operation and utilization of the PCT,  January 8, 2010. (PDF)

2009

  • AIPLA Comments on USPTO’s Work Sharing for Patent Applications, filed December 11, 2009. (PDF)
  • AIPLA Encourages the Administration to move forward in implementing Resolution of Advice and Consent to the ratification of the Patent Law Treaty as well as to ratification of the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs, filed July 22, 2009. (PDF)
  • AIPLA Comments on Deferred Examination for Patent Applications, filed February 26, 2009. (PDF)

2008

  • AIPLA Comments on Proposed Changes to Practice for Documents Submitted to the United States Patent and Trademark Office, filed October 6, 2008 (PDF)
  • AIPLA Comments on Proposed Changes to the PCT Transmittal and Search Fees, filed August 15, 2008 (PDF)
  • AIPLA Comments on design patents as invited by the USPTO at the Town Hall Meeting on the Protection of Industrial Designs which it hosted on June 16 in Alexandria, Virginia, filed July 15, 2008 (PDF)
  • AIPLA Comments on encouraging enhancement of the quality of international searches and examinations and their greater use in national stage processing, filed May 23, 2008 (PDF)
  • AIPLA Comments on Proposed Rules Concerning the Changes in Rules Regarding Filing Trademark Correspondence by Express Mail, filed April 29, 2008 (PDF)
  • AIPLA Comments on Proposed Rules Concerning the Time for Filing and the Date of Availability of a Biological Deposit, filed April 21, 2008 (PDF)

2007

  • AIPLA Comments on the proposed revision of the rules of practice pertaining to claims using alternative language, filed October 15, 2007 (PDF)
  • AIPLA Comments on the proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences in ex parte patent appeals, 72 Federal Register 41472 (July 30, 2007), filed September 28, 2007 (PDF)
  • AIPLA Comments on “International Efforts to Harmonize Substantive Requirements of Patent Laws,” 72 Federal Register 24566 (May 3, 2007), filed June 22, 2007 (PDF)
  • AIPLA Comments on the Supplemental Notice of Proposed Rule Making on “Changes to Representation of Others Before the USPTO," filed May 26, 2007 (PDF)
  • AIPLA Comments on Proposed Rule Changes in the: “Requirements for Filing Requests for Reconsideration of Final Office Actions in Trademark Cases", filed April 16, 2007 (PDF)
  • AIPLA Comments on the Final Rule re Changes to Implement Priority Document Exchange Between Intellectual Property Offices, March 21, 2007 (PDF)
  • AIPLA Comments on the Proposed Rule Making entitled “April 2007 Revision of Patent Cooperation Treaty Procedures” filed March 16, 2007 (PDF)
  • AIPLA Comments on Proposed Rule: “Changes to Request for Reconsideration After Final Action” 72 Federal Register 6984, filed February 14, 2007 (PDF)
  • AIPLA Comments of AIPLA on the Government Working Group Report on the concept of a Global Patent Application, filed January 31, 2007 (PDF)
  • AIPLA Comments to the Patent Public Advisory Committee of the United States Patent and Trademark Office in response to a solicitation for input from stakeholders [REQUEST] on steps the USPTO can take to enhance the quality of examination, reduce pendency, and improve the efficient and effective use of patents, filed January 29, 2007 [RESPONSE]

2006

  • AIPLA Comments on USPTO 2007-12 Strategic Plan, filed October 6, 2006 (PDF)
  • AIPLA Comments on Changes to Information Disclosure Statement Requirements, filed September 6, 2006 (PDF)
  • AIPLA Comments on the proposed rules on the “Removal of Paper Search Collection of Marks That Include Design Elements," filed August 22, 2006 (PDF)
  • AIPLA Comments on the Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, filed July 28, 2006 (PDF)
  • AIPLA Comments on the proposed rules: "Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination - 71 Fed. Reg. 16072 (March 30, 2006), filed May 30, 2006 (PDF)
  • AIPLA Comments on the proposed notice to eliminate the Disclosure Document Program —71 Fed. Reg. 17399 (April 6, 2006), filed May 3, 2006 with The Honorable Jon Dudas (PDF)
  • AIPLA Comments on Proposed Rules: Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims” 71 Fed. Reg. 48 (January 3, 2006), filed April 24, 2006 with The Honorable Jon Dudas (PDF)
  • AIPLA Comments on Proposed Rules: “Changes to Practice for the Examination of Claims in Patent Applications” 71 Fed. Reg. 61 (January 3, 2006), filed April 24, 2006 with The Honorable Jon Dudas (PDF)
  • AIPLA Comments on Proposed Changes to TTAB Rules, filed March 16, 2006, with The Honorable Jon Dudas (HTML, PDF)
  • AIPLA Comments on Electronic Filing of International Patent Applications, filed January 2, 2006, with The Honorable Jon Dudas (PDF)

2005

  • AIPLA Comments on: Choice of International Searching Authorities, filed November 25, 2005 (HTML- Not available)
  • AIPLA Comments on the PTO's advance notice of proposed rule making regarding the acceptance, processing, use and dissemination of chemical and three-dimensional biological structural data in electronic format, August 22, 2005 (PDF)
  • AIPLA Comments on the proposed changes to implement the patent search fee refund provisions of the 2005 Consolidated Appropriations Act, August 22, 2005 (PDF)
  • Resolution: Harmonization of Patent Systems, May 2005 (PDF – 67K*)
  • AIPLA Comments to the Notice of Proposed Rule Making: “Requirements to Receive a Reduced Fee for Filing an Application through the “Trademark Electronic Application System” 70 Federal Register 17636 (April 7, 2005) (PDF - 30K*)
  • AIPLA Comments the Interim Rule on the Revision of Search and Examination Fees for Patent Cooperation Treaty Applications, submitted April 1, 2005 (PDF - 40K*)
  • AIPLA Comments on Proposed Rule: “Changes to the Practice for Handling Patent Applications Filed Without the Appropriate Fees," submitted March 29, 2005 (PDF - 23K*)
  • AIPLA Comments to the USPTO on the Interim Rule to Implement the Cooperative Research and Technology Enhancement Act of 2004, submitted February 10, 2005 ( PDF - 45K*)

2004 and earlier (links coming soon!)

  • Industry Trilateral comments on Proposed PCT Filing Fee Increase, September 22, 2004 (PDF – 287K*)
  • AIPLA Comments to Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office regarding the PCT Fee increases, submitted September 13, 2004. (HTML or PDF)
  • AIPLA Comments on the revisions to the enrollment and discipline rules proposed December 12, 2003 (68 Fed. Reg. 69442), subject to the notices extending the comment period (69 Fed. Reg. 4269 (January 29, 2004) and 69 Fed. Reg. 9986 (March 3, 2004)). The comments and suggestions below address the proposed definitions of Subpart A, Subpart D, and the proposed rules in general as they relate to Subpart D. (Comments submitted on June 6, 2004) PDF only (208K)
  • Resolution for a Path Forward in WIPO Harmonization Talks from the Industry Trilateral, February 2004 (PDF – 229K*)
  • AIPLA Comments on the Equities of Inter Partes Reexamination Proceedings in Response to the Notice and Invitation Published at 68 Fed. Reg. 75217 (December 30, 2003) (Comments submitted on February 20, 2004). HTML or PDF (48K)
  • AIPLA Comments on the Notice of Proposed Rulemaking Changes to Representation of Others Before the Patent and Trademark Office 68 Federal Register 69442 (December 12, 2003) (Comments submitted on February 7, 2004). (PDF)
  • AIPLA Comments on the proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences, 68 Federal Register 66648 (November 26, 2003) (Comments submitted on January 26, 2004). PDF (121K)
  • AIPLA Comments on Notice of Office Plan to Cease Supplying Copies of Cited U.S. Patent References With Office Actions, and Pilot to Evaluate the Alternative of Providing Electronic Access to Such U.S. Patent References (Comments submitted on January 15, 2004). HTML or PDF (48K)
  • AIPLA Comments on Notice of Proposed Rulemaking Revision of Patent Term Extension and Patent Term Adjustment Provisions Related to Decisions by the Board of Patent Appeals and Interferences 68 Fed. Reg. 67818 (Comments submitted on January 2, 2004) PDF (51K)
  • AIPLA Comments on Notice of Proposed Rulemaking Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan 68 Fed. Reg. 53816, September 12, 2003, (Comments submitted on November 12, 2003). (PDF)
  • AIPLA Comments on the Proposed Rulemaking Clarification of Power of Attorney Practice and Revisions to Assignment Rules—68 Fed. Reg. 38258; June 27, 2003, (Comments submitted August 25, 2003). PDF
    AIPLA Comments on the Notice of Proposed Rulemaking—January 2004 Revision of Patent Cooperation Treaty Application Procedure—68 Fed. Reg. 32441; May 30, 2003, (Comments submitted, June 26, 2003) HTML or PDF (42K)
  • AIPLA Response to the USPTO’s Notice of Proposed Rulemaking for Trademark—Related Filings Under the Madrid Protocol Implementation Act, 68 Fed. Reg. 15119 (March 28, 2003) (Comments submitted, May 26, 2003) PDF (76K)
  • AIPLA Comments on the Notice of Proposed Rulemaking Changes to Implement the 2002 Inter Partes Reexamination and Other Technical Amendments to the Patent Statute 68 Fed. Reg. 22343 (April 28, 2003), Comments submitted, June 26, 2003. PDF (38K)
  • Highlights of the New USPTO Fee Bill. PDF (44K)
  • On February 5th, the USPTO released a revised fee bill to support its Strategic Plan. The revised fee bill can be found at the following link:
    http://www.uspto.gov/web/offices/com/strat21/feebill.htm
  • Highlights of Changes to the USPTO's 21st Century Strategic Plan PDF (11K)
  • On February 3rd, the USPTO released a revised 21st Century Strategic Plan, which can be viewed at the following link (295K):
    http://www.uspto.gov/web/offices/com/strat21/stratplan_03feb2003.pdf
  • AIPLA Comments on the Notice of Proposed Rulemaking, Changes to Implement Electronic Maintenance of
  • Official Patent Application Records (68 Fed. Reg. 14365 (March 25, 2003)), April 24, 2003
    HTML or (PDF-60K*)
  • AIPLA Comments on "Recording Assignments," December 18, 2001 (29K*).
  • AIPLA Comments on the USPTO's Notice of Request for Comments on Proposed Rules to Make Electronic Filing of Trademark Documents Mandatory, October 29, 2001 (32K*).
  • AIPLA Comments on the USPTO's "Notice of Request for Comments on Development of a Plan to Remove the Patent and Trademark Classified Paper Files From the Public Search Facilities," October 29, 2001 (39K*).
  • AIPLA Comments on the "Preliminary Draft Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters in response to the notice published in the Federal Register on August 20, 2001 (66 Fed. Reg. 43575)," October 24, 2001 (66K*).
  • AIPLA Comments on "Notice of Request for Comments on Development of a Plan to Remove the Patent and Trademark Classified Paper Files From the Public Search Facilities," October 9, 2001 (41K*).
  • AIPLA Comments on "Requirements for Claiming the Benefit of Prior-Filed Applications Under Eighteen-Month Publication of Patent Applications," October 5, 2001 (53K*).
  • AIPLA Comments in response to the USPTO notice of March 19, 2001, (66 Federal Register 15409-15411) requesting input on 17 issues relating to patent harmonization, April 30, 2001 (3.5M*)
  • AIPLA Comments on "Standard for Declaring a Patent Interference," March 27, 2001 (37K*).
  • AIPLA Comments to USPTO on the Hague Convention (Jurisdiction/Judgments), December 8, 2001 (42K*).
  • AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Treatment of Unlocatable Application and Patent Files" 65 Fed. Reg. 42309, July 10, 2000.
  • AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Rules to Implement Optional Inter Partes Reexamination Proceedings" 65 Fed. Reg. 18154, April 6, 2000.
  • AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Changes to Implement 18-Month Publication of Patent Applications" 65 Fed. Reg. 17946, April 5, 2000.
  • AIPLA Comments on the Notice of Proposed Rulemaking Entitled "Changes to Implement Patent Term Adjustment Under Twenty- Year Patent Term" 65 Fed. Reg. 17215 (March 31, 2000)
  • AIPLA Comments on the Notice of Interim Rulemaking Entitled "Changes to Application Examination and Provisional Application Practice" 65 Fed. Reg. 14865, March 20, 2000.
  • Comments to PTO on Written Description and Utility Requirements Guidelines, March 27, 2000.
  • Comments on the Notice of Proposed Rulemaking Entitled "Changes to Implement the Patent Business Goals" 64 Fed. Reg. 53772, October 4, 1999.
  • Comments on the Interim Supplemental Examination Guidelines for Determining the Applicability of 35 U.S.C. § 112, paragraph 6, 64 Fed. Reg. 41392, July 30, 1999.

Recent Advocacy

Written October 21, 2022

Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office’s guidance on patent subject matter eligibility under Section 101 of the Patent Act. 

The response recommends maintaining the current guidance for the time being, but offers suggested improvements, including continuing to stress to examiners that the guidance be closely followed to ensure greater predictability, quality, and efficiency of patent examination.

Additionally, the response suggests that the guidance be updated to clarify how claims directed to functional improvements in various technological fields could integrate an abstract idea into a practical application, and that, for certain technologies, subject matter eligibility decisions are more unpredictable. With few judicial opinions on which to base examples for these technologies, AIPLA recommends the Office develop guidance in these technical areas. 

Finally, as there is sometimes reasonable disagreement between the applicant and examiner on how the claims should be interpreted with a rejection based on ineligibility, The response recommends providing additional guidance on claim interpretation in the context of a section 101 analysis, and that the Office should continue to emphasize that subject matter eligibility must be evaluated on a claim-by-claim basis. 

 

To view the complete comments, please download the comment letter posted to the right of this page.