electronic patent assignment system

PTAB/USPTO Update - December 2023

David l. cavanaugh, jason d. kipnis, heather m. petruzzi, brian j. lambson, phd, akkad y. moussa, alexander j. nemtzow, gilbert t. smolenski, related solutions.

• Intellectual Property Counseling and Prosecution
• Post-Grant Proceedings

Patent Center Replaces EFS-Web and Private PAIR 

On November 15, following a one-week delay, the legacy EFS-Web and Private Patent Application Information Retrieval (Private PAIR) systems were officially retired and fully replaced by the Patent Center system. In a blog post , Commissioner for Patents Vaishali Udupa described the Patent Center system as a "one-stop shop" for USPTO customers that integrates all the steps of filing and managing a patent application together into one central system.

USPTO News 

On November 9, the USPTO announced that a new assignment system, Intellectual Property Assignment System (IPAS), will be available to customers starting on January 15, 2024. IPAS will replace the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) and will combine their functionality into one system. 

The USPTO issued a summary of responses to its June 2023 Request for Comments (RFC) requesting public input on where to establish the Southeastern Regional Office (SERO) and the Northern New England Community Outreach Office (NNECOO) as required by the Unleashing American Innovators Act of 2022. 

On November 17, the USPTO and the Mexican Institute of Industrial Property (IMPI) launched an Accelerated Patent Grant (APG) initiative that gives eligible patent applicants the option of using an expedited process for obtaining a patent grant in Mexico based on a US patent grant. 

Notices, Guidance, and Requests 

Semiconductor Technology Pilot Program , 88 Fed. Reg. 83925 (Dec. 1, 2023) ( press release ) [announcing the Semiconductor Technology Pilot Program, which is designed to accelerate improvements in the semiconductor industry by expediting examination of patent applications for certain semiconductor manufacturing innovations. The program will accept petitions to make special beginning December 1, 2023 until either December 2, 2024 or the date the USPTO accepts a total of 1,000 grantable petitions, whichever occurs first] 

Guidance: Examination of Design Patent Applications Related to Computer-generated Electronic Images, Including Computer-generated Icons and Graphical User Interfaces , 88 Fed. Reg. 80277 (Nov. 17, 2023) [publishing supplemental guidance to be used by USPTO personnel in determining whether a design claim including a computer-generated electronic image is directed to statutory subject matter] 

Final Rules 

Representation of Others in Design Patent Matters Before the United States Patent and Trademark Office , 88 Fed. Reg. 78644 (Nov. 16, 2023) (effective Jan. 2, 2024) [amending the rules of practice in patent cases and the rules regarding the representation of others before the USPTO by creating a separate design patent practitioner bar whereby admitted design patent practitioners would practice in design patent proceedings only] 

Interim Rules 

There are no new interim rules. 

Proposed Rules 

There are no new proposed rules. 

PTAB Decisions 

New Precedential PTAB Decisions   

Penumbra, Inc. v. RapidPulse, Inc. , IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) [clarifying the distinction between pre-AIA 35 U.S.C. § 102(e) and AIA 35 U.S.C. § 102(d) and holding that the requirement in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. , 800 F.3d 1375, 1378 (Fed. Cir. 2015) that under pre-AIA 35 U.S.C. § 102(e), a reference patent’s claims must have written description support in its provisional application in order to be entitled to the filing date of the provisional application, does not apply to AIA 35 U.S.C. § 102(d)] 

New Informative PTAB Decisions  

There are no new informative PTAB decisions. 

New Director Review Decisions 

Weber, Inc. v. Provisur Technologies, Inc. , IPR2022-00599 

Decision subject to Director Review – Paper 67 (public version of confidential Paper 65) (August 29, 2023) [Final Written Decision finding some claims unpatentable] 

Decision vacating Final Written Decision and remanding for further proceedings – Paper 74 (November 29, 2023) [finding that “the Board should have either (i) considered Patent Owner’s evidence [supporting its arguments on motivation to combine], when determining whether Petitioner has sufficiently established a motivation to combine the cited references, or (ii) excluded the evidence in response to Petitioner’s Motion to Exclude"] 

ResMed Corp. v. Cleveland Medical Devices Ind. , IPR2023-00565 

Decision subject to Director Review – Paper 13 (September 25, 2023) [Institution Decision denying institution] 

Decision granting Director Review, vacating decision denying institution, and remanding for further proceedings – Paper 15 (November 16, 2023) [finding that “there is good cause to authorize Petitioner to file a reply on the § 314(a) issues raised by Patent Owner’s Sur-Reply [because] Petitioner did not have the opportunity to address Patent Owner’s new argument on time-to-trial statistics for [the district court judge and because the] Board relied on the vacated Vector Flow decision to resolve the time-to-trial statistics to weigh in favor of discretionarily denying institution.”] 

SynAffix B.V. v. Hangzhou DAC Biotech Co., Ltd. , IPR2022-01531 

Decision subject to Director Review – Paper 17 (August 22, 2023) [Institution Decision denying institution] 

Order delegating Director Review to a Delegated Rehearing Panel – Paper 19 (November 16, 2023) [ordering review by an independent Delegated Rehearing Panel, selected from a pool of senior judges excluding those who issued the reviewed decision, to "review the issues presented in this case ... and to determine whether to grant rehearing"]

DK Crown Holdings Inc. v. Diogenes Limited , IPR2023-00268               

Decision subject to Director Review – Paper 9 (August 11, 2023) [Institution Decision denying institution] 

Order delegating Director Review to a Delegated Rehearing Panel – Paper 11 (November 7, 2023) [ordering review by an independent Delegated Rehearing Panel, selected from a pool of senior judges excluding those who issued the reviewed decision, to "review the fact-intensive issues presented in this case ... and to determine whether to grant rehearing"]

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More From This Series

Ptab/uspto update - november 2023, ptab/uspto update - january 2024.

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Ant-Like Persistence

USPTO postpones again, and lies about, and renames, its “son of EPAS/ETAS”

(Update:  the migration has now been postponed for a third time, see blog article .)

It’s embarrassing to see the USPTO lying about what it previously said about when it would launch its “son of EPAS/ETAS” system. 

Today the USPTO said this:

As part of our efforts to improve our services and strengthen the customer experience, as previously announced , on January 22, 2024 , Assignment Center will replace the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS).

(screen shot quoted above.)  It is simply false for the USPTO to say today, that what it “previously announced” was a launch date of January 22, 2024.  If you click on the link, you will reach (quoted at right) what purports to be a press release on the USPTO’s web site dated November 9, 2023.  But the USPTO faked it.  What the USPTO really said on November 9, 2023 is:

As part of our updates to online services, The U.S. Patent and Trademark Office (USPTO) is reforming the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system:  the Intellectual Property Assignment System (IPAS).  IPAS will be available to customers starting on January 15, 2024.

What happened is that today, January 11, 2024, the USPTO replaced the November 9, 2023 press release with a backdated fake.  The USPTO now pretends that what it said on November 9 was that the launch date would be January 22, when what the USPTO actually said on November 9 was that the launch date would be January 15.  You can see, quoted at right, what the USPTO actually said on November 9, 2023.

I guess this seven-day postponement of the launch date is so embarrassing to the USPTO that it actually lies about what it previously said about the launch date.

The backdated fake also pretends that on November 9, 2023 the name of the new system was supposedly “Assignment Center”.  But on November 9, 2023 the name of the new system was a four-letter initialism IPAS (“Intellectual Property Assignment System”).

This is not, however, the first postponement of the launch date of this “son of EPAS/ETAS” system.  On October 31, 2023, the USPTO originally announced (screen shot at right) that the launch date would be December 4, 2023.

The USPTO says:

Starting January 22 , how-to guides, training materials, and a set of frequently asked questions will be available on the Assignment Center webpage.

USPTO says it plans to shut down the EPAS and ETAS systems at the same time that it launches the successor system.  This means that if there are any defects or bugs in the new system, users will not be able to work around the defects and bugs by e-filing in the legacy systems.  And this means that if there are any problems with the user interface design that make it difficult or impossible to figure out how to accomplish particular tasks, users will not have had any opportunity to work them out ahead of time.  Instead, the “how-to guides” and “training materials” and “set of frequently asked questions” will be withheld from users until the actual launch date.

Conspicuous by its absence in USPTO’s press releases and announcements is any hint or suggestion that any effort was made to ask users whether there was even a problem for which this new system is supposedly the solution.  I am not aware of any user having asked for the USPTO to shut down the legacy systems or to replace them with a new and different system.  The USPTO did not, for example, reach out to the practitioner community to find out what new features the practitioner community actually wants for this new system.  The USPTO did not, for example, reach out to the practitioner community to find out what was supposedly wrong with EPAS or ETAS that supposedly needed fixing.  The USPTO did not share initial user interface designs or mock-ups with the practitioner community.  The USPTO did not conduct any external-user alpha testing or beta testing.

Perhaps this second postponement of the launch date of the new system will permit the USPTO to squeeze in at least a little bit of meaningful customer involvement.  In the time between today (January 11) and the again-postponed launch date (January 22), perhaps the USPTO can:

• get in touch with actual users to provide a beta testing opportunity;
• get in touch with actual users to find out if there are things wrong with EPAS/ETAS that need fixing in AC;  and
• get in touch with actual users to find out what actual users would like to see in AC.

There is no doubt that the members of  the Patent Center listserv  and the members of  the e-Trademarks listserv  would be willing, and indeed eager, to assist the USPTO with these three things.

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6 replies to “uspto postpones again, and lies about, and renames, its “son of epas/etas””.

As Carl pointed out November 12, 2023, the Patent Office did a similar thing when it changed the launch date of Patent Center on an already-issued press release to reflect the delayed launch.

Here’s Carl’s post on that: https://blog.oppedahl.com/uspto-tries-to-conceal-the-patent-center-blink/

So it’s not quite statistically accurate to say it’s a trend, but it’s still wrong both times. How often is this done? And why?

Thanks Carl. Until now I thought it was just me who had missed the announcements about the alpha- and beta-testing and the transition period, and who is cynical of the PTO’s IT abilities based on past experience. But I am not as optimistic as you: I don’t see the PTO breaking its unblemished streak of failing to engage the user community before launch.

Applicants and attorneys get zapped if they make a false statement to the PTO. But the PTO lying to the public? No problem!

I don’t think lying at the PTO started with Kathi Vidal, but it certainly seems to have taken on new heights on her watch.

Since this is the same pattern we saw in November with the harmful Patent Center replacing the functional legacy systems, maybe something less ethereal than organizational pride is involved. Could it be that there are some bonuses on the line for meeting the “previously announced” dates of implementation — whether it is bonuses to USPTO staff or to the mysterious software company with the $2 billion no-bid grant for software work for the USPTO? Is it possible that by deceptively changing the listed dates, they can pretend the project was ready on time and let the bonus bucks flow?

The PTO announced today on the systems availability page that ETAS and EPAS will be down starting at 9am on Friday, January 19 for the launch of “IPAS (Assignment Center)” and expect the new system to be available at 11pm ET at assignmentcenter.uspto.gov. So we now have a URL for the new system, even though trying that URL now gets “Access denied.”

Of course, neither ETAS nor EPAS appear reachable right now.

Thank you Richard for commenting. Your comment prompted this blog article .

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Thursday, November 30 2023   \  Published by USPTO.

Coming soon: USPTO’s new modernized assignment system is replacing ETAS and EPAS

November 9, 2023

As part of our updates to online services, the U.S. Patent and Trademark Office (USPTO) is reforming the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system: the Intellectual Property Assignment System (IPAS). IPAS will be available to customers starting on January 15, 2024.

This new system provides integrated information support by processing all patent and trademark reassignment requests, in which a patent or trademark holder transfers ownership or changes the owner’s name on their pending or granted application or registration. IPAS also enhances customer service by enabling USPTO staff to track the status of customer requests, record data, and issue reports from one secure cloud-based system.  Read more

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USPTO Unveils Modernized Assignment System: IPAS to Replace ETAS and EPAS

• December 7, 2023

In a move towards enhancing online services, the U.S. Patent and Trademark Office (USPTO) is undergoing a transformation by merging the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into a unified and modernized platform – the Intellectual Property Assignment System (IPAS). Scheduled for launch on January 15, 2024, IPAS aims to streamline processes and provide a seamless experience for users.

IPAS consolidates patent and trademark reassignment requests, facilitating the transfer of ownership or modifications to the owner’s name on pending applications, granted applications, or registration. Beyond simplifying these transactions, the system also introduces improved customer service by allowing the USPTO to track request statuses, record essential data, and issue reports from a single, secure cloud-based system.

This initiative reflects the USPTO’s commitment to staying at the forefront of technological advancements, ensuring a more user-friendly and efficient experience for its customers. Read USPTO’s official announcement here to learn more.

Mridu Katoch

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USPTO’s new Assignment Center to replace EPAS and ETAS this month

Published on: 01/11/2024 10:30 AM

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EFS-Web and Private PAIR to be retired

After November 15, 2023, EFS-Web and Private PAIR will no longer be available. Patent Center will be the system to electronically file and manage patent applications. 

Go to Patent Center

Update bookmarks and favorites from EFS-Web and Private PAIR to Patent Center  

• Private PAIR
• EFS-Web Registered
• EFS-Web Unregistered
• EFS-Web Contingency
• Create a new bookmark to Patent Center  at  https://patentcenter.uspto.gov .  

Patent Center information  

• For new system information, see the  Patent Center User Guide  or visit the  Patent Center Information page .
• To access publicly available documents, see the  Patent Center Quick Reference Guide .
• To prepare for the transition, we are hosting several training sessions to provide details and answer questions. Please register at  Transition from EFS-Web and Private PAIR to Patent Center training.

For assistance, contact the Patent Electronic Business Center (EBC) at 866-217-9197 during their operating hours of 6 a.m. to midnight ET, Monday - Friday, or email  [email protected] .  

Patent Center accounts  

• A verified account enables users to view their pending patent applications and to file follow-on submissions.
• Practitioners and independent inventors require a verified USPTO.gov account to use  Patent Center . 
• Obtain a verified USPTO.gov account using the  verification process .  

Frequently asked questions  

• General FAQs
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