Attention, inventors, in-house counsel, and anyone with a vested interest in the world of intellectual property: the USPTO just issued its final rule for patent fees. This is a follow-up to the 2023 proposal—but with a slightly softer landing.

Starting January 19, 2025, the cost of securing those all-important patent rights is going up—because inflation, higher examiner pay, and new small-entity discounts have left the USPTO needing more revenue to keep the lights running. USPTO Director Kathi Vidal, who is heading back to private practice next month, assures us these changes will “enhance examination quality” and keep pendency goals on track. So, while you may be feeling the burn in your wallet, rest easy knowing the extra cash is (hopefully) going to good use.

Most fees will increase by 7.5% across the board (down from the proposed 10%—phew!). Filing, search, and examination fees will see a smaller bump of 2.5%. Still, the USPTO points out that these increases are lower than inflation since 2020, so… yay for perspective?

Here is a brief summary of what is changing and what is staying (relatively) the same after some heavy public pushback. The fee changes are not limited to the fees discussed below. As noted in the Federal Register notice, the USPTO is setting or adjusting 433 fees, including 52 new fees.

  • Patent Term Extensions (PTE): Originally slated to jump from $1,180 to $6,700, the fee is now a more reasonable $2,500. Drug industry critics called the earlier hike a “tax on innovation,” and the USPTO relented, but only a little.
  • Requests for Continued Examination (RCEs): No more tiered pricing! The second and subsequent RCEs will now cost $2,860 (instead of the proposed $3,600 for the third). Critics argued the previous plan penalized applicants for clarifying rights. The USPTO says it’s not here to discourage filings, just to align fees with costs.
  • Continuing Applications: Filing fees kick in at six years ($2,700) and nine years ($4,000) after the original application, giving applicants more breathing room than the five- and seven-year proposals from 2023.
  • Design Patents: Filing will now cost $2,600 (up from $1,760). Critics argue that it is too steep compared to other countries, but the USPTO says its examinations are more thorough.
  • PTAB Proceedings: Inter partes review will now set you back $23,750 for up to 20 claims. Post-grant reviews? $25,000. Ouch.
  • Director Reviews: This new fee ($452) covers requests for the USPTO director to review PTAB decisions. Fun fact: this used to be free. All good things must come to an end!

With fee-setting authority expiring in 2026, it’ll be interesting to see if Congress lets the USPTO keep the reins. Critics are warning that these “dramatic” increases could put the USPTO’s fee-setting authority in jeopardy. The office counters that it’s listening to feedback while staying financially responsible. With the freshly minted Department of Government Efficiency (DOGE) on the horizon, perhaps the USPTO is preemptively hedging against potential cost-cutting interventions. Stay tuned—this could get interesting!

Mark your calendars for January 19 and get those budgets ready. These fee changes are approaching fast. If you are working with budget constraints, consider filing your patent application or tackling related prosecution matters before the deadline to save some cash.

Originally sourced from Seyfarth’s The Blunt Truth Blog.

Recent legislative changes in California have opened up exciting opportunities for cannabis lounges and retailers. With a new law allowing on-premise consumption areas, the sale of food and drinks, and the hosting of live music events, businesses are gearing up to create unique and engaging experiences. However, as these businesses expand and innovate, it’s crucial for all brand owners to consider the implications for trademarks in the cannabis industry. 

This “cannabis café law” will allow existing cannabis retailers and consumption lounges to sell non-cannabis food and beverages and host live entertainment. The bill goes into effect January 1, 2025. 

The relatedness of cannabis and non-cannabis food and beverage goods is not newsworthy.  Indeed, consumption of the former may lead to indulgence in the latter. But the cannabis café law could potentially lead to consumers associating a brand in the cannabis industry with one that is not.

For instance, cannabis infused baked goods could be provided at the same location as your favorite cookie brand. Chasing your favorite soda with a cannabis infused beverage may shortly be a possibility. After a Mission burrito for dinner, you could catch a show across the street at a cannabis café. 

With the line between cannabis and non-cannabis offerings blurring more than ever, it may be difficult for business owners to distinguish themselves. Also, it’s more important for those in the food and beverage space to consider existing cannabis brands before adoption of a trademark. 

So, what are some things to mull over before the first cannabis café opens?

  • Cannabis café operators should consider existing brands for restaurants, entertainment spaces, and food and beverage goods before adopting a trademark for their café. 
  • Non-cannabis brands should determine whether a cannabis café’s trademark encroaches on rights to their goods or services.
  • Cannabis operators should evaluate their existing trademark portfolio, in particular California state registrations, and determine whether additional filings for restaurant or entertainment services are warranted.
  • Irrespective of industry, those in states neighboring California should keep an eye on cannabis café brands that may conflict with their trademark rights.
  • Consideration should be given to whether federal trademark rights may be provided for non-cannabis related goods and services offered by a cannabis brand.

The cannabis industry continues to evolve and converge with those operating in separate but perhaps related industries. Ensuring that your marks are distinguishable from others in a crowded field of operators is crucial for ensuring a valuable brand. We’ll see what happens after the smoke clears and cannabis cafés are in full swing. 

November 11 – 13, 2024
Fairmont Scottsdale Princess
Scottsdale, AZ

Seyfarth Shaw is a sponsor for the 2024 ANA Masters of Advertising Law Conference, the biggest advertising, marketing, and promotion law conference in the nation.  The conference will take place November 11-13 at the Fairmont Scottsdale Princess in Scottsdale, Arizona. During the conference Seyfarth attorneys Joe Orzano and Kristine Argentine will present on a breakout panel and Ken Wilton, Ameena Majid, and Gina Ferrari will lead a roundtable discussion. Additional details are provided below. 

BREAKOUT 5D: CONSUMER CLASS ACTION LITIGATION UPDATE

Monday, November 11, 2024

This session will focus on consumer class actions, including false advertising and privacy class actions.  The panel will feature insights on litigation trends including common claims and types of products and services targeted, as well as theories of liability, over the past year.  The panel will also discuss defenses to commonly asserted false advertising and privacy claims and how those defenses are being received by courts.  The panel will also include the latest proactive tips and strategies to maintain active advertising and marketing of products and services, while minimizing the risk of being targeted by the plaintiffs’ bar.

Panelists:

Joe Orzano
Partner and National Co-Chair, Advertising & Marketing Group
Seyfarth Shaw LLP

Kristine Argentine
Partner and National Chair, Consumer Class Action Defense Group
Seyfarth Shaw LLP

Jessica Bahr
Vice President, Deputy General Counsel
Constellation Brands

Jenn Greenberg
General Counsel
Frida

ROUNDTABLES WITH THE EXPERTS: THE PERILS OF OVERHYPE: UNMASKING GREENWASHING AND AI WASHING

Tuesday, November 12, 2024

In today’s world, companies are expected – and even required – to share their environmental and other ESG advancements to gain consumer trust.  It’s table stakes to maintain and increase market share.  Not all claims are as genuine as they seem; even if well-intentioned.  This roundtable will explore the potentially deceptive practices of greenwashing, AI washing, rainbow washing, and other exaggerations of an organization’s progress.  We’ll touch on the risks and consequences of these misleading tactics, from both a regulatory and a civil liability perspective.  Join Ameena Majid, Gina Ferrari and Ken Wilton of Seyfarth Shaw as they prompt discussions surrounding these timely and increasingly important topics.

Presenters:

Ken Wilton
National Co-Chair, Advertising & Marketing Group and National Trademark Practice Lead

Ameena Majid
Seyfarth’s Impact & Sustainability Partner and Co-Chair of the firm’s Impact & Sustainability Practice Group

MORE INFORMATION & TO REGISTER

World Trademark Review quoted Ken Wilton in its article, “US presidential election 2024: what a Donald Trump victory could mean for trademarks in the United States,” on October 19. Wilton discussed what a Trump victory would mean for the future of brand protection.

“A new Trump administration is likely to renew its prior efforts to combat counterfeiting and piracy with more overt threats to online platforms to implement more stringent anti-counterfeiting measures.”

The full article is available here.

Seyfarth’s Lauren Leipold and Ken Wilton co-authored “Courts and TTAB weigh in on First Amendment defence and scope of rights protection under the Lanham Act,” the exclusive United States chapter for WTR’s Trademark Litigation Review 2025. The Seyfarth attorneys discussed an overview of key developments in trademark litigation in the United States over the past year. World Trademark Review describes the Review as “cast[ing] an expert eye on some of the most pressing issues facing those involved in litigation on both sides of the divide, blending analytic insight with on-the-ground expertise from the key regions of the Americas, the Asia-Pacific, and Europe, the Middle East and Africa.”

The full article is available here.

Halloween is a time for goblins, ghouls, and—if you’re an inventor—a whole lot of creative thinking! Among the cauldron of Halloween patents, one particularly clever design stands out: a patented method for decorating pumpkins (and, technically, other fruits…but we’re not holding our breath for Halloween coconuts). Meet U.S. Patent 6,855,224, an invention that makes it easy to transfer intricate designs onto pumpkin surfaces.

This invention takes the hassle out of the traditional pumpkin pattern transfer process. These days, social media is full of reels showing tricks to make pumpkin carving a real treat. Still, for those of us who grew up carving with mom’s dull kitchen knife, we know the process can be harder than waking the dead, so you’ll appreciate the genius behind this idea. Here, the magic is in a patterned adhesive sheet that sticks directly to the pumpkin (or your “fruit” of choice). Just peel off the liner, press the sheet onto your pumpkin, and carve along the lines. And when you’re done? Just peel away the sheet to reveal a spooky, professionally styled creation! Gone are the days of dealing with fading marker outlines when trying to carve the pumpkin.

Interestingly, this patent isn’t just for pumpkins; it’s broad enough to cover all fruits and vegetables! But let’s be real, Halloween is a pumpkin’s night to shine. Broadening the scope is a classic patent strategy so that the invention can apply to a wide range of surfaces, just in case anyone decides that jack-o’-lantern watermelons should be a thing.

Interestingly, this patent only covers the method of decorating fruits and vegetables, not the product itself. Specifically, the claims protect a series of steps: providing the product, peeling the liner, sticking the adhesive pattern onto the pumpkin, and carving along the lines. While method claims can pack a punch in areas like communications, machine learning, or manufacturing, enforcement can be tricky when the method is direct to using a product because the “infringer” is the user of the product (i.e., the person carving the pumpkin). You’d have to be a real witch to enforce a patent against Halloween fans!

In some cases, when method claims are at play, patent holders may go after manufacturers or sellers of infringing products under an inducement theory. To prove inducement, the patent holder would need to show that a seller or manufacturer encouraged consumers to use the infringing product in a way that infringed on the patented method—usually through marketing materials or instructions. To overcome inducement allegations, the seller/manufacturer can show that the infringing product has non-infringing uses. For example, similar stencils could even be marketed as fun tools to decorate fruits and vegetables without carving along the lines!

Luckily for all the fruit and vegetable carvers out there, this patent expired in 2022, so there is no need to fear any courtroom frights! As you head out trick-or-treating this Halloween on the hunt for those elusive full-size candy bars, take a moment to appreciate the art of pumpkin carving. And who knows, maybe you’ll spot a carved fruit or two along the way!

Seyfarth IP partner, Matthew Moersfelder, authored an article, “Penn State Merchandise Case Runs Up Costs for Trademark Owners,” in Bloomberg Law . Moersfelder discussed the impact of Pennsylvania State University suing Vintage Brand LLC, alleging the company willfully infringed various Penn State trademarks by selling products featuring those marks on its website.

“If consumers are purchasing merchandise solely because they want to show support for a favorite company or brand, but not because they believe the merchandise itself is affiliated or endorsed by the company or product, then a similar result should follow.”

The article was also later referenced in Print & Promo Marketing.

On October 7, Seyfarth partner Lauren Leipold co-presented a Strafford webinar on “International Trademark Protection After Abitron: Branding and Enforcement Considerations.” Lauren was joined by Thomas Brooke of Holland & Knight and Martin Schwimmer of Leason Ellis.

The Supreme Court’s ruling in Abitron v. Hetronic (U.S. 2023) limited the extraterritorial reach of the Lanham Act, stating that infringement claims are confined to domestic uses. This raises important questions about what constitutes “use in commerce” under the Act, and underscores the necessity for U.S. trademark owners to explore robust strategies for protecting their marks internationally.

The panel of experienced trademark attorneys discussed the implications of the Abitron decision and what U.S. companies should do if they believe they are victims of foreign trademark infringement. The panel also discussed how this informs and impacts a company’s brand protection and enforcement strategies within and outside the U.S. The discussion was a reminder of the evolving challenges in trademark law and the importance of staying informed.

Key Takeaways from the Webinar

  • The standard for “use in commerce” remains murky. The panel discussed differing approaches and definitions adopted by lower courts and by the Supreme Court in Abitron, suggesting that post-Abitron, more direct ties to U.S. commerce are required before a foreign defendant’s activity will be subject to Lanham Act protection.
  • Personal jurisdiction remains key. Even if Abitron’s “use in commerce” standard does not require a sales transaction in the U.S., jurisprudence that has developed over the past several decades surrounding personal jurisdiction over foreign defendants suggests that a domestic sale is key.
  • Brand protection strategy. The panel discussed the importance of shoring up registrations in other jurisdictions in order to lay the proper groundwork to enforce against cross-border infringers. In addition, the panel suggested that the contributory infringement doctrine may be useful in this context.

View the full recording here.

The U.S. Patent and Trademark Office (USPTO) has officially announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will soon be laid to rest. In a notice dated October 1, 2024, the USPTO confirmed that the program will end on December 14, 2024. Despite being extended numerous times since its launch in 2013, AFCP 2.0 has now run into fiscal hurdles. Earlier this year, the USPTO proposed a new fee to continue the program into fiscal year 2025, but after receiving widespread negative feedback, it has decided to retire AFCP 2.0 once and for all.

What Is After Final Practice?

When an applicant receives a Final Office Action (FOA) from the USPTO, it means the examiner has maintained their rejection after a prior response. At this point, applicants have several ways to continue prosecution:

  • Filing a response: Typically, any amendments submitted after an FOA are not considered unless a Request for Continued Examination (RCE) is filed.
  • Filing an RCE: This reopens prosecution and allows for further substantive review, but it comes at an added cost.
  • Requesting AFCP 2.0 consideration: Prior to its termination, this option allowed applicants to submit non-broadening amendments for extra review without needing an RCE.
  • Filing a notice of appeal: This escalates the case to the Patent Trial and Appeal Board (PTAB) for further examination.
  • Filing a new application: Applicants can shift their focus by pursuing claims of a different scope in a fresh application.
  • Abandoning the application: In some cases, applicants may choose to drop the case for business or strategic reasons.

Each of these options has different implications in terms of cost, time, and likelihood of success. Many applicants gravitated toward AFCP 2.0 because of its cost-effectiveness and efficiency. However, not everyone was a fan. A glance at the USPTO’s Patent Examiner sub-Reddit shows that AFCP 2.0 often added to examiners’ workloads. Examiners reported that applicants would sometimes use after-final interviews (which are limited to one per MPEP guidelines) to “test out” potential amendments. After receiving feedback, applicants would file an AFCP 2.0 request based on those changes, which could trigger yet another interview request. Rather than streamlining prosecution, this prolonged the process for some cases.

What Was AFCP 2.0?

AFCP 2.0 was designed to give applicants a chance to submit a non-broadening amendment to at least one independent claim after receiving an FOA. It gave examiners extra time to consider the amendments, often leading to productive interviews between applicants and examiners to work through unresolved issues.

In some cases, AFCP 2.0 helped push an application across the finish line when it was close to allowance. However, there were limitations—some examiners noted that the program’s time allowances were too short to properly evaluate more complex amendments. This resulted in many AFCP 2.0 requests being denied because they required more review time than the program allowed. In addition, some examiners believed that the program ended up extending prosecution rather than shortening it, contrary to its original goal.

That goal was to reduce the number of RCE filings by helping move applications closer to allowance without the need for an RCE. And to some extent, it worked—since 2016, over 60,000 AFCP 2.0 requests were filed annually, a clear indicator of its popularity among applicants looking to avoid the costs and delays associated with RCEs. But as successful as the program was for many practitioners, the rising costs of running AFCP 2.0 ultimately led to its discontinuation.

What’s Next for Applicants?

With AFCP 2.0 soon to be a relic of the past, patent applicants will need to adapt their strategies for continuing prosecution after a FOA. Fortunately, several alternative options remain:

  • Amendments after prosecution closes: Applicants can still submit amendments to place their application in condition for allowance or to prepare it for appeal (37 CFR 1.116(b)). However, in most cases, an RCE will be required for the amendments to be fully considered.
  • Examiner interviews: Interviews have always been a useful tool, and now, they’re more crucial than ever. We’ve often advocated for conducting an interview before submitting an AFCP 2.0 request. While examiners aren’t required to grant interviews after a FOA, many are willing to meet if substantive amendments are on the table or there are points of confusion to clarify (M.P.E.P. § 713.09 and 714.12). While an interview won’t work miracles, it can certainly help unblock progress when a case is stalled.
  • Pre-appeal brief requests: This option allows applicants to request a quick review of their case before committing to a full appeal. It can sometimes resolve issues without needing to go through the entire appeals process (M.P.E.P. § 1204.02).

While the end of AFCP 2.0 may feel like losing a valuable option, these other avenues still provide effective ways to address rejections and keep cases moving.

AFCP 2.0’s Legacy: A Fix for Pendency—With Some Caveats

For over a decade, AFCP 2.0 was a trusted resource for patent practitioners aiming to reduce pendency. In many cases, it fostered collaboration between applicants and examiners, leading to productive discussions and quicker resolutions. However, some critics felt the program gave applicants a free second bite at the apple, dragging out the process rather than resolving it efficiently.

As AFCP 2.0 comes to a close, applicants and practitioners will need to adjust to a post-AFCP world. However, the program’s legacy of encouraging efficiency and collaboration in patent prosecution will not be forgotten.

And with that, we say farewell to AFCP 2.0. Let’s mark its exit with a few words of tribute:

Goodbye, dear program, you’ve served us well,
In the halls of patents, your story we’ll tell.
A bridge through the final, the office door closed,
You gave one more chance before paths were reposed.

With amendments in hand, we would send you our plea,
Hoping examiners would listen, set inventors free.
You saved us from RCE’s endless repeat,
With just a few hours, resolutions we’d meet.

Through interviews granted, we’d sit side by side,
Examiner and counsel, no secrets to hide.
You brought forth allowances, breathed hope in the air,
For one final shot, you were always there.

But now your time’s come, you’re stepping away,
As December draws near, we bid you good day.
Though filings may change, your impact will stay,
In the memories of those who worked through the fray.

So farewell, AFCP, you’ve earned your rest,
In the realm of patent tools, you were one of the best.

On Thursday, November 7th at 1:30 p.m. CT, co-editor of our Gadgets, Gigabytes, and Goodwill Blog, Puya Partow-Navid, will participate in a panel for Seyfarth’s acclaimed Pioneers and Pathfinders Virtual Roundtable Series. Seyfarth’s Pioneers and Pathfinders virtual roundtable series has tackled critical topics intended to help our clients navigate the implications of generative AI and natural language processing models in the legal industry. In this session, the expert panel will address the legal and commercial challenges of disinformation and deepfakes.

In simple terms, a deepfake is a type of synthetic media where images, videos or audio seem real but have been manipulated or generated with artificial intelligence. While some synthetic or manipulated media have legitimate applications, the ability of deepfakes to exploit and spread disinformation is a quickly growing and significant threat to society—as we have seen from headlines ranging from the U.S. presidential election to Taylor Swift, to deepfake applications for remote jobs, and scams robbing companies of millions of dollars.

Organizations need to be alive to the commercial and legal dangers that deepfakes present and consider the potential safeguards. Indeed, this is a boardroom issue, with misinformation/disinformation ranking as the #1 most severe near-term global risk, according to the World Economic Forum’s 2024 Global Risks Report. With that in mind, our panel will tackle top-of-mind questions such as:

  • What are the biggest risks of deepfakes that leaders are tackling on behalf of their organizations and their customers/consumers?
  • How are deepfakes impacting the courtroom and evidentiary rules?
  • What legal frameworks exist to address the misuse of deepfakes and offer protections from disinformation?
  • What are some of the technological solutions and best practices that businesses can employ to stay a step ahead of deepfakes and disinformation?
  • How can we educate our employees and stakeholders about deepfakes?

Don’t miss this opportunity to learn from industry leaders and become a pioneer at the forefront of the profession’s evolution—we invite you to register your attendance.

Panelists

Catherine Porter, Chief Business Officer, Prove
Hon. Paul W. Grimm (Ret.), David F. Levi Professor of the Practice of Law and Director of the Bolch Judicial Institute at Duke Law School
Puya Partow-Navid, Partner, Seyfarth Shaw LLP
Stephen Poor, Partner and Chair Emeritus, Seyfarth Shaw LLP