USPTO lays ground for review of Fintiv rules
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

USPTO lays ground for review of Fintiv rules

Kathi Vidal
Kathi Vidal

The USPTO's plans to file an Advanced Notice of Proposed Rulemaking related to Fintiv are pending regulatory review

The USPTO has indicated that it plans to initiate regulatory action related to Fintiv, it has emerged.

In a filing with the Office of Information and Regulatory Affairs (OIRA) on Thursday, March 9, the USPTO said it would publish an Advanced Notice of Proposed Rulemaking (ANPRM).

An ANPRM is a preliminary notice that an agency is considering regulatory action. The exact nature of the planned rule changes are unclear but could include draft language of what potential rulemaking will look like and can ask the public what issues it should address.

The OIRA, which reviews draft rules submitted by federal agencies, has 90 days from the date of filing to review requests, although this period can be extended.

The USPTO said its ANPRM would not be economically significant. The OIRA will have to determine whether that’s the case, which is important because agencies must provide more detail if changes are deemed to be economically significant.

Actions are economically significant if they’re likely to have a yearly effect of at least $100 million on the economy, or if the OIRA believes they will materially adversely affect the economy.

If the OIRA doesn’t spot any issues, the USPTO will likely initiate its ANPRM related to Fintiv – the rule introduced in 2020 that compels Patent Trial and Appeal Board judges to discretionarily deny inter partes reviews on the basis that parallel district court cases will finish first.

The office implemented interim guidance in July 2022 addressing Fintiv.

That guidance severely limited when the board could use Fintiv to deny petitions. But the USPTO stated at the time that it would soon explore potential rulemaking on proposed approaches through an ANPRM – which it’s now doing.

News of the ANPRM comes amid a busy time for Fintiv-related matters.

In a judgment yesterday, March 13, the Court of Appeals for the Federal Circuit ruled that tech companies could challenge instructions related to Fintiv because they were issued without notice-and-comment rulemaking.

Notice-and-comment rulemaking requires agencies to issue a Notice of Proposed Rulemaking, but they can issue ANPRMs first to get more information.

If businesses were to prevail on these challenges, the notice-and-comment rulemaking process would be crucial for Fintiv’s survival.

Managing IP will provide further analysis on the Federal Circuit’s ruling in the coming days.


more from across site and ros bottom lb

More from across our site

The full list of finalists has been revealed and the winners will be presented on June 20 at the Metropolitan Club in New York
A team of IP and media law specialists has joined from SK Schwarz alongside a former counsel at Sky
The Irish government has delayed a planned referendum on whether Ireland should join the Unified Patent Court, prompting concern about when a vote may take place
With more than 250 winners recognised during the ceremony, there are many reasons to be positive about the health of the IP industry in EMEA
Practitioners say the USPTO’s latest guidance has some helpful clarifications and is a good reminder of the importance of checking AI outputs
Susanne Schmidt discusses why trademarks are more than 'just a name' and why she would choose green farming as an alternative career
The former head of life sciences at Kramer Levin has joined Orrick, a firm that hopes to grow in the sector
Lionel Martin of August Debouzy and Kristof Neefs at Inteo share how they prevailed in a UPC Court of Appeal case surrounding access to documents
Counsel say ‘strange’ results have increased their reliance on subscription-based search platforms, but costs are not being shifted onto clients yet
The firm was among multiple winners at a record-breaking 2024 ceremony held in London on April 11
Gift this article