PTAB/USPTO Update - June 2025

USPTO News

• On May 27, the USPTO announced the completion of a critical upgrade to the agency’s core financial system, Momentum, to streamline maintenance of the fee payment systems as well as several internal functions.
• On May 12, the USPTO announced an added option for Trademark Trial and Appeal Board (TTAB) customers to file a petition for cancellation in TTAB Center.
• On May 8, the USPTO published its response to a Government Accountability Office (GAO) report addressing examination and quality challenges.  The response highlights measures that the USPTO has taken to date, such as recalibration of examination time and modernization of search tools.
• Acting Director Stewart delivered official remarks at the National Inventors Hall of Fame Illumination Ceremony on May 7 and at the 2025 National Inventors Hall of Fame Induction Ceremony on May 8

Final Rules

• Partial Replacement of an Earlier National Registration or Registrations by an International Registration, 90 Fed. Reg. 23288 (June 2, 2025) [rule becomes effective July 2, 2025] (modifying U.S. trademark regulations addressing the replacement of a national registration or registrations by an international registration to allow for submission of partial replacement requests, in alignment with the Madrid Protocol, and to require a listing of the goods and/or services for which replacement is requested)

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

General Notices

• Request for Comments on OECD's Working Party on Countering Illicit Trade (WP-CIT) Draft Voluntary Guidelines for Countering Illicit Trade in Counterfeit Goods on Online Marketplaces, 90 Fed. Reg. 21291 (May 19, 2025) [comments due by June 27, 2025; roundtable will be held June 5, 2025] (seeking feedback from interested parties on their observations and experiences in combatting the trafficking of counterfeit products through online marketplaces. The discussion will focus on the Organisation for Economic Co-operation and Development’s (”OECD”) recent work on Draft Voluntary Guidelines for Countering Illicit Trade in Counterfeit Goods on Online Marketplaces) [press release]

PTAB Decisions

• New Precedential PTAB Decisions
  • Ecto World, LLC v. RAI Strategic Holdings, Inc. (§ A), IPR2024-01280, Paper 13 (May 19, 2025) (designated: May 19, 2025) [AIA § 325(d) - clarifying application of Advanced Bionics and Becton Dickinson and addressing the application of § 325(d) where asserted prior art is included on voluminous IDS] (Director Review decision)
• New Informative PTAB Decisions
  • There are no new informative PTAB decisions.
• New Director Review Decisions
  • Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01284, IPR2024-01285, IPR2024-01313 & IPR2024-01314
    • Decision vacating decision granting institution, and denying institution – Paper 17 (Stewart May 23, 2025) [Determining the IPRs should be denied institution for similar reasons to related IPRs that were subject to another earlier Director Review Decision, and finding that the court’s stay should not factor into the Fintiv analysis because the stay was premised on the Board’s now-vacated decision instituting review of the related IPRs]
  • Shenzhen Kangvape Technology Co., Ltd. v. RAI Strategic Holdings, Inc., IPR2024-01406
    • Order vacating decision granting institution, and remanding for further proceedings – Paper 13 (Stewart May 19, 2025) [finding that “it is appropriate to allow the parties the opportunity to present arguments and evidence addressing the Fintiv factors in view of the parallel ITC proceeding under the 2022 Interim Procedure Memo’s rescission” where the Petition and POPR, which were filed while the 2022 Interim Procedure Memo was in effect, did not address Fintiv]
  • Ecto World, LLC v. RAI Strategic Holdings, Inc., IPR2024-01280
    • See New Precedential PTAB Decisions (above)
  • Vizio, Inc. v. Polaris PowerLED Technologies, LLC, IPR2024-00073
    • Order delegating Director Review to a Delegated Rehearing Panel – Paper 36 (Stewart May 12, 2025) [ordering review by an independent Delegated Rehearing Panel, selected from a pool of senior judges excluding those who issued the reviewed decision, to “determine whether the panel misapprehended or overlooked any issue, including whether the panel: (1) should have explicitly construed the claim term ‘current set circuit’… and (2) erred in determining that Petitioner had shown certain dependent claims unpatentable while simultaneously finding that Petitioner had not met its burden in showing the independent claims from which they depend to be unpatentable”]