News & Analysis as of

Administrative Procedure Patents Post-Grant Review

Fish & Richardson

Recapping a Busy Summer for Director Review

Fish & Richardson on

United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Fish & Richardson

How the Timing of Director Review May Affect Co-Pending Litigation

Fish & Richardson on

Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

Fish & Richardson on

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an...more

Latham & Watkins LLP

PTAB Update: New Motion to Amend Procedures Proposed

Latham & Watkins LLP on

The new procedures could be in place before the end of 2018 with far-reaching effects for both patent owners and petitioners. Key Points: ..The new procedures allow a patent owner to file a motion to amend six weeks...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Interprets SAS as Applying to Claims and Grounds

In the wake of the Supreme Court’s decision in SAS Institute v. Iancu—which did away with the Patent Trial and Appeal Board’s (PTAB) partial-institution practice—parties and the Patent Office alike have been trying to...more

Jones Day

Be Advised: Settlement Does Not Necessarily End An IPR Or PGR

Jones Day on

The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled “Settlement” and provides, in pertinent...more

Knobbe Martens

PTAB Issues New Remand Procedures

Knobbe Martens on

On November 16, 2017, the USPTO issued new procedures (“Standard Operating Procedure 9”) for governing cases remanded from the Federal Circuit. These procedures are applicable to all decisions remanded from the Federal...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

A Comparison of US and EPO Post Grant Practices

Challenging the validity of a patent through the courts of Europe and the United States can be a time-consuming and expensive process. Oppositions at the European Patent Office (EPO) and US post-grant cancellation...more

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