News & Analysis as of

Administrative Procedure Post-Grant Review Patent Trial and Appeal Board

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: 1.132 Declarations for Traversing Rejections

Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...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

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