Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast
Fish Post-Grant Radio: Episode #13: Rick Bisenius
In CyWee Group LTD. V. ZTE (USA), Inc., No. 21-1855 (Fed. Cir. 2024), ZTE filed an IPR petition against U.S. Patent No. 8,441,438 (the ’438 patent) owned by CyWee, which the Patent Trial and Appeals Board (“the Board”)...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”) Practice and Procedures...more
On March 4, 2024, the US Patent & Trademark Office published a Notice of Proposed Rulemaking seeking to revise its Motion to Amend (MTA) pilot program practice in connection with certain America Invents Act (AIA) proceedings....more
The United States Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act (AIA). Specifically, the USPTO is proposing...more
On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more
The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more
In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more
The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes. The...more
The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...more
On May 23, the USPTO announced a request for comments seeking public input on whether to make permanent or modify the PTAB’s Motion to Amend (MTA) Pilot Program. The USPTO is also seeking related input on the rules of...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB) for a second time—now set to...more
The United States Patent and Trademark Office (USPTO) announced on Oct. 4, 2022, that it is extending the Motion to Amend (MTA) Pilot Program through September 16, 2024. The MTA Pilot Program was initiated on March 15, 2019....more
The United States Patent and Trademark Office (USPTO) has again extended the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB)....more
Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022) - In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the...more
On March 15, 2019, the United States Patent and Trademark Office (USPTO) introduced a new Motion to Amend (MTA) Pilot Program. The Pilot Program gave patent owners an option to (1) receive Preliminary Guidance on the merits...more
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more
Year-End Analysis and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings. Attend ACI’s inaugural PTAB Practice Briefing virtually on December 2nd for in-depth discussions and year-end...more
The United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to extend the Motion to Amend (MTA) pilot program. This program provides additional options for a patent owner...more
The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on...more
The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide...more
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more