News & Analysis as of

Patent Litigation United States Patent and Trademark Office Public Comment

Jones Day

USPTO Extends Comment Deadline on Patent Eligible Subject Matter Guidance for AI Inventions

Jones Day on

The USPTO has extended the public comment deadline in order to afford all stakeholders an opportunity to weigh in on the subject matter eligibility of AI inventions....more

Fish & Richardson

Should the Experimental Use Exception Be Broadened?

Fish & Richardson on

On June 28, 2024, the United States Patent and Trademark Office (“USPTO”) requested the public’s views on the current state of the common law experimental use exception to patent infringement and whether legislative action...more

Morgan Lewis

An Expansion to the Experimental Use Exception to Patent Infringement in the Works?

Morgan Lewis on

The US Patent and Trademark Office is requesting public feedback on the current experimental use exception’s impact on technology sectors—and the public’s appetite for expanding the exception....more

McDermott Will & Emery

PTO Asks Whether Legislative Action for Experimental Use Exception Is Warranted

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) issued a request for comments concerning the public’s views on the common law experimental use exception and whether Congress should enact a statutory experimental use exception. 89 Fed....more

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

United States Patent and Trademark Office Proposes Changes to Terminal Disclaimer Practice

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more

Wilson Sonsini Goodrich & Rosati

USPTO Proposes New Requirement for Terminal Disclaimers That Amounts to a Significant Change from Current Practice

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking to add a new requirement for terminal disclaimers filed to obviate nonstatutory double patenting rejections to the...more

Wilson Sonsini Goodrich & Rosati

Opportunity for Innovative Companies to Shape U.S. Patent and Trademark Office Initiatives

The United States Patent and Trademark Office (USPTO) is requesting public comment on how they can accelerate and incentivize the commercialization of innovative technologies. Public comments can be submitted via this...more

Kidon IP

Response to the USPTO, The ITA, and NIST call for Public Comments on Standards, Part 1 of 7

Kidon IP on

On November 6, 2023 I submitted a response to the public comments which can be found here. I have also included my comments in full on this blog in a series of posts including the below. The only change in my submission is...more

McDermott Will & Emery

PTO Requests Comments on Revisions to AIA Trial Proceedings

McDermott Will & Emery on

On April 21, 2023, the US Patent & Trademark Office (PTO) announced that it is seeking public input on proposed modifications to the rules of practice for inter partes reviews (IPRs) and post grant reviews (PGRs) before the...more

Kidon IP

Response to the US Department of Justice call for Public Comments on SEPs Part 2 of 6

Kidon IP on

I. Background for The Withdrawal from the 2013 Policy Statement - In December 2018, former Assistant Attorney General for Antitrust Makan Delrahim announced DOJ’s withdrawal from the 2013 Statement....more

Rothwell, Figg, Ernst & Manbeck, P.C.

Will The USPTO Codify Its Discretionary Determination Of Deciding Whether To Institute AIA Trials?

On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board”...more

Jones Day

PTO Proposes PTAB POPR Presumption Principle Permutation

Jones Day on

On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for material...more

Goodwin

U.S. Patent Trial and Appeal Board Proposes Rule Changes

Goodwin on

The U.S. Patent and Trademark Office (USPTO) has proposed amendments to several rules governing proceedings before the Patent Trial and Appeal Board (PTAB). The proposed rule changes published today in the Federal Register......more

McDermott Will & Emery

Pilot Program for Motion to Amend Practice in PTAB Proceedings Under AIA

On March 15, 2019, The US Patent and Trademark Office (PTO) provided notice of a pilot program for motion to amend (MTA) practice and procedures in trial proceedings under the America Invents Act (AIA) before the Patent Trial...more

Foley & Lardner LLP

New USPTO Fees For 2021

Foley & Lardner LLP on

The USPTO has commenced a fee-setting process for fee adjustments it expects to implement in January 2021. While many fee changes are modest (~5%), the USPTO proposes significant increases to patent trial fees and two new...more

McDonnell Boehnen Hulbert & Berghoff LLP

Comments on the USPTO's Subject Matter Eligibility Guidance -- BSA

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). In the July Update, the Office provided recommendations and resources for examiners in addition to those...more

McDonnell Boehnen Hulbert & Berghoff LLP

Comments on the USPTO's Subject Matter Eligibility Guidance -- The ABA

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). The update provided recommendations and resources for examiners in addition to those in the Office's...more

Fenwick & West LLP

Overview of Comments on the USPTO's July 2015 Update to the Interim Examination Guidance

Fenwick & West LLP on

In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Examination of Myriad-Mayo Guidance Comments -- International Bioindustry Associations

On March 4, the U.S. Patent and Trademark Office issued a guidance memorandum, entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural...more

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