News & Analysis as of

Patent Trial and Appeal Board Administrative Procedure

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

WilmerHale

PTAB/USPTO Update - August 2023

WilmerHale on

USPTO News - On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset....more

Goodwin

USPTO Doubles Down Calling Out Pharmaceutical Industry

Goodwin on

​​​​​​​The new Director of the U.S. Patent and Trademark Office (USPTO), Katherine Vidal, published a stern reminder regarding the duties of disclosure and reasonable inquiry during examination of a patent application,...more

Womble Bond Dickinson

USPTO Announces New Interim Process for PTAB Decision Circulation and Internal Review

Womble Bond Dickinson on

On May 26, 2022, the USPTO announced its interim process for PTAB decision circulation and internal PTAB review in hopes of further promoting “consistent, clear, and open decision-making.” This interim process models the...more

Jones Day

Legislation: Restoring the America Invents Act

Jones Day on

On Wednesday, September 29, 2021, Senators Patrick Leahy (D) and John Cornyn (R) introduced the Restoring the America Invents Act, a bill that would modify Patent Trial and Appeal Board (PTAB) procedures and facilitate...more

WilmerHale

PTAB/USPTO Update - August 2021

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director. The Biden Administration has not made an announcement as to who will be nominated to become the next Director....more

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

PTAB Strategies and Insights - October 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sheppard Mullin Richter & Hampton LLP

Supreme Court to Decide Constitutionality of PTAB Judge Appointments

The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause.  These...more

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

Global Patent Prosecution - August 2020: Survey of PTAB and CNIPA Proceedings in View of Proposed Regulations Regarding...

In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more

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

PTAB Strategies and Insights - July 2020: Motions to Amend Post Hunting Titan

The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more

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

PTAB Strategies and Insights - July 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...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

McDonnell Boehnen Hulbert & Berghoff LLP

Smith & Nephew File Certiorari Petition in Arthrex Case

While the Federal Circuit's decision last fall in Arthrex, Inc. v. Smith & Nephew, Inc. raised issues about the appointment of Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB), it should...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Further Extension of Certain Patent Deadlines

In a notice posted on its website last week, the U.S. Patent and Trademark Office announced that it was further extending the time to file certain patent-related documents and to pay certain required fees....more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Extension of Certain Patent Deadlines

In a USPTO Alert distributed March 31[i], the U.S. Patent and Trademark Office announced the availability of extensions to the time allowed to file certain patent-related documents and to pay certain required fees. The...more

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

2019 PTAB Year in Review: Analysis & Trends: Dramatic Changes to Motion to Amend Practice

Motions to amend have historically been viewed as an exercise in futility. The Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, agrees, having publicly stated that “[s]ome have suggested that...more

Jones Day

Federal Circuit Requests Additional Arthrex Appointments Clause Briefing

Jones Day on

Following up on a November 4th oral argument (accessible here) that focused on the Arthrex Appointments Clause issue, the Federal Circuit has requested additional briefing from Polaris, Kingston, and the U.S. regarding the...more

Jones Day

Judge Dyk Says Arthrex Remedy is Unnecessary

Jones Day on

Judge Dyk and Judge Newman disagree with the Arthrex remedy requiring rehearing. In Arthrex, the Federal Circuit panel of Judges Moore, Reyna, and Chen held the appointment of Administrative Patent Judges (APJs) was an...more

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

PTAB Strategies and Insights - October 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Jones Day

PTAB Judges Discuss Recent Procedure Changes in Boardside Chat

Jones Day on

The Patent Trial and Appeal Board held a Boardside Chat on October 10, 2019, discussing the various recent changes made to PTAB procedures. The panel discussion featured Chief Judge Scott Boalick, Deputy Chief Judge Jackie...more

Foley & Lardner LLP

PTAB Precedential 35 U.S.C. 315(b) Decisions Show Service in Dismissed Infringement Cases Can Still Bar IPR Institution

Foley & Lardner LLP on

The PTAB recently designated two decisions interpreting 35 U.S.C. § 315(b) as precedential. Each decision applies the Federal Circuit’s literalist interpretation of § 315(b) from Click-to-Call (CTC) to, in one...more

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

PTAB Strategies and Insights - September 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

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

PTAB Strategies and Insights - July 2019: Updated Trial Practice Guide

A third version of the Trial Practice Guide issued this week as both a Federal Register notice and updates....more

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

PTAB Strategies and Insights - July 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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