News & Analysis as of

Patent Trial and Appeal Board United States Patent and Trademark Office Notice of Proposed Rulemaking (NOPR)

Jones Day

USPTO Proposes Expanding Opportunities for Non-Registered Practitioners

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The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: USPTO Proposes New Rules for AIA Trial Practice

On April 18, the USPTO announced a Notice of Proposed Rulemaking (“Notice”), which sets forth proposed rules affecting AIA trial proceedings for public comment. These proposed rules relate primarily to how the Patent Trial...more

McDermott Will & Emery

Clean Up on Aisle PTAB: Clarification of Discretionary Denial Practice

The US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking (NPRM) for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial & Appeal Board, seeking to codify existing...more

Jones Day

PTAB Announces Rules Formalizing Director Review

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In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review. The PTO has now issued a Notice of Proposed Rulemaking (“NPRM”) formalizing the Director Review...more

McDermott Will & Emery

PTO Proposes New Guidelines for Director Review in Board Proceedings

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The US Patent & Trademark Office (PTO) proposed new rules governing the process for Director review of Patent Trial & Appeal Board decisions in America Invents Act (AIA) proceedings. Rules Governing Director Review of Patent...more

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

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

Foley & Lardner LLP

USPTO Stands Behind Significant New Fees for 2025

Foley & Lardner LLP on

The USPTO has taken another step towards implementing fee adjustments in January 2025, by publishing a Notice of Proposed Rulemaking (RPRM) on April 3, 2024.. The NPRM stands by most of the significant fee adjustments it...more

Jones Day

PTAB Proposes Permanent MTA Pilot Program Rules

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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

McDermott Will & Emery

PTO Seeks Permanent Rules Regarding Motion to Amend Practice Before Board

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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

McDermott Will & Emery

Not Admitted to PTO Bar? No Problem.

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On February 21, 2024, the US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking that would give parties the option to designate a non-registered practitioner as lead counsel in proceedings before the...more

Jones Day

RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

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On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review of...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Proposes Harmonizing Claim Construction Standard In PTAB Proceedings

The U.S. Patent and Trademark Office published a notice of proposed Rulemaking in the Federal Register (83 Fed. Reg. 21221) today, May 9, 2018, which would provide a change to the claim construction standard used in Inter...more

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