News & Analysis as of

Patents Final Rules

WilmerHale

PTAB/USPTO Update - July 2024

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USPTO Leadership - ..On June 3, the USPTO announced the appointment of Derris Banks as Regional Director of the USPTO’s Elijah J. McCoy Midwest Regional Office located in Detroit, Michigan....more

McDermott Will & Emery

PTO Finalizes Rules Promoting Independence in PTAB Decision-Making

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The US Patent & Trademark Office (PTO) announced a final rule concerning pre-issuance internal circulation and review of decisions within the Patent Trial & Appeal Board. The new rules are designed to bolster the independence...more

Jenner & Block

Jenner & Block Japan Newsletter - May 2024

Jenner & Block on

Welcome to the May 2024 edition of the Jenner & Block Japan Newsletter, a publication containing updates about legal developments in the United States that may be noteworthy to our clients and other leaders in the Japanese...more

WilmerHale

PTAB/USPTO Update - May 2024

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On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

McDermott Will & Emery

PTO Creates Separate Design Patent Bar

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The US Patent & Trademark Office (PTO) published its final rule, creating a separate design patent bar where admitted design patent practitioners will practice in design patent proceedings only. (88 Fed. Reg. 78644 (Nov. 16,...more

Proskauer - Minding Your Business

Patent Bar: New Changes Up Ahead for Design Patent Practitioners

In order to prepare and prosecute utility, design, and plant patent matters in front of the United States Patent and Trademark Office (“USPTO” or “Office”), the USPTO requires practitioners to demonstrate possession of the...more

Womble Bond Dickinson

USPTO Creates Design Patent Practitioner Bar

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The USPTO has finalized plans to create a design patent practitioner bar, which will expand who is allowed to practice before the USPTO. The agency published a final rule in the Nov. 16 Federal Register making the change...more

WilmerHale

PTAB/USPTO Update - August 2023

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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

WilmerHale

PTAB/USPTO Update - July 2023

WilmerHale on

On June 7, the USPTO released its 2022-2026 Strategic Plan. According to the USPTO, the new plan outlines the USPTO's mission-focused strategic goals, which are: (1) driving inclusive U.S. innovation and global...more

WilmerHale

PTAB/USPTO Update - June 2023

WilmerHale on

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

WilmerHale

PTAB/USPTO Update - April 2023

WilmerHale on

On March 6, the USPTO announced a new Green Energy Category of its Patents for Humanity Program. Patents for Humanity is an awards competition that recognizes innovators who use technology to meet global humanitarian...more

WilmerHale

PTAB/USPTO Update - March 2023

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The USPTO published Revision 07.2022 of the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). A change summary is available here....more

McDermott Will & Emery

PTO Eliminates CLE Certification and Recognition for Patent Practitioners

The US Patent & Trademark Office (PTO) announced a final rule amending 37 C.F.R. § 11.11(a)(1) and (a)(3) to eliminate provisions concerning voluntary continuing legal education (CLE) certification for registered patent...more

WilmerHale

PTAB/USPTO Update - February 2023

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USPTO News - On January 18, the USPTO announced the launch of the IP Identifier tool, which is designed to enable users who are less familiar with intellectual property to identify whether they have adequate protections...more

WilmerHale

PTAB/USPTO Update - January 2023

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USPTO Leadership - ..Vaishali Udupa will become the next Commissioner for Patents on January 17, 2023.  She was previously at Hewlett Packard Enterprise....more

WilmerHale

PTAB/USPTO Update - November 2022

WilmerHale on

USPTO News - ..On October 19, 2022 the USPTO issued a report titled “Where are U.S. women patentees? Assessing three decades of growth” examining trends in women’s patenting in the U.S. from 1990-2019. ..Director...more

WilmerHale

PTAB/USPTO Update - December 2021

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director. Kathi Vidal, the Biden Administration’s nominee to be the next Director, testified at the Senate Judiciary...more

WilmerHale

PTAB/USPTO Update - November 2021

WilmerHale on

USPTO News - ..On October 26, 2021, President Joe Biden nominated Kathi Vidal, the managing partner of Winston and Strawn’s Silicon Valley office, as the next Under Secretary for Intellectual Property and Director of the...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

WilmerHale

PTAB/USPTO Update - July 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

WilmerHale

PTAB/USPTO Update - June 2021

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director.  No announcement from the Biden Administration as to who will be nominated to become the next Director. IP Toolkit - ...more

Jones Day

Motion to Amend Burden Final Rule Published

Jones Day on

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

Adler Pollock & Sheehan P.C.

U.S Patent Office Increased Government Fees: How To Avoid Or Minimize This Increase?

The United States Patent and Trademark Office (“USPTO”) adjusted patent fees affecting all facets of patent practice, as published in a Final Rule. The Final Rule sets or adjusts 296 patent fees for large, small, and micro...more

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

PTAB Strategies and Insights - December 2020: U.S. Patent and Trademark Office Issues Final Rules and Comments Implementing SAS,...

The U.S. Patent and Trademark Office Patent Trial and Appeal Board issued a final rule regarding institution, sur replies, and presumptions. First, the Board changes 37 C.F.R. §§ 42.108 and 42.208 to implement SAS...more

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

PTAB Strategies and Insights - December 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

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