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United States Patent and Trademark Office › Director of the USPTO › Patent Trial and Appeal Board

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Issues Final Rule on Director Review of PTAB Decisions

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

On October 1, 2024, the USPTO published a new final rule, Rules Governing Director Review of Patent Trial and Appeal Board Decisions. 89 Fed. Reg. 79744 (October 1, 2024). The new rule codifies many aspects of the PTAB’s most...more

Erise IP

Eye on IPRs, August 2024: Federal Circuit Rules on Arguments Not Raised in Request for Rehearing, USPTO Director’s Potential...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Addresses Waiver of Argument Not Raised in Request for...more

McDermott Will & Emery

How Close Are They? PTO Looking for “Significant Relationship” Between Sequential IPR Petitioners

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Addressing the issue of whether to discretionally deny a petition for inter partes review (IPR) under the General Plastics factors when there is no “significant relationship” between the petitioners, the Director of the US...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

McDermott Will & Emery

Drawing Can Teach Claim Limitations If “Clear on Its Face”

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Addressing when a drawing in a prior art reference includes a teaching that is “clear on its face,” the Director of the US Patent & Trademark Office vacated and remanded a Patent Trial & Appeal Board decision denying...more

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

What’s in a Name? Why Reexamination Is Not a Re-Examination

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

Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more

McDermott Will & Emery

New PTAB Claim Construction? Give the Parties Review Opportunity

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The US Patent & Trademark Office (PTO) Director vacated Final Written Decisions issued by the Patent Trial & Appeal Board that presented a sua sponte construction of a claim term in dispute, holding that the parties were not...more

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

2023 PTAB Year in Review: Analysis & Trends: Watch Your Step – Discretionary Denial Under 325(d) Is Alive and Kicking

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

The USPTO Director is under no obligation to institute petitions for inter partes review, even if a petition technically meets all of the requirements for institution. There are two well-known flavors of discretionary denial...more

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

2023 PTAB Year in Review: Analysis & Trends: 2023 Changes in Director Review

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On July 24, 2023, the United States Patent and Trademark Office (USPTO or Office) promulgated a revised interim process for Director Review of Patent Trial and Appeal Board (PTAB or Board) decisions in proceedings under the...more

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

2023 PTAB Year in Review: Editors’ Introduction

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

A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more

McDermott Will & Emery

Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision

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US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential...more

McDermott Will & Emery

RIP for POP: PTO Updates Interim Director Review Procedures

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On July 24, 2023, the US Patent & Trademark Office (PTO) announced that a revised interim Director Review (DR) process and Appeals Review Panel (ARP) process will replace the Precedential Opinion Panel Process. Updates to the...more

McDermott Will & Emery

Pending Appeal Does Not Divest Board of Statutory Authority to Institute IPRs

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In a case involving sua sponte review, the Director of the US Patent & Trademark Office (PTO) vacated an inter partes review (IPR) decision denying institution, found that the Patent Trial & Appeal Board had statutory...more

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

PTAB Strategies and Insights Newsletter - May 2023: Case Highlights: PTAB Precedential and Informative Decisions, Director Review...

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

This recurring feature highlights any new PTAB precedential and/or informative decisions, any new substantive Director review decisions, and any new substantive decisions issued by the Precedential Opinion Panel (POP). The...more

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

PTAB Strategies and Insights Newsletter - May 2023

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

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

McDermott Will & Emery

Claim Duality: Multiple Dependent Claims Can Be Both Patentable and Unpatentable

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Addressing, for the first time, the issue of patentability of multiple dependent claims under 35 U.S.C. § 112, fifth paragraph, the Director of the US Patent & Trademark Office (PTO) granted rehearing and modified the Patent...more

McDermott Will & Emery

Compelling Clarity: PTO Director Explains Compelling Merits Test

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US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a precedential opinion clarifying the standard under which the Patent Trial & Appeal Board (Board) can institute on an inter partes review (IPR) petition...more

McDermott Will & Emery

Review Delayed Is Not Review Denied

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Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th...

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

Smith & Nephew petitioned for IPR of Arthrex’s ’907 patent, which claims a surgical device with an “eyelet” through which a suture is threaded. Smith & Nephew argued in relevant part that certain claims were anticipated by a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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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

Jones Day

Recap: Post-Arthrex Director Reviews State of Play

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In a previous post from July 2021, we discussed the interim process for Director review in PTAB proceedings post-Arthrex. Since then, only three out of over 175 requests for Director review of a Final Written Decision have...more

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

PTAB Strategies and Insights Newsletter: May 2022

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

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

Haug Partners LLP

Senate Confirms Kathi Vidal as Next USPTO Director

Haug Partners LLP on

On April 5, 2022, the U.S. Senate confirmed Kathi Vidal as the next Director of the U.S. Patent and Trademark Office (“USPTO”). The Senate’s confirmation comes more than one-year since former director, Andrei Iancu,...more

Jones Day

Senate Confirms Kathi Vidal as USPTO Director

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On April 5, 2022, the Senate confirmed Kathi Vidal as the new Director of the USPTO by voice vote. President Joe Biden nominated Vidal for the post last October. ...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

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

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

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