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United States Patent and Trademark Office Sua Sponte Patents

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 -
Jones Day

Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment

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In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition...more

Fish & Richardson

How the Timing of Director Review May Affect Co-Pending Litigation

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Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...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

McDermott Will & Emery

PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor

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On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC. The resulting sanctions order canceled five Longhorn patents. The...more

Foley & Lardner LLP

USPTO Director Vidal Closes Fintiv Escape Hatch on Discretionary Denial

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Practice at the Patent Trial and Appeal Board (PTAB) has evolved at a breakneck pace during the tenure of U.S. Patent and Trademark Office Director Vidal. Her Fintiv memorandum rapidly altered practice surrounding a core...more

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

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

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

Akin Gump Strauss Hauer & Feld LLP

USPTO Director Issues Second Sua Sponte Precedential Decision Addressing Abuse of Process

In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions that should be...more

McDermott Will & Emery

Contingent Statement Doesn’t Unequivocally Abandon Defense of Challenged Claims

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The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director...more

AEON Law

Patent Poetry: USPTO Issues Sua Sponte Decision on IPR Abuse

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Katherine Vidal, the director of the US Patent and Trademark Office (USPTO) has issued a 52-page sua sponte decision dealing with issues of sanctionable misconduct in inter partes review (IPR) proceedings. “Sua sponte”...more

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

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

[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

Jones Day

NEWS: USPTO Issues First Director Review Decisions

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On July 6th and 7th, the USPTO made good on its promise to not wait for a confirmed director to begin Arthrex Director reviews, issuing its first denials of review requests.  The full press release is below:...more

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

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] 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...more

Knobbe Martens

Patent Applicant Not Required to Pay PTO’s Attorneys’ Fees in District Court Suit to Obtain a Patent

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PETER V. NANTKWEST, INC. Before Sotomayor, Roberts, Ginsburg, Breyer, Alito, Kagan, Gorsuch, and Kavanaugh. Appeal from the Federal Circuit on rehearing en banc. Summary: A patent applicant appealing an adverse decision...more

McDermott Will & Emery

Patent Term Adjustment Denied for Interference-Related Delays

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The US Court of Appeals for the Federal Circuit affirmed the US Patent and Trademark Office’s (PTO’s) calculation of patent term adjustment (PTA), finding that for purposes of PTA, time spent on a requested continued...more

Knobbe Martens

Nantkwest v. Iancu

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Federal Circuit Summary - En Banc (excl. Chen), Opinion for the court filed by Stoll, joined by Newman, Lourie, Moore, O’Malley, Wallach, and Taranto. Appeal from the United States District Court for the Eastern District...more

Skadden, Arps, Slate, Meagher & Flom LLP

Federal Circuit Denies PTO Attorneys’ Fees

On July 27, 2018, the Federal Circuit ruled that a patent applicant’s obligation to pay the U.S. Patent and Trademark Office’s (PTO) “expenses” for district court proceedings to review patent application rejections does not...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - June 2018 #2

PGS Geophysical AS, v. Andrei Iancu, Appeal Nos. 2016-2470, -2472, -2474 (Fed. Cir. June 7, 2018) - In appeals from three inter partes review, the Federal Circuit addressed transition issues for cases currently on appeal...more

McDermott Will & Emery

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

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