News & Analysis as of September 18, 2024

United States Patent and Trademark Office

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Data and Trends: AIA PTAB Appeals to the Federal...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/4/2021

These charts and graphs appear in the firm's Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions report... Appeals from the USPTO dipped in FY20, reaching their lowest level since FY15. After four...more

The PTAB Trial Tracker

Goodwin on 9/30/2020

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

USPTO Announces Across-the-Board Patent Fee Increases

Lathrop GPM on 8/5/2020

The United States Patent and Trademark Office (USPTO) published a Final Rule today in the Federal Register, viewable at 85 Fed. Reg. 46932 (August 3, 2020), announcing fee adjustments affecting all aspects of patent practice...more

CBM Review – Last Call

White & Case LLP on 7/27/2020

Covered Business Method (“CBM”) review ends in mid-September, and you have one last chance to take advantage. In 2011, the AIA introduced three new administrative review proceedings of patentability with the goal of...more

PTAB Strategies and Insights - June 2020

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/25/2020

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

USPTO Addresses Filing Delays Caused by the Impact of COVID-19

Seyfarth Shaw LLP on 4/2/2020

While much of the focus of the Coronavirus Aid, Relief, and Economic Security (CARES) Act relates to economic stimulus, the Act also granted temporary authorization to the Director of the United States Patent and Trademark...more

Whither (more likely wither) CBMs

Fenwick & West LLP on 3/25/2020

Under the America Invents Act, the USPTO is to stop accepting petitions for review of covered business method patents after September 16, 2020. Given the various other priorities Congress will be dealing with between now and...more

For CBM Review, Both Aspects of Technology Exception Must Be Addressed

McDermott Will & Emery on 11/5/2019

In an opinion regarding a covered business method (CBM) review at the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit adopted a new claim construction and found the PTAB’s decision on CBM...more

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

Jones Day on 7/24/2019

On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The...more

USPTO Publishes PTAB Trial Practice Guide Update

Knobbe Martens on 7/19/2019

On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

USPTO Announces Pilot Program Related to Motions to Amend in PTAB Trials

McDonnell Boehnen Hulbert & Berghoff LLP on 3/15/2019

On March 14, 2019, The U.S. Patent and Trademark Office announced a new pilot program relating to motions to amend in post-grant review proceedings (post-grant review, inter partes review, and covered business methods...more

Big Picture on Software Patent Eligibility: The Forces at Work

Knobbe Martens on 1/29/2019

Much of the modern economy is driven by software development. Companies are creating and refining new apps that run on mobile devices, and using machine learning to provide users with personalized user interfaces and...more

Changes to PTAB’s Claim Construction Standard - Intellectual Property News

Bradley Arant Boult Cummings LLP on 10/16/2018

On October 10, 2018, the United States Patent and Trademark Office (USPTO) announced that it will issue a final rule changing the claim construction standard for interpreting claims in inter partes review (IPR), post-grant...more

PTAB Abandons Its Practice Of Broadly Interpreting Claims Of Challenged Patents In Favor Of Phillips Standard Of “Ordinary And...

Troutman Pepper on 10/12/2018

In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) has...more

USPTO Changes Claim Construction Standard Used In AIA Trial Proceedings

Shook, Hardy & Bacon L.L.P. on 10/12/2018

On October 10, 2018, the United States Patent & Trademark Office (USPTO) published a final rule that changes the current “broadest reasonable interpretation” or BRI standard used in inter partes review (IPR), post grant...more

Coming Soon: New Claim Construction Standard for Many AIA Trial Proceedings

McDonnell Boehnen Hulbert & Berghoff LLP on 10/11/2018

The U.S. Patent and Trademark Office (USPTO) announced today, Octoer 10, 2018, that it is issuing a final rule that will change the claim construction standard applied during many inter partes review (IPR), post-grant review...more

Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances

McDonnell Boehnen Hulbert & Berghoff LLP on 1/4/2018

The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of...more

USPTO Finalizes Rule For Privileged Communications In Trials Before The PTAB

Weintraub Tobin on 11/9/2017

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Schwabe, Williamson & Wyatt PC on 9/1/2017

Today the Circuit agreed to hear en banc Nantkwest v. Matal,in which the panel had reversed a district court decision that had rejected the PTO’s position that applicants who appeal a district court must pay the PTO’s legal...more

Life, Liberty, and…IPRs? SCOTUS to Weigh in on Constitutionality of Inter Partes Review Proceedings

BCLP on 6/13/2017

Today, the Supreme Court granted certiorari in Oil States Energy Services v. Greene’s Energy Group, No. 16-712 (June 12, 2017), to decide whether post-grant proceedings created under the America Invents Act (“AIA”) are...more

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

McDonnell Boehnen Hulbert & Berghoff LLP on 3/22/2017

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Narrowing Jurisdiction in Covered Business Method Proceedings

McDonnell Boehnen Hulbert & Berghoff LLP on 3/20/2017

In 1998, the United States Court of Appeals for the Federal Circuit decided State Street Bank & Trust Co. v. Signature Financial Group, Inc., which upheld the patentability of business methods in the United States. Since...more

Highest Patent Court Narrows Scope of Covered Business Review

Morgan Lewis on 3/1/2017

A patent does not qualify for “covered business method” review if its claims are only incidental to a financial activity. The US Court of Appeals for the Federal Circuit (CAFC) recently decided that a claimed method (in...more

How Much Did the Federal Circuit Narrow Eligibility for Covered Business Method Review?

Morrison & Foerster LLP on 11/23/2016

Earlier this week, the Federal Circuit narrowed the types of patents eligible for covered business method (CBM) review. In Unwired Planet, LLC v. Google Inc., Case No. 15-1812, (Fed. Cir. Nov. 21, 2016) (“Unwired Planet”),...more

Unwired Planet, LLC v. Google Inc. (Fed. Cir. 2016)

McDonnell Boehnen Hulbert & Berghoff LLP on 11/22/2016

Federal Circuit Narrows USPTO's Definition of "Covered Business Method" - The America Invents Act (AIA) defines a covered business method (CBM) patent as "a patent that claims a method or corresponding apparatus for...more

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America Invents Act › Covered Business Method Patents › United States Patent and Trademark Office

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