News & Analysis as of September 23, 2024

America Invents Act › New Guidance

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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 -

PTO Proposes New Guidelines for Director Review in Board Proceedings

McDermott Will & Emery on 4/25/2024

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

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on 4/23/2024

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

Biosimilars 2021 Year in Review

Fish & Richardson on 1/12/2022

2021 saw several important milestones in the biosimilars space, including the much anticipated first interchangeable designations by FDA and the approval of the first ophthalmology biosimilar. The biosimilar market also...more

USPTO/PTAB Update - February 2021

WilmerHale on 2/2/2021

USPTO Director Andrei Iancu and Deputy Director Laura Peter resigned from their respective posts prior to inauguration day. Commissioner for Patents Drew Hirschfeld and Senior Counsel Coke Morgan Stewart are temporarily...more

PTAB Strategies and Insights - April 2019: USPTO Provides Guidance on Reissue and Reexam Stays during AIA Trials

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/30/2019

The USPTO issued guidance regarding procedures to stay when reissue or reexaminations are pending during a parallel AIA proceeding. The basic factors that will be considered are...more

USPTO Announces Sweeping Changes to Motion to Amend Procedures in AIA Trials via Pilot Program

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/18/2019

On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more

File It: Motion for Remand in View of SAS Institute

Jones Day on 6/7/2018

We have previously discussed the ramifications of the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, which held that the PTAB cannot institute an IPR on only some of the petitioned claims. One open question was...more

PTAB Designates Western Digital as Informative of Motions to Amend

Jones Day on 6/4/2018

On June 1, 2018, the PTAB announced new guidance on motions to amend in AIA trials. In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290...more

SAS Institute: One Month In

Foley & Lardner LLP on 6/4/2018

We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability...more

SAS Institute: Two Weeks In

Foley & Lardner LLP on 5/10/2018

As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more

USPTO Holds Webinar to Discuss Supreme Court’s SAS Decision

Jones Day on 5/7/2018

On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in...more

USPTO Issues Guidance on Impact of SAS on AIA Trial Proceedings

Knobbe Martens on 5/4/2018

On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings....more

The Supreme Court’s SAS Decision Is Already Affecting Pending Proceedings

Jones Day on 5/3/2018

On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, where the Court held that the Patent Trial and Appeal Board (PTAB) must issue a final written decision as to any patent claim...more

Change Is Coming (Maybe): Reviewing the AIA Reviews and 101 “Clarity”

Jones Day on 5/1/2018

On April 18, 2018, the Director of the USPTO Andrei Iancu informed the U.S. Senate Judiciary Committee that he aims to propose changes to America Invents Act reviews by this summer 2018. The Director told the Committee that...more

Supreme Court Rulings Signal Significant Changes to Post-Issuance Patent Reviews

Skadden, Arps, Slate, Meagher & Flom LLP on 5/1/2018

In a pair of decisions issued on April 24, 2018, the U.S. Supreme Court clarified the constitutionality of and the appropriate practice for inter partes review. The 7-2 majority opinion in Oil States Energy Services, LLC v....more

PTO Issues Guidance in Wake of SAS Decision

Goodwin on 4/30/2018

As we reported earlier this week, the Supreme Court held in SAS Institute Inc. v. Iancu that when the PTAB institutes an IPR, it must decide the patentability of all challenged claims. The U.S. Patent and Trademark Office...more

Intellectual Property Law - July 2016

Manatt, Phelps & Phillips, LLP on 7/8/2016

Supreme Court: Status Quo in Cuozzo - Why it matters: On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies v. Lee, where it rejected challenges to the Patent Trial and Appeal Board (PTAB) inter partes...more

PTAB Update -- Amending Claims in an IPR Proceedings

McDonnell Boehnen Hulbert & Berghoff LLP on 12/5/2014

Just what does it take to amend your claims during an IPR proceeding before the PTAB? Of course, the America Invents Act ("AIA") specifically provides that Patent Owners may file one motion to amend the claims. AIA, §...more

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America Invents Act › New Guidance

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