News & Analysis as of

Filing Deadlines Patent Trial and Appeal Board

Goodwin

Issue 40: PTAB Trial Tracker

Goodwin on

Precedential Opinion Addresses Conclusory Expert Declarations - In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more

McDermott Will & Emery

PTO Adds Green Energy Category to Patents for Humanity Program

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On March 6, 2023, the US Patent & Trademark Office (PTO) introduced a new green energy category to its Patents for Humanity Program. This new award category provides business incentives for patent applicants, holders and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Time Periods in Toolgen Interferences Extended by Party Stipulation

The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has issued a notice of extension of certain deadlines by party stipulation in the two interferences involving ToolGen Inc. as Senior Party (No. 106,126...more

American Conference Institute (ACI)

[Virtual Event] Paragraph IV on Virtual Trial - COVID-19 Edition - August 20th, 8:45 am - 6:00 pm EDT

Join us for a one-day virtual event for Counsel for Hatch-Waxman Litigators. While COVID-19 prevented us from meeting in person this April in NYC, we are pleased to announce a special one-day virtual event Paragraph IV on...more

Sunstein LLP

Virus-Related Legislation Extends Patent and Trademark Deadlines

Sunstein LLP on

The details of financial relief provided to households and businesses in the recently passed Coronavirus Aid, Relief and Economic Security (CARES) Act may have received all the press, but other provisions of the CARES Act...more

American Conference Institute (ACI)

[Webinar] Examining the COVID-19 Effect on the Business and Practice of Hatch-Waxman Litigation - June 2nd, 12:00 pm - 1:00 pm EST

The coronavirus global pandemic has ushered in extraordinary roadblocks for the pharmaceutical industry. To help you carve out a path forward, in-house senior executives and industry leaders will convene virtually at ACI’s...more

Spilman Thomas & Battle, PLLC

U.S. PTO COVID-19 Update: Patent Office Extensions Through May 31, 2020

The Director of the U.S. Patent and Trademark Office on April 28, 2020 signed a Notice of Extended Waiver for certain deadlines associated with patent-related filings, if the missed deadline resulted from situations relating...more

Mintz - Intellectual Property Viewpoints

How the CARES Act Affects Patent Related Deadlines

In accordance with the CARES (Coronavirus Aid, Relief, and Economic Security) Act, the USPTO has extended some patent-related deadlines. Subsection 12004(a) of the CARES Act gives the Director of the United States Patent...more

Goodwin

USPTO Extends Certain Deadlines to June 1 Due to COVID-19 Pandemic

Goodwin on

On April 28, 2020, the U.S. Patent and Trademark Office (USPTO) issued a notice to extend certain patent and trademark deadlines to June 1, lengthening extensions that the USPTO had announced on March 31.  Pursuant to the...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Further Extension of Certain Patent Deadlines

In a notice posted on its website last week, the U.S. Patent and Trademark Office announced that it was further extending the time to file certain patent-related documents and to pay certain required fees....more

Bracewell LLP

USPTO Extends Trademark And Patent Deadlines Due to Coronavirus Pandemic

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As IP Offices around the world work to mitigate the impact of the global health threat, the U.S. CARES Act gives USPTO authority to extend statutory deadlines to help ease burden of IP owners affected by COVID-19 The...more

Stinson LLP

USPTO Extends Filing and Fee Payment Dates under CARES Act

Stinson LLP on

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the USPTO Director authorized a 30-day extension for filing dates and fee payment for those who are unable to meet patent-related deadlines due to the...more

Haug Partners LLP

Global Updates From Intellectual Property Offices During the COVID-19 Pandemic

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As the world is in the midst of the COVID-19 pandemic, intellectual property owners have expressed concern over the submission of documents to intellectual property offices and the effects the pandemic may have on pending...more

Troutman Pepper

USPTO Extends Certain Patent Deadlines to Address COVID-19 Delays

Troutman Pepper on

Amid concerns from inventors, applicants and their representatives that the COVID-19 outbreak is creating hardships in maintaining the prosecution and protection of patents and trademarks, the Director of the United States...more

Snell & Wilmer

Waiver of USPTO Deadlines Under the CARES Act

Snell & Wilmer on

Further to our update from late last week, which outlined certain notices issued from the United States Patent and Trademark Office (USPTO) in light of the COVID-19 pandemic, on March 27, 2020, President Trump signed the...more

Akerman LLP

Patent and Trademark Office Provides Limited Extensions For Applicants Affected By COVID-19

Akerman LLP on

Yesterday, March 31, 2020, the USPTO issued a Notice of Waiver of Patent-Related Timing Deadlines under the CARES Act. The Waiver concerns a limited set of deadlines for patent-related documents or fees that are otherwise due...more

Jones Day

PTAB Applies Statutory Grace Period to Filing of Continuing Applications

Jones Day on

The PTAB has previously applied to IPR filings the statutory grace period under 35 U.S.C. § 21(b) for USPTO papers and fees due on a weekend or holiday. See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op....more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Excuse Late Filing of Exhibits to IPR Petition

The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s motion to excuse the late filing of the exhibits to its petition for inter partes review (IPR). The PTAB found that the petitioner had failed to show good...more

Mintz - Intellectual Property Viewpoints

Double Check Your Filings, A Cautionary Tale at the PTAB

Recently in Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-01683, Paper No. 11 (PTAB Dec. 18, 2018), the Patent Trial and Appeal Board (“Board”) denied Petitioner’s motion to excuse the late filing of...more

Knobbe Martens

PTAB Extends Deadline to Decide IPR Motion to Amend in view of Aqua Products

Knobbe Martens on

The PTAB extended the deadline for issuing its IPR final written decision on a motion to amend by up to six months to provide additional time to consider the impact of the Federal Circuit’s recent en banc Aqua Products...more

Jones Day

Delayed Payment Proves Fatal for Cultec’s PTAB Challenge

Jones Day on

Under 35 U.S.C. § 315(b), a petition for inter partes review (IPR) may not be filed more than one year after the date on which the petitioner was served with a patent infringement complaint. Thus, a petition must meet all of...more

Foley & Lardner LLP

Timing Is Everything: Successful Joinder Motions At The PTAB

Foley & Lardner LLP on

The joinder provisions of inter partes review (IPR) proceedings can be a great tool to circumvent the 1-year IPR filing deadline following service of a complaint for infringement. However, grant of a joinder petition by the...more

Foley & Lardner LLP

PTAB Holds Technical Difficulties Will Not Save Late-Filed IPR Petitions

Foley & Lardner LLP on

The PTAB recently stood firm in denying a petitioner’s motion to change the filing dates of two IPR petitions that missed a statutory deadline by less than ten minutes. Case IPR2016-00281 and IPR2016-00282 (Patents 8,603,514...more

Faegre Drinker Biddle & Reath LLP

File It Early: The PTAB Rejects an IPR Petition for Being One Day Late—Despite Protestations of "Malfunctioning" PTO Website

35 U.S.C. § 315(b) bars petitions for an inter partes review that are filed “more than one year after the date on which the petitioner, real party in interest or privy of the petitioner is served with a complaint alleging...more

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