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Patents Administrative Procedure

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

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

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One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

WilmerHale

PTAB/USPTO Update - August 2023

WilmerHale on

USPTO News - On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset....more

Womble Bond Dickinson

USPTO to Provide Patent Grants Electronically - What Patent Applicants Need to Know

Womble Bond Dickinson on

Once a patent Applicant pays an issue fee after receiving a notice of allowance from the U.S. Patent and Trademark Office (USPTO), an issue notification follows shortly thereafter. The issue notification provides the...more

Goodwin

USPTO Doubles Down Calling Out Pharmaceutical Industry

Goodwin on

​​​​​​​The new Director of the U.S. Patent and Trademark Office (USPTO), Katherine Vidal, published a stern reminder regarding the duties of disclosure and reasonable inquiry during examination of a patent application,...more

Womble Bond Dickinson

USPTO Announces New Interim Process for PTAB Decision Circulation and Internal Review

Womble Bond Dickinson on

On May 26, 2022, the USPTO announced its interim process for PTAB decision circulation and internal PTAB review in hopes of further promoting “consistent, clear, and open decision-making.” This interim process models the...more

Jones Day

Legislation: Restoring the America Invents Act

Jones Day on

On Wednesday, September 29, 2021, Senators Patrick Leahy (D) and John Cornyn (R) introduced the Restoring the America Invents Act, a bill that would modify Patent Trial and Appeal Board (PTAB) procedures and facilitate...more

Haug Partners LLP

Changes to the Rules of Ethics for Patent Law Practitioners

Haug Partners LLP on

On May 26, 2021, the United States Patent and Trademark Office (“USPTO”) finalized the amendments to the Rules of Practice in Patent Cases as well as the rules regarding Representation of Others before the United States...more

WilmerHale

PTAB/USPTO Update - August 2021

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director. The Biden Administration has not made an announcement as to who will be nominated to become the next Director....more

Morgan Lewis

Reissue

Morgan Lewis on

A reissue application may be filed by a patent owner to correct an error in a patent. Reissue applications are useful to correct substantive errors that cannot be corrected with a certificate of correction. ...more

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

PTAB Strategies and Insights - October 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

Sheppard Mullin Richter & Hampton LLP

Supreme Court to Decide Constitutionality of PTAB Judge Appointments

The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause.  These...more

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

Global Patent Prosecution - August 2020: Survey of PTAB and CNIPA Proceedings in View of Proposed Regulations Regarding...

In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more

McDonnell Boehnen Hulbert & Berghoff LLP

"Creativity Machine" Cannot Be Named As Inventor

In a Decision on Petition issued in April, and signed by Deputy Commissioner for Patent Examination Policy Robert W. Bahr, the U.S. Patent and Trademark Office refused to vacate a Notice to File Missing Parts of...more

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

PTAB Strategies and Insights - July 2020: Motions to Amend Post Hunting Titan

The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more

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

PTAB Strategies and Insights - July 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

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

Patent Prosecution Tool Kit: Patent Term Extension

Patent term extension (PTE) is available under the 1984 Drug Price Competition and Patent Restoration Act, also known as the Hatch-Waxman Act (The Act). The Act allows the extension of the term of a patent claiming a product...more

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

Patent Prosecution Tool Kit: Patent Term Adjustment

In 1999, Congress created a system of patent term adjustment (PTA) that adds additional time to patent terms to remedy certain delays caused by the U.S. Patent and Trademark Office (PTO) in issuing a patent....more

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

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an...more

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

Patent Prosecution Tool Kit: Information Disclosure: Avoiding Common Pitfalls

An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56....more

McDonnell Boehnen Hulbert & Berghoff LLP

Smith & Nephew File Certiorari Petition in Arthrex Case

While the Federal Circuit's decision last fall in Arthrex, Inc. v. Smith & Nephew, Inc. raised issues about the appointment of Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB), it should...more

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

Global Patent Prosecution - June 2020: Considerations When Appealing a Patent Application at the CNIPA

This article discusses aspects of ex parte appeals of patent applications before the China National Intellectual Property Administration (CNIPA). A patent applicant may appeal (submit a re-examination request) an examiner’s...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

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

USPTO Due Date Extension Available Amid COVID-19 Outbreak

As the COVID-19 outbreak affects the daily lives and businesses of patent and brand owners in the United States, the United States Patent and Trademark Office (USPTO) issued a notice of waiver of certain deadlines....more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Extension of Certain Patent Deadlines

In a USPTO Alert distributed March 31[i], the U.S. Patent and Trademark Office announced the availability of extensions to the time allowed to file certain patent-related documents and to pay certain required fees. The...more

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