News & Analysis as of

Patents Administrative Proceedings

Venable LLP

PTAB Proposes Rules Governing Director Review of PTAB Decisions

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On April 16, 2024, the PTAB proposed new rules (“proposed rules”) governing the Director Review process, which would remain consistent with the Interim review process currently in place, and codify those procedures....more

Jones Day

Finish in Eight Months: The EPO Sets Timeline for New Accelerated Opposition Practice

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The European Patent Office ("EPO") has committed to specific timelines for its new practice of accelerating opposition proceedings....more

Venable LLP

PTAB Eliminates POP Review and Expands Director Review to Institution Decisions

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As of July 24, 2023, the United States Patent and Trademark Office (USPTO) revised the interim Director Review process and replaced the Precedential Opinion Panel (POP) with the Appeals Review Panel process, which will review...more

International Cannabis Bar Association...

[Hybrid Event] Global Cannabis Intellectual Property Symposium 2023 - September 28th - 29th, Montreal, Quebec, Canada

Unlock the Future of Cannabis Innovation at INCBA’s Global Cannabis IP Symposium at McGill University in Montreal, Canada. Join INCBA for this groundbreaking two-day event dedicated to intellectual property in cannabis. Gain...more

Stinson LLP

USPTO Provides Interim Guidance on PTAB Discretionary Denials Under Fintiv

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On June 22, 2022, the U.S. Patent and Trademark Office (USPTO) announced new interim guidance regarding discretionary denials of patent challenges at the Patent Trial and Appeal Board (PTAB) based on parallel litigation. The...more

Womble Bond Dickinson

Russian Sanctions Create Patent Risks

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While multi-national sanctions recently imposed on Russia were intended to punish Russia for its aggression in Ukraine, the effects of the sanctions have led to a need for tough decisions for U.S. entities with patent...more

Jones Day

Fed. Cir. Rejects New IPR Constitutional Challenges

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In Mobility Workx, LLC v. Unified Patents, LLC, the Federal Circuit in a split decision concluded that Mobility Workx, LLC’s constitutional challenges to structure and funding of the Patent Trial and Appeal Board (“PTAB”) are...more

Knobbe Martens

Federal Circuit Holds That the PTAB Does Not Have an Impermissible Incentive to Institute IPRs

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MOBILITY WORKX, LLC v. UNIFIED PATENTS, LLC Before Newman, Schall, and Dyk. Appeal from the Patent Trial and Appeal Board. Summary: Fee-funded structure of AIA review proceedings does not violate due process....more

Jones Day

Motion to Amend Pilot Program Extended

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The United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to extend the Motion to Amend (MTA) pilot program. This program provides additional options for a patent owner...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2021

Bio-Rad Laboratories, Inc. v. International Trade Commission, Appeal Nos. 2020-1475, -1605 (Fed. Cir. May 28, 2021)- In this week’s Case of the Week, the Federal Circuit considered an appeal from the International Trade...more

Morgan Lewis

Patent Interferences

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A patent interference is an inter partes proceeding to determine which party was the first to invent commonly claimed subject matter. An interference is also a viable procedure for challenging the validity of an issued patent...more

Morgan Lewis

Post-Grant Review (PGR)

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A PGR is a trial proceeding conducted by the Patent Trial and Appeal Board (PTAB) to determine the patentability of one or more claims of a patent that issued from an application filed after March 15, 2013. ...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Amneal Pharm. LLC v. Almirall, LLC, 960 F.3d 1368...

Abbreviated new drug (ANDA) applicant Amneal petitioned for an inter partes review (IPR) of Almirall’s patent listed in the Food and Drug Administration’s (FDA) Orange Book for a prescription drug to treat acne. Almirall...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Hogan Lovells

COVID-19 IP update: EPO

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EPO - By way of an update, on 10 November 2020, the EPO has decided that all oral proceedings in opposition cases shall be held by videoconference as standard. Only if there are serious reasons preventing the use of video...more

WilmerHale

5 Takeaways From Post-SAS Inter Partes Reviews

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We surveyed inter partes review proceedings instituted in the year following the U.S. Supreme Court's 2018 decision in SAS Institute Inc. v. Iancu, and identified five takeaways regarding the Patent Trial and Appeal Board's...more

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

PTAB Strategies and Insights - August 2020: Appeals Raise Constitutional Challenge to PTAB Fee and Compensation Structure

Appellants in New Vision Gaming & Development v. SC Gaming, Inc. f/k/a Bally Gaming, Inc. and Mobility Workx, LLC v. Unified Patents, LLC challenge the constitutionality of the administrative patent judge (APJ) incentive...more

Morgan Lewis

COVID-19 Related IP Office Closures and Extensions

Morgan Lewis on

Jurisdiction Status Date Patent Office Status   Known Updates In Consideration of COVID-19   United States Patent May 4, 2020 Open, not to public Certain deadlines for actions due between March 27, 2020 and May 31, 2020...more

Hogan Lovells

COVID-19 IP update: impact on litigation (UPDATED)

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China - In February, during the peak of the COVID-19 epidemic in China, the Supreme People’s Court issued a statement that courts at all levels were to assist parties in litigation to file cases or mediate disputes online,...more

Lowenstein Sandler LLP

The U.S. Patent and Trademark Office Response to COVID-19

On March 27, President Donald Trump signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act. The CARES Act temporarily expands the authority of the Director of the United States Patent and Trademark...more

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

PTAB Strategies and Insights - January 2020: Chaos All Around - Arthrex and Alice

The only real answers we are hearing from the patent community is that no one knows what to do or what might happen next --- post Arthrex. As a quick reminder – the Federal Circuit ruled (1) the current PTAB judges were...more

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

PTAB Strategies and Insights - December 2019

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

Troutman Pepper

The American Rule Is Still the Rule

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Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019) - Yesterday, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark...more

Jones Day

Parties Seek To Preserve Arthrex Rights Despite Waiver Ruling

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Following on Judge Newman’s dissent in Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., parties are seeking to preserve their rights by challenging the Federal Circuit’s holding that a party’s failure to raise...more

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

PTAB Strategies and Insights - November 2019: Improper Service and "Shapeshifting" Arguments Doom Time-Bar Challenge

In Game and Tech Co. (“GAT”) v. Wargaming Grp. Ltd, the Federal Circuit shed some light on what qualifies as “service” for purposes of triggering the time-bar of 35 U.S.C. § 315(b). The Court also clarified the role that the...more

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