News & Analysis as of

Petition for Review United States Patent and Trademark Office

Jones Day

USPTO Issues Notice of Proposed Rulemaking On Discretionary Denial, Serial and Parallel Petitions, and Settlement

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On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder feedback responsive to the...more

WilmerHale

PTAB/USPTO Update - October 2021

WilmerHale on

USPTO News - On September 9, 2021, Senators Patrick Leahy and Thom Tillis wrote a letter to Acting Director Andrew Hirshfeld requesting that the USPTO “take steps to reduce patent applicants’ making inappropriate...more

Jones Day

A Cautionary Tale: Paying IPR Filing Fees Via Wire Transfer

Jones Day on

A June 25, 2021 decision by the PTAB has clarified that when paying the filing fee via wire transfer, the inter partes review (“IPR”) petition filing date is based upon when the funds are made available to the USPTO.  ...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Silicon Valley Challenges the PTAB’s NHK-Fintiv Rule: Can IPRs Be Denied Based on Non-Statutory Factors?

Last week, four major technology companies – Apple, Cisco, Google, and Intel – brought suit against the United States Patent and Trademark Office (“USPTO”), challenging its authority to reject petitions for inter...more

Bradley Arant Boult Cummings LLP

Review of All Claims in Petition for Inter Partes Review Required after SAS Institute

On the same day that the Supreme Court upheld the constitutionality of inter partes reviews, it ruled in SAS Institute Inc. v. Iancu that the United States Patent and Trademark Office wrongly implemented regulations allowing...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Magnum Oil Tools Int'l, Ltd. (Fed. Cir. 2016)

McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more

Troutman Pepper

Do-Gooders Won’t Take “No” For An Answer

Troutman Pepper on

About a month ago we posted an article on the dismissal of Consumer Watchdog’s appeal at the Court of Appeals for the Federal Circuit following a loss at the USPTO in an inter partes reexamination. Consumer Watchdog, Inc. had...more

McDermott Will & Emery

Getting It Right the First Time

McDermott Will & Emery on

United State Postal Service v. Return Mail, Inc.; Conopco, Inc. v. The Proctor & Gamble Co. - Two recent orders by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) emphasize...more

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