News & Analysis as of

United States Patent and Trademark Office › Duty of Candor

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
WilmerHale

USPTO Issues Guidance on Using Artificial Intelligence Tools

WilmerHale on

On April 10, 2024, the United States Patent and Trade Office (USPTO) announced guidance regarding the use of artificial intelligence (AI) tools before the USPTO. ...more

Proskauer - Minding Your Business

Duty of Candor Continues Before the PTAB or Does it?     

Proskauer - Minding Your Business on

In an unprecedented PTAB decision involving Spectrum Solutions LLC (“Spectrum”) (Petitioner) and Longhorn Vaccines & Diagnostics (“Longhorn”) (Patent Owner), the Board found all five challenged patents invalid and imposed...more

McDermott Will & Emery

PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor

McDermott Will & Emery on

On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC. The resulting sanctions order canceled five Longhorn patents. The...more

McDermott Will & Emery

Neither Narrow Proposed Claim Construction nor Work Product Claim Justify Withholding Material Factual Information

McDermott Will & Emery on

The Patent Trial & Appeal Board of the US Patent & Trademark Office (PTO) canceled all challenged claims across five patents because the patent owner failed to meet its duty of candor by selectively and improperly withholding...more

Skadden, Arps, Slate, Meagher & Flom LLP

PTAB Update - March 2023

Skadden, Arps, Slate, Meagher & Flom LLP on

Steep Drop in Discretionary Denials — But Will It Last? The Patent Trial and Appeal Board (PTAB) may be becoming more petitioner-friendly following a June 2022 memorandum that significantly narrows a precedent-setting...more

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

How to Effectively Use Patent Counsel to Navigate the USPTO’s Duty of Candor Guidance Regarding FDA Submissions

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

The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug...more

Fish & Richardson

What to Know About the USPTO’s Duty of Candor Guidance Regarding FDA Submissions

Fish & Richardson on

​​​​​​​By now you have seen multiple reports discussing the PTO’s Notice of July 29, 2022, relating to the duties of candor and good faith. Federal Register, Vol. 87, No. 145, July 29, 2022....more

Foley & Lardner LLP

USPTO Underscores Duty of Disclosure Pertaining To FDA Submissions

Foley & Lardner LLP on

The USPTO has issued a Federal Register Notice discussing how the duty of candor and good faith in dealing with the USPTO applies to “information and statements material to patentability … received from or submitted to the...more

Troutman Pepper

Supplemental Examination: A Tool Worth Further Consideration - Patents: Post-Grant Podcast

Troutman Pepper on

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the second installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more

Foley & Lardner LLP

USPTO To Inquire Into 2 Year Delays

Foley & Lardner LLP on

As set forth in this March 2, 2020 Federal Register Notice and effective immediately, the USPTO is going to start inquiring into petitions to revive an abandoned application, accept a delayed maintenance fee payment, or...more

WilmerHale

Amendments to the Rules of Practice for Trials Before the PTAB Take Effect May 2, 2016

WilmerHale on

The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed...more

Foley & Lardner LLP

The New AIA Rules May Help Patent Owners Avoid Trial

Foley & Lardner LLP on

On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to any ongoing AIA...more

Latham & Watkins LLP

PTO Issues New Final Rules for PTAB Proceedings

Latham & Watkins LLP on

New rules give more options to patent owners and petitioners in pre-institution phase. On March 31, 2016, the Patent and Trademark Office (PTO) issued new final rules to govern practice before the Patent Trial and Appeal...more

Lathrop GPM

New Rules For Patent Validity Challenges: What You Need To Know

Lathrop GPM on

On March 31, 2016, the United States Patent & Trademark Office (USPTO) issued new final rules to make targeted modifications to the existing consolidated set of rules implementing provisions of the Leahy-Smith America Invents...more

McDermott Will & Emery

Federal Circuit Remands PTAB’s Denial of Motion to Amend in IPR - Nike, Inc. v. Adidas AG

McDermott Will & Emery on

Addressing a decision by the Patent Trial and Appeal Board (PTAB or Board) denying a motion to amend claims under inter partes review (IPR), the US Court of Appeals for the Federal Circuit remanded the matter to the Board for...more

Foley & Lardner LLP

Federal Circuit Recognizes Limited Patent Agent Privilege

Foley & Lardner LLP on

In In re Queen’s University At Kingston, a divided panel of the Federal Circuit recognized a limited “attorney”-client privilege for patent agents. The majority’s decision to recognize a patent agent privilege is based...more

BakerHostetler

Federal Circuit Upholds Inequitable Conduct Ruling in Ohio Willow Wood Company

BakerHostetler on

In the latest iteration of Ohio Willow Wood Company[1] (OWW), the Federal Circuit upheld a district court ruling of inequitable conduct against OWW despite the presence of a litigation screen. The Federal Circuit had affirmed...more

Foley & Lardner LLP

Dueling Records: Are Statements in Your 510(k) Putting Your Patents at Risk?

Foley & Lardner LLP on

Laboratory developed test (LDT) providers, previously exempt from U.S. Food and Drug Administration (FDA) oversight, under a new FDA proposal, must now consider if their LDTs constitute moderate-risk (Class II) or high-risk...more

McDermott Will & Emery

PTAB Clarifies Requirements for Claim Amendments - MasterImage 3D, Inc. and MasterImage 3D Asia, LLC v. RealD Inc.

McDermott Will & Emery on

In an order perhaps indicating that the tide is turning for patent owners seeking to amend claims in inter partes review (IPR), an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) provided clarification as...more

McDermott Will & Emery

New PTAB Trial Rules Proposed

McDermott Will & Emery on

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered...more

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

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

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

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

Bracewell LLP

Know Them Before They are Famous (or at least final): The Latest USPTO Proposed Rule Changes

Bracewell LLP on

On August 19, 2015, the United States Patent and Trademark Office (USPTO) released proposed rule changes for trials before the Patent Trial and Appeal Board (PTAB). The proposed rule changes were made in response to input...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Finally Proposes Rule Amendments: The More Things Change . . .

McDonnell Boehnen Hulbert & Berghoff LLP on

More than a year ago, then-Deputy Director Michelle K. Lee posted on the Director's Forum Blog that the USPTO was seeking feedback on PTAB trial proceedings established by the Leahy-Smith America Invents Act ("AIA"). The...more

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