In its recent decision in Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit affirmed the district court’s decision to allow Ingenico to introduce certain prior art at trial, finding that inter partes review (IPR) estoppel...more
Welcome to Wilmer Hale's PTAB/USPTO Update for May 2025....more
On March 10, John Squires was officially nominated to be Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office....more
4/8/2025
/ Administrative Appointments ,
Director of the USPTO ,
Inter Partes Review (IPR) Proceeding ,
New Legislation ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patents ,
Portal ,
Post-Grant Review ,
Precedential Opinion ,
Presidential Nominations ,
Proposed Legislation ,
USPTO
On March 26, 2025, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office Coke Morgan Stewart issued a memorandum that makes several significant...more
On February 24, 2025 the United States Patent and Trademark Office (USPTO) announced that David Gooder would step down from his role as Commissioner for Trademarks at the end of the month....more
3/4/2025
/ America Invents Act ,
Apple ,
Cybersecurity ,
Data Protection ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Multi-Factor Authentication ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Policy Memorandums ,
Portal ,
Regulatory Agenda ,
Trademark Registration ,
Trademarks ,
USPTO
On January 20, the same day Donald Trump was sworn in as president, Coke Morgan Stewart was sworn in as the Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director of the United States...more
On the same day Donald Trump was sworn in as President, Coke Morgan Stewart was sworn in as the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office...more
On January 14, 2025, the Court of Appeals for the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 2023-2346 (Fed. Cir.), affirmed the Patent Trial and Appeal Board’s ruling that “a published patent...more
1/20/2025
/ America Invents Act ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Samsung ,
USPTO
After stepping down as Director of the USPTO in mid-December, Kathi Vidal rejoined the litigation department at Winston & Strawn LLP. Derrick Brent, formerly Deputy Director, is currently Acting Director of the USPTO. It is...more
On November 12, USPTO Director Kathi Vidal announced in a post on LinkedIn and a letter to friends and colleagues that she would be stepping down the second week in December. Deputy Director Derrick Brent will take over until...more
12/3/2024
/ Administrative Appointments ,
Administrative Resignation ,
Congressional Committees ,
Directors ,
Fees ,
Filing Fees ,
Final Rules ,
NPRM ,
Patent Fees ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Trademark Manual of Examining Procedure (TMEP) ,
Trademarks ,
USPS ,
USPTO
On October 21, the USPTO announced the appointment of Nancy U. Kamei as Chief Public Engagement Officer and Director of the Office of Public Engagement (OPE)....more
On October 2, the USPTO terminated proceedings in approximately 3,100 patent applications due to the fraudulent entry of S-signatures of registered practitioners by others. The final order noted that improper use of a...more
Last month, Director Kathi Vidal posted on her blog about global efforts to address climate change through sustainable innovation and about USPTO resources to support the military community....more
On July 7, the Senate passed a resolution “[r]ecognizing the importance of trademarks in the economy and the role of trademarks in protecting consumer safety, by designating the month of July as ‘National Anti-Counterfeiting...more
8/6/2024
/ Artificial Intelligence ,
Biden Administration ,
Consumer Product Companies ,
Copyright ,
Copyright Office ,
Counterfeiting ,
Executive Orders ,
Guidance Update ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Proposed Legislation ,
Proposed Rules ,
Trademark Application ,
Trademarks ,
USPTO
USPTO Leadership -
..On June 3, the USPTO announced the appointment of Derris Banks as Regional Director of the USPTO’s Elijah J. McCoy Midwest Regional Office located in Detroit, Michigan....more
On June 7, 2024, the Court of Appeals for the DC Circuit in Medical Imaging & Technology Alliance et al. v. Library of Congress et al., No. 23-5067 (D.C. Cir.), vacated an earlier district court decision and held that rules...more
Patent and Trademark Public Advisory Committees, 89 FR 44634 (May 21, 2024) (“seeking nominations for up to three members of its Patent Public Advisory Committee (PPAC) to advise the Director of the USPTO on patent policy,...more
On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more
5/7/2024
/ Administrative Review ,
America Invents Act ,
Artificial Intelligence ,
Comment Period ,
Directors ,
Fees ,
Final Rules ,
Inter Partes Review (IPR) Proceeding ,
NPRM ,
Patent Litigation ,
Patent Term Extensions ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Proposed Rules ,
Request for Continued Examination ,
USPTO
On April 19, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) that proposes rules regarding the exercise of discretion to determine whether to institute an Inter Partes...more
On April 16, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions in America Invents Act (AIA)...more
On March 8, the USPTO joined other intellectual property offices in celebrating International Women’s Day with a theme of “Invest in Women: Accelerate Progress.”...more
4/4/2024
/ America Invents Act ,
Artificial Intelligence ,
Copyright ,
Copyright Office ,
Diversity ,
E-Signatures ,
Filing Fees ,
Final Rules ,
Innovation ,
Judicial Review ,
Non-Fungible Tokens (NFTs) ,
Patent Trial and Appeal Board ,
Proposed Rules ,
Public Comment ,
Trademarks ,
USPTO ,
WIPO
On March 25, 2024, the Federal Circuit issued an opinion in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., addressing whether the act of importing two heart valve systems for a medical conference was within the...more
On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more
3/5/2024
/ America Invents Act ,
Artificial Intelligence ,
Guidance Update ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Motion to Amend ,
Obviousness ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Rules ,
USPTO
A recent article, “Discovering Value: Women’s Participation in University and Commercial Artificial Intelligence (AI) Invention,” reports on a new study finding that women’s participation in patenting results in patents with...more
On January 4, the USPTO announced the appointment of new leaders for the agency’s policy and communications teams. Sharon Israel will serve as the Chief Policy Officer and Director for International Affairs, and Jack...more
1/9/2024
/ Administrative Review ,
Advisory Committee ,
Comment Period ,
Department of Health and Human Services (HHS) ,
Examiners ,
Ford Motor ,
General Motors ,
Honda ,
Nissan ,
NIST ,
Nokia ,
Patent Trial and Appeal Board ,
Patents ,
Request For Information ,
USPTO ,
World Health Organization