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 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 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 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
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
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
Patent Center Replaces EFS-Web and Private PAIR -
On November 15, following a one-week delay, the legacy EFS-Web and Private Patent Application Information Retrieval (Private PAIR) systems were officially retired and...more
On August 31, 2023, the Patent Trial and Appeal Board published its updated Oral Hearing Guide. Changes reflected in the update include the addition of an all-virtual hearing option for AIA trials, updated information on how...more
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
8/8/2023
/ Administrative Procedure ,
Administrative Review Board ,
America Invents Act ,
Appeals ,
Artificial Intelligence ,
Comment Period ,
Congressional Investigations & Hearings ,
Copyright ,
Final Rules ,
OMB ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
PTAB Precedential Opinion Panel (POP) ,
Trademarks ,
USPTO
The USPTO published Revision 07.2022 of the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). A change summary is available here....more
3/7/2023
/ Administrative Law Judge (ALJ) ,
Comment Period ,
Congressional Committees ,
Final Rules ,
Google ,
Inter Partes Review (IPR) Proceeding ,
Mylan Pharmaceuticals ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Roku ,
Samsung ,
USAA ,
USPTO ,
Xerox
USPTO Leadership -
..The USPTO announced new staff additions and promotions to its leadership team.
..Shirin Bidel-Niyat was elevated to Chief of Staff, having served previously as a senior advisor to Director Vidal....more
USPTO Leadership -
..The USPTO announced Derrick Brent as the new Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO (“Deputy Director”), effective August 1. His...more
USPTO Leadership -
Drew Hirshfeld is still performing the functions and duties of Director. President Biden nominated Kathi Vidal to be the next Director....more
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
9/9/2021
/ Administrative Procedure Act ,
America Invents Act ,
Biologics ,
Claim Construction ,
Fraud ,
Inter Partes Review (IPR) Proceeding ,
Orange Book ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Preliminary Injunctions ,
Trademarks ,
USPTO
USPTO News -
..Administrative Patent Judges Michael Cygan and Kristi L. R. Sawert, and Patent Attorney Thomas Volper discussed the one-year ex parte appeal, Fast-Track Appeals Pilot Program, and what happens after PTAB...more
3/2/2021
/ Administrative Law Judge (ALJ) ,
Appeals ,
Coronavirus/COVID-19 ,
Counterfeiting ,
Fast Track Process ,
Japan Patent Office ,
Korea ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Trademark Modernization Act (TMA) ,
Trademarks ,
USPTO
An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more
On February 7, 2019, in Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Company, the Federal Circuit dismissed an appeal brought by a petitioner in an inter partes review (IPR) for lack of standing and mootness because...more
2/13/2019
/ Article III ,
Biosimilars ,
Bristol-Myers Squibb ,
Inter Partes Review (IPR) Proceeding ,
Momenta ,
Mootness ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Standing
The legal landscape for the automotive sector continued its evolution in 2018 with the development of new technology becoming a focal point for litigation, patenting and regulation. As we did at the close of 2017, we look...more
1/16/2019
/ Automotive Industry ,
Defend Trade Secrets Act (DTSA) ,
Design Patent ,
Driverless Cars ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Post-Grant Review ,
Regulatory Standards ,
Technology ,
Trade Secrets
This is the second in a series of five articles written by WilmerHale discussing how the emergence of IoT technologies will impact the automotive industry. The first article, ‘‘The Developing Landscape of Internet of Things...more
11/21/2018
/ Automotive Industry ,
CLS Bank v Alice Corp ,
Connected Cars ,
Data Collection ,
Data-Sharing ,
Drivers ,
Innovation ,
Intellectual Property Protection ,
Internet of Things ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Technology Sector ,
Transportation Industry
Six years after the America Invents Act created inter partes review proceedings, patent disputes increasingly involve parallel litigation, with at least one inter partes review proceeding in tandem with district court...more