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 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 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 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
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
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 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
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
USPTO News -
On October 23, 2023, the USPTO Office of the Chief Economist released a report detailing patenting activity related to COVID-19 diagnostic technology....more
11/6/2023
/ Artificial Intelligence ,
Biden Administration ,
Consultation ,
Coronavirus/COVID-19 ,
Diagnostic Tests ,
Executive Orders ,
Information Reports ,
Intellectual Property Protection ,
Patent Trial and Appeal Board ,
Patents ,
Tribal Governments ,
WIPO
Patent Center is slated to fully replace the legacy EFS-Web system and Private Patent Application Information Retrieval (Private PAIR) tool on November 8, 2023. The USPTO continues to host virtual training events to help...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
On June 7, the USPTO released its 2022-2026 Strategic Plan. According to the USPTO, the new plan outlines the USPTO's mission-focused strategic goals, which are: (1) driving inclusive U.S. innovation and global...more
United States Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023 (the “Act”) on June 22, 2023. The Act seeks to modify and clarify “patent eligibility jurisprudence...more
On May 23, the USPTO announced a request for comments seeking public input on whether to make permanent or modify the PTAB’s Motion to Amend (MTA) Pilot Program. The USPTO is also seeking related input on the rules of...more
6/7/2023
/ Anti-Piracy ,
Climate Change ,
Comment Period ,
Counterfeiting ,
Final Rules ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patents ,
Piracy ,
Proposed Rules ,
Registration Requirement ,
USPTO ,
USPTO Pilot Program
On March 6, the USPTO announced a new Green Energy Category of its Patents for Humanity Program. Patents for Humanity is an awards competition that recognizes innovators who use technology to meet global humanitarian...more
4/4/2023
/ Congressional Committees ,
Expedited Actions Process ,
Filing Fees ,
Final Rules ,
Humanitarian Assistance ,
Incentive Awards ,
Innovation ,
Inter Partes Review (IPR) Proceeding ,
Interim Rule ,
Patent Examinations ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
PTAB Precedential Opinion Panel (POP) ,
USPTO