Hot on the heels of rescinding former Director Vidal’s June 2022 memo providing guidance on discretionary denials, Acting Director of the USPTO, Coke Morgan Stewart, issued a memo yesterday outlining new “Interim Processes...more
3/28/2025
/ Administrative Procedure Act ,
Filing Deadlines ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Regulatory Reform ,
USPTO
Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”
* The opinions expressed are those of the attorneys and do...more
The USPTO published a Notice of Proposed Rulemaking (NPR) on Friday proposing new rules governing pre-issuance internal circulation and review of decisions within the PTAB. 88 Fed. Reg. 69578-69583 (Oct. 6, 2023). The Office...more
The USPTO issued Revised Interim Guidelines today on the process for requesting Director Review of PTAB decisions. Since the U.S. Supreme Court’s decision in United States v. Arthrex, 141 S.Ct. 1970 (2021), which held that...more
On April 20, 2023, the USPTO announced Advance Notice of Proposed Rulemaking for potential PTAB reforms. The goal of the Notice was to seek public input regarding proposed changes to discretionary institution practices,...more
Institution is Discretionary -
35 USC §§ 314, 324 provide that the Director “may not authorize” a PTAB proceeding “unless” the petition shows that there is a “reasonable likelihood” (for IPR) or that it is “more likely...more
Today, in an opinion by Chief Justice Roberts, the Supreme court issued its opinion in U.S. v. Arthrex, Inc., vacating the Federal Circuit's opinion in Arthrex v. Smith and Nephew. The Court agreed with the Federal Circuit...more
6/22/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
Under AIA 35 U.S.C. § 112(b), a patent specification “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the...more
On February 6, Kilpatrick Townsend’s Justin Krieger spoke on the IPO Chat Channel on the USPTO’s new Motion to Amend (MTA) Pilot Program and on prosecution related options for amending claims outside of IPR proceedings.
...more
On October 29, 2018, the US Patent & Trademark Office (USPTO or Office) issued a Notice requesting comments on proposed modifications to motion to amend (MTA) practice. The Office received a number of comments and questions...more
The PTAB has long been hesitant in granting motions to amend. But a recent review of motion to amend statistics shows that they are being granted with greater frequency—with a notable uptick since February. Although it’s...more
Yesterday, the U.S. Supreme Court accepted Helsinn Healthcare S.A.’s certiorari petition to consider whether, under the America Invents Act (AIA), an inventor’s sale of an invention to a third party that is obligated to keep...more
Kilpatrick Townsend partner Justin Krieger recently spoke at the North Carolina Bar Association’s “2018 Intellectual Property Law Section Annual Meeting and Litigation Section Joint CLE” in Raleigh, North Carolina. Mr....more
Consistent with Director Iancu’s goal of providing greater predictability and certainty in the US patent system, the US Patent and Trademark Office (USPTO) on Tuesday proposed a new rule to change the standard for claim...more