A new interim process for the acting director to exercise discretion as to whether to institute an inter partes review ("IPR") or a post-grant review ("PGR") was announced on March 26, 2025, in which discretionary...more
4/4/2025
/ Administrative Procedure ,
Director of the USPTO ,
Filing Deadlines ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Rules ,
USPTO
Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings. ...more
4/4/2025
/ Administrative Agencies ,
Administrative Procedure Act ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Judicial Authority ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday. ...more
On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memorandum discussed...more
Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...more
2/25/2025
/ Appeals ,
Enablement Inquiries ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Palo Alto Networks (PAN) filed a petition for inter partes review of Centripetal Networks’ patent—U.S. Patent No. 10,530,903—which is directed to a computing system for correlating packets in communication networks with a...more
The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the General...more
On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more
The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co.,...more
1/23/2025
/ Appeals ,
Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Trial Practice Guidance ,
USPTO
Petitioners may soon need to check their account balances, as the United States Patent and Trademark Office (“USPTO”) is raising patent fees across the board, effective January 19, 2025. 89 Fed. Reg. 91898....more
The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21, 2024. In...more
12/18/2024
/ Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Legislative Agendas ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Regulatory Agenda ,
Regulatory Reform ,
USPTO
On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice attorneys. Full text of the final rule...more
On September 30, 2024, the USPTO issued a final rule governing the process for Director Review of proceedings under the AIA. This formalized the USPTO’s interim Director Review procedures implemented by the USPTO following...more
On June 12, 2024, the USPTO issued a final rule governing the pre-issuance circulation and review of decisions within the PTAB. This formalized current USPTO procedures within the Standard Operating Procedure (SOP4) adopted...more
The USPTO has extended the public comment deadline in order to afford all stakeholders an opportunity to weigh in on the subject matter eligibility of AI inventions....more
9/23/2024
/ Artificial Intelligence ,
Comment Period ,
Deadlines ,
Innovative Technology ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Machine Learning ,
Patent Applications ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Public Comment ,
USPTO
The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more
In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition...more
The Situation: Concerns that uncertain and unpredictable patent subject matter eligibility jurisprudence thwarts U.S. economic and technological advancements are especially acute in the fast advancing AI space. Stakeholders...more
Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more
6/20/2024
/ Design Patent ,
Examiners ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more
5/30/2024
/ America Invents Act ,
Client Services ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Pro Hac Vice ,
USPTO
On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder feedback responsive to the...more
5/3/2024
/ Comment Period ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Ownership ,
Patents ,
Petition for Review ,
Post-Grant Review ,
Proposed Rules ,
Regulatory Agenda ,
Regulatory Reform ,
USPTO
The USPTO is seeking public input on whether prior art must be authored by humans and how, if at all, AI-generated disclosures should be treated differently from non-AI generated disclosures....more
The USPTO's April 11, 2024, guidance clarifies how existing USPTO rules apply to the use of AI by practitioners when interacting with the USPTO....more
On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”) Practice and Procedures...more
3/25/2024
/ Comment Period ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pilot Programs ,
Proposed Rules ,
USPTO
The Background: In response to the Biden administration's "Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence" on October 30, 2023, the U.S. Patent and Trademark Office...more
2/19/2024
/ Artificial Intelligence ,
Biden Administration ,
Executive Orders ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
Joint Inventors ,
New Guidance ,
Patent Act ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Public Comment ,
USPTO