On October 18, 2024, the USPTO’s final rule regarding Motion to Amend (“MTA”) practice and procedures in trial proceedings under the America Invents Act became effective. The rule makes permanent several MTA pilot program...more
The United States Patent and Trademark Office ("USPTO") is seeking public input about the need for a statutory experimental use exception in light of the common law jurisprudence. ...more
On October 21, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) provided a Notice of Proposed Rulemaking (“NPRM”) concerning their rules of practice in allocating...more
10/31/2019
/ America Invents Act ,
Burden of Persuasion ,
Comment Period ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Notice of Proposed Rulemaking (NOPR) ,
Post-Grant Review ,
Preponderance of the Evidence ,
Public Comment ,
Rules of Practice ,
USPTO
The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more
Patent Trial and Appeal Board (“PTAB”) hearings are typically open to the public, and a schedule of upcoming hearings is posted on the United States Patent and Trademark Office (“USPTO”) website. But hearings are only...more
On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more
8/2/2018
/ Corporate Counsel ,
Evidence ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Oral Argument ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Professional Conferences ,
Subject Matter Experts (SMEs) ,
USPTO ,
Young Lawyers
On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction standard...more
6/11/2018
/ Administrative Proceedings ,
America Invents Act ,
Claim Construction ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
On April 18, 2018, the Director of the USPTO Andrei Iancu informed the U.S. Senate Judiciary Committee that he aims to propose changes to America Invents Act reviews by this summer 2018. The Director told the Committee that...more
5/1/2018
/ America Invents Act ,
Claim Limitations ,
MPEP ,
New Guidance ,
Patent Applications ,
Patent Examinations ,
Patent Reform ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO