News & Analysis as of

Administrative Procedure Act United States Patent and Trademark Office Appeals

Jones Day

Acting Director Releases First Decisions Under New Bifurcated Process

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On May 16, 2025, USPTO Acting Director Coke Morgan Stewart released the first four discretionary denial decisions under the PTAB’s new process. Under the new process, the parties separately brief discretionary denial issues...more

McDermott Will & Emery

No Fairytale Ending for Consumer Opposition: RAPUNZEL Reinforces Lexmark Standing Limits

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The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s dismissal of a trademark opposition brought by a consumer, holding that mere consumer interest is insufficient to establish...more

Morrison & Foerster LLP

Discretionary Denials—Act II

On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more

McGuireWoods LLP

Role of USPTO’s Delegated Rehearing Panel Changing With New Administration

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Coke Morgan Stewart, named on Inauguration Day 2025 as deputy director of the U.S. Patent and Trademark Office (USPTO) and now serving as acting director of the USPTO, has already indicated that she will manage Director...more

McDermott Will & Emery

Detour Ahead: New Approach to Assessing Prior Art Rejections Under § 102(e)

The US Court of Appeals for the Federal Circuit established a more demanding test for determining whether a published patent application claiming priority to a provisional application is considered prior art under pre-America...more

Jones Day

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

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A new interim process for the 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 considerations and...more

Foley Hoag LLP

PTAB Changes Procedure for Determining Discretionary Denials

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Key Takeaways: - The Director, in consultation with at least three APJs, will now decide the discretionary denial question, rather than having the merits panel decide the issue. - Discretionary denial will have separate...more

Morrison & Foerster LLP

Pivot At The PTAB: The Acting Director Bifurcates Review

With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more

McDermott Will & Emery

PTO Reverts to Prior Post-Grant Guidelines for Cases Involving Parallel District Court Litigation

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On February 28, 2025, the acting director of the US Patent & Trademark Office (PTO) announced that the agency will revert to previous guidelines for discretionary denials of petitions for post-grant proceedings where there is...more

McDermott Will & Emery

An Odyssey of Timeliness: Appointments Clause Arguments Must Be Preserved

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Citing forfeiture, the US Court of Appeals for the Federal Circuit upheld the dismissal of a complaint against the US Patent & Trademark Office (PTO). The complaint sought director review of a 2018 Patent Trial & Appeal Board...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Resolving Claim Ambiguity via Reissue

Takeaways - -Intra-patent claim inconsistencies are errors correctible via reissue. -Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Director Review Codified as Director Vidal Steps Down—What is this Power and How Did Vidal Wield It?

With U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s return to private practice in December 2024 and the future permanent Director yet to be tapped for nomination, it is a good time to reflect on one of the...more

Erise IP

Eye on IPRs: January 2025: USPTO Fee Increases; Patent Challengers Can't Dismiss Fed. Cir. Appeal After Decision

Erise IP on

Effective January 19, 2025, the USPTO is increasing various patent filing fees, including an across-the-board fee increase as well as specific increases for America Invents Act trials, Director Review, and other procedures....more

Rothwell, Figg, Ernst & Manbeck, P.C.

Reviewing 2024's Crucial Patent Law Developments

As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more

McDermott Will & Emery

Got Pillaged? Not If You Didn’t Follow the APA and FTCA

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The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing claims under the Administrative Procedure Act (APA) and Federal Tort Claims Act (FTCA) against the US Patent & Trademark Office...more

McDermott Will & Emery

Rum Wars: Lanham Act Doesn’t Preclude Judicial Review of PTO Renewal Decisions

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The US Court of Appeals for the Fourth Circuit reversed and remanded a district court’s ruling, holding that the Lanham Act does not foreclose an Administrative Procedure Act (APA) action for judicial review of the US Patent...more

McDermott Will & Emery

No Home Away From Home: Federal Circuit Confirms PTO Domicile Requirements

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The US Court of Appeals for the Federal Circuit confirmed the US Patent & Trademark Office’s (PTO) refusal to register a trademark based on the applicant’s failure to comply with the domicile address requirement of 37 C.F.R....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries

We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more

McDermott Will & Emery

Show Your Work: PTO Director’s Procedure for Issuing Instructions Is Reviewable

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The US Court of Appeals for the Federal Circuit affirmed the district court’s finding under the Administrative Procedure Act (APA) that the substance of the US Patent & Trademark Office (PTO) Director’s instructions is...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023 #2

Apple Inc. v. Vidal, Appeal No. 2022-1249 (Fed. Cir. Mar. 13, 2023) In our Case of the Week, the Federal Circuit allowed Apple’s challenge to the Patent Trial and Appeal Board’s (“PTAB”) Fintiv rules to proceed, at least...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023

Regents of the University of Minnesota v. Gilead Sciences, Inc., Appeal No. 21-2168 (Fed. Cir. Mar. 6, 2023) The Federal Circuit’s only precedential patent opinion this week focuses on the written description requirement...more

McDermott Will & Emery

Sometimes Inactions Speak Louder Than Words

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The US Court of Appeals for the Federal Circuit affirmed a decision granting summary judgment in favor of the US Patent & Trademark Office (PTO) regarding the propriety of imposing a restriction requirement on a pre-General...more

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