News & Analysis as of

Administrative Procedure Inter Partes Review (IPR) Proceeding United States Patent and Trademark Office

Sheppard Mullin Richter & Hampton LLP

Breaking Down the Bifurcated PTAB Review Process: What the USPTO’s Recent FAQ Drop Reveals

On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just...more

Fish & Richardson

PTAB Issues FAQs on Interim Process for Workload Management

Fish & Richardson on

Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more

Jones Day

PTAB Announces a Bifurcated Process for Consideration of IPR and PGR Petitions

Jones Day on

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

Latham & Watkins LLP

USPTO Implements Interim Procedures Bifurcating Decisions to Institute AIA Trials

Latham & Watkins LLP on

On March 26, 2025, Acting Director of the United States Patent and Trademark Office (USPTO) Coke Morgan Stewart issued a memorandum (the Workload Memorandum) to all Administrative Patent Judges (APJs) of the Patent Trial and...more

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

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Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

BCLP

Patent Office Withdraws Previous Discretionary Denial Guidance for Post-Grant Proceedings

BCLP on

On Friday afternoon, February 28, 2025, the United States Patent and Trademark Office (USPTO) issued a brief “bulletin” rescinding a memorandum issued by the former Director Kathy Vidal (“Vidal Memo”) providing guidance on...more

Fish & Richardson

Recapping a Busy Summer for Director Review

Fish & Richardson on

United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Fish & Richardson

How the Timing of Director Review May Affect Co-Pending Litigation

Fish & Richardson on

Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

Fish & Richardson on

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

WilmerHale

PTAB/USPTO Update - August 2021

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director. The Biden Administration has not made an announcement as to who will be nominated to become the next Director....more

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

PTAB Strategies and Insights - July 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

Patent Prosecution Tool Kit: 1.132 Declarations for Traversing Rejections

Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...more

Jones Day

Precedential Opinion Panel to Review Same-Party Joinder

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In September, the Patent Office revised Standing Operating Procedure 2 to create a new review path for designating opinions precedential or informational. Under the new rule, the review is performed by the Precedential...more

Latham & Watkins LLP

PTAB Update: New Motion to Amend Procedures Proposed

Latham & Watkins LLP on

The new procedures could be in place before the end of 2018 with far-reaching effects for both patent owners and petitioners. Key Points: ..The new procedures allow a patent owner to file a motion to amend six weeks...more

Jones Day

After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners

Jones Day on

The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more

Knobbe Martens

USPTO Provides New Guidance on Motions to Amend During IPR

Knobbe Martens on

On June 1, 2018 the U.S. Patent and Trademark Office designated a Board order in Western Digital Corporation v. SPEX Technologies, Inc. as informative on the issue of Motions to Amend during an IPR. At the same time, the...more

Foley & Lardner LLP

SAS Institute: One Month In

Foley & Lardner LLP on

We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability...more

Foley & Lardner LLP

SAS Institute: Two Weeks In

Foley & Lardner LLP on

As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more

Knobbe Martens

USPTO Issues Guidance on Impact of SAS on AIA Trial Proceedings

Knobbe Martens on

On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings....more

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

Supreme Court Strikes Down PTAB Partial Institution Practice: If PTAB Institutes IPR, It Must Address All Challenged Claims in Any...

The Supreme Court has ruled by a narrow majority of 5-4 that the Patent Office’s regulation allowing for partial institution decisions in inter partes review is foreclosed by the text of 35 U.S.C. § 318(a). SAS Institute Inc....more

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

SAS Institute v. Matal, Supreme Court No. 16-969

On November 27, 2017, the Supreme Court will hear arguments in Oil States Energy Svcs, LLC v. Greene’s Energy Group, LLC, No. 16-712 where the Court will consider the constitutionality of IPR proceedings. The Oil States case...more

Knobbe Martens

PTAB Issues New Remand Procedures

Knobbe Martens on

On November 16, 2017, the USPTO issued new procedures (“Standard Operating Procedure 9”) for governing cases remanded from the Federal Circuit. These procedures are applicable to all decisions remanded from the Federal...more

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

A Comparison of US and EPO Post Grant Practices

Challenging the validity of a patent through the courts of Europe and the United States can be a time-consuming and expensive process. Oppositions at the European Patent Office (EPO) and US post-grant cancellation...more

Mintz - Intellectual Property Viewpoints

USPTO Launches PTAB Procedural Reform Initiative

On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings....more

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