News & Analysis as of

America Invents Act

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

Case Study for Avoiding USPTO Director’s Discretionary Denial of Institution in AIA Proceedings

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

On June 15, 2026, USPTO Director John Squires issued, and designated informative, a decision declining to discretionarily deny institution of a series of seven inter partes review (IPR) petitions filed by Tesla, Inc. See...more

Jones Day

Director Denies IPR Over Foreign Government RPI Ties

Jones Day on

The Director issued a precedential discretionary denial on the ground that a foreign government entity was an undisclosed real party in interest(“RPI”). The ruling extended Return Mail, Inc. v. United States Postal Service,...more

A&O Shearman

Patents and politics part 2: Director Squires administers an “America First IP agenda”

A&O Shearman on

In the first installment of patents and politics, we reported that the United States was potentially entering into an era of IP policy driven by President Trump’s America First rhetoric. In March, Mr. John Squires,...more

King & Spalding

Possible Changes to PTAB Burden of Proof Surface at USPTO Listening Session

King & Spalding on

On May 18, 2026, USPTO Director John Squires and Deputy Director Coke Morgan Stewart held a “listening session” with intellectual property practitioners, academics, and other industry professionals to discuss potential...more

Stradling Yocca Carlson & Rauth

You Had Your Chance: Director Squires Slams the Door on Second-Bite IPR Petitions

Stradling Yocca Carlson & Rauth on

Background - In a precedential Director discretionary denial issued May 14, 2026, USPTO Director John A. Squires denied institution of inter partes review in Magnolia Medical Technologies, Inc. v. Kurin, Inc., holding that...more

Bradley Arant Boult Cummings LLP

6 Questions to Ask Before Filing an IPR Petition

Bradley Arant Boult Cummings LLP on

On October 17, 2025, USPTO Director John Squires issued a memorandum announcing that he would be sole decision-maker for institution of inter partes review (IPR) and post-grant review (PGR) proceedings....more

Baker Donelson

AI-Assisted Patent Drafting: Validity Concerns and Practical Guidance

Baker Donelson on

This is the second installment in a two-part series examining the implications of using generative artificial intelligence (GAI) in the drafting and prosecution of patent applications. In part one, we discussed the privilege...more

NovoTech Patent Firm

Your Patent Just Got More Powerful — Here’s Why

NovoTech Patent Firm on

When I read Magnolia Medical Technologies v. Kurin decision my first reaction was simple: I was delighted. The Patent Office just told a well-funded company: you don’t get a second bite at the apple. You lost in court....more

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

IP Hot Topic: “Multiple” AIA Petitions: Clarifying the Terminology

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

The patent bar has been involved in discussions of how to address “multiple” AIA petitions challenging a same patent in view of changes at the Patent Trial and Appeal Board (PTAB) since March 2025, as well as a pending Notice...more

McDermott Will & Schulte

AIA reviews: An alternative to litigation, not a second chance

McDermott Will & Schulte on

Addressing the scope of discretionary institution under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) denied institution of inter partes review (IPR), concluding that the petitioner was...more

Fitch, Even, Tabin & Flannery LLP

No “Second Bite”: USPTO Denies IPR After Trial Loss

Fitch, Even, Tabin & Flannery LLP on

The USPTO has denied an inter partes review (IPR) petition, clarifying that a party cannot use the Patent Trial and Appeal Board (PTAB) as a repeat vehicle to litigate patent validity after its expert testimony was excluded...more

Baker Donelson

USPTO Director Denies IPR Institution After District Court Validity Loss, Emphasizing AIA Reviews Are Not a "Second Bite at the...

Baker Donelson on

The Director of the United States Patent and Trademark Office issued a precedential ruling on May 14, 2026, denying institution of inter partes review (IPR) in Magnolia Medical Technologies, Inc. v. Kurin, Inc.,...more

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

A Precedential “Window” Into the Director’s Discretionary Denial Framework in AIA Proceedings

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

On May 14, 2026, USPTO Director John Squires issued—and designated precedential—a Director decision denying institution of an inter partes review (IPR) in Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097,...more

Morrison & Foerster LLP

Director Squires Reinforces PTAB’s “Alternative to Litigation” Approach with IPR Denial in Magnolia v. Kurin

Morrison & Foerster LLP on

On May 14, 2026, USPTO (“Office”) Director John Squires issued a precedential decision in Magnolia Medical Technologies, Inc. v. Kurin, Inc. Director Squires denied institution of an inter partes review (IPR) petition where...more

Fish & Richardson

USPTO Details Broad Principles of Discretionary Denial in AIA Proceedings

Fish & Richardson on

The USPTO has issued a precedential decision in an IPR proceeding emphasizing a public-interest-oriented discretionary denial framework under which AIA proceedings must function as alternatives to litigation, not as...more

NovoTech Patent Firm

Why Patents Don’t Commercialize Themselves — and What Founders Miss

NovoTech Patent Firm on

Many patents never translate into meaningful commercial value, not because the ideas are weak, but because the system surrounding them is misunderstood. From the outside, it is easy to assume that a granted patent should...more

McDermott Will & Schulte

Missed delivery: Institution decision statutorily unreviewable

McDermott Will & Schulte on

Addressing the scope of appellate review under the America Invents Act, the US Court of Appeals for the Federal Circuit determined that challenges grounded in 35 U.S.C. § 312(a)(2)’s real-party-in-interest requirement are...more

Kilpatrick

USPTO to exclude entities partially owned by foreign governments from challenging patent validity in PTAB

Kilpatrick on

Through two March 2026 directives, the USPTO signals a willingness to exclude entities at least partially owned by foreign sovereigns from being petitioners in AIA proceedings....more

Womble Bond Dickinson

Why Patent Reexaminations Are Experiencing a Resurgence

Womble Bond Dickinson on

For much of the past decade, post grant patent practice in the United States was dominated by the post-grant proceedings formed as part of the 2013 America Invents Act (AIA), including inter partes review (IPR) and post-grant...more

NovoTech Patent Firm

The USPTO Just Rewrote the Rules on Patent Challenges

NovoTech Patent Firm on

The United States Patent and Trademark Office quietly introduced a procedural change in April 2026 that fundamentally alters the power balance in patent reexamination....more

McDermott Will & Schulte

Public use, even without explicit public disclosure, is patent bar under pre-AIA § 102(b)

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit affirmed summary judgment of invalidity under the pre-America Invents Act (AIA) on sale bar, holding that a third party sale to the public of a product embodying a patented...more

A&O Shearman

Certificates Of Correction Of Inventorship Issued After Final Written Decisions May Not Impact The Decisions

A&O Shearman on

On March 9, 2026, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed an appeal from a Patent Trial and Appeal Board’s (“Board”) final written decision (“FWD”) on remand in an inter partes review (“IPR”),...more

A&O Shearman

USPTO Announces New Discretionary Factors For Patent Review Proceedings, Prioritizing U.S. Manufacturing And Small Business...

A&O Shearman on

On March 11, 2026, United States Patent and Trademark Office Director John A. Squires issued a memorandum introducing additional discretionary factors for the institution of inter partes review (“IPR”) and post-grant review...more

Morgan Lewis

From Stewart to Squires: The PTAB’s First-Year Reset in IPRs and PGRs

Morgan Lewis on

Adversarial proceedings at the US Patent Trial and Appeal Board (PTAB) have undergone significant changes in just one year. The biggest change is not a single doctrinal development but a redefinition of institution itself....more

Knobbe Martens

PTAB Update | March 2026

Knobbe Martens on

The PTO Director’s sua sponte rehearing of Ex parte Baurin raises questions regarding the scope of Allergan v. MSN, Examiners’ role in obviousness-type double patenting rejections, and the underlying policy justifications for...more

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