News & Analysis as of September 21, 2024

America Invents Act › Public Comment

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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 -

What is a Streamlined Reexamination Request (SRR)?

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/22/2024

One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more

PTAB/USPTO Update - April 2024

WilmerHale on 4/4/2024

On March 8, the USPTO joined other intellectual property offices in celebrating International Women’s Day with a theme of “Invest in Women: Accelerate Progress.”...more

PTAB/USPTO Update - May 2023

WilmerHale on 5/2/2023

On April 20, the USPTO announced an Advance Notice of Proposed Rulemaking (ANPRM) seeking public input regarding potential PTAB reforms, including proposed changes to discretionary institution practices, petition word limits,...more

PTO Requests Comments on Revisions to AIA Trial Proceedings

McDermott Will & Emery on 4/27/2023

On April 21, 2023, the US Patent & Trademark Office (PTO) announced that it is seeking public input on proposed modifications to the rules of practice for inter partes reviews (IPRs) and post grant reviews (PGRs) before the...more

USPTO/PTAB Update - February 2021

WilmerHale on 2/2/2021

USPTO Director Andrei Iancu and Deputy Director Laura Peter resigned from their respective posts prior to inauguration day. Commissioner for Patents Drew Hirschfeld and Senior Counsel Coke Morgan Stewart are temporarily...more

Will The USPTO Codify Its Discretionary Determination Of Deciding Whether To Institute AIA Trials?

Rothwell, Figg, Ernst & Manbeck, P.C. on 11/30/2020

On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board”...more

PTAB Discretion to Institute Trials: PTO seeks comments whether to propose rules

Foley & Lardner LLP on 10/23/2020

On October 20, 2020, the PTO published in the Federal Register a request for comments about whether it should embark on a formal notice-and-comment rulemaking process directed to how the PTAB exercises its discretion in...more

PTAB Proposes Burden of Persuasion Rules for AIA Amendments

Jones Day on 10/31/2019

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

USPTO Proposes New Rules for Amending Claims During AIA Reviews

Mintz - Intellectual Property Viewpoints on 10/28/2019

Earlier this week, the United States Patent and Trademark Office (“USPTO”) proposed rule changes for amending patents in AIA proceedings. The proposed rule changes would apply to inter partes review (“IPR”), post-grant review...more

Pilot Program for Motion to Amend Practice in PTAB Proceedings Under AIA

McDermott Will & Emery on 4/5/2019

On March 15, 2019, The US Patent and Trademark Office (PTO) provided notice of a pilot program for motion to amend (MTA) practice and procedures in trial proceedings under the America Invents Act (AIA) before the Patent Trial...more

USPTO Launches PTAB Procedural Reform Initiative

Mintz - Intellectual Property Viewpoints on 4/19/2017

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

Higher US Patent Fees On The Horizon

Foley & Lardner LLP on 10/20/2016

The USPTO has published a proposed fee schedule for patent fees likely to take effect October 1, 2017–the start of the USPTO’s next fiscal year. The proposed fee schedule makes “slight” changes to many fees, and more...more

USPTO Launches Enhanced Patent Quality Initiative

McDonnell Boehnen Hulbert & Berghoff LLP on 3/6/2015

In a notice published in the Federal Register last month (80 Fed. Reg. 6475), the U.S. Patent and Trademark Office announced that it is launching a comprehensive and enhanced patent quality initiative. As part of this...more

Federal Circuit Schedules Argument for First IPR Final Written Decision – In re Cuozzo Speed Technologies LLC

McDonnell Boehnen Hulbert & Berghoff LLP on 10/3/2014

As we have been reporting, the U.S. Patent Office has requested comments on the trial proceedings under the America Invents Act. Out of the 17 issues outlined, the Office highlighted two for which it would especially...more

PTAB Update -- A Review of the First Round of Comments (Part 1)

McDonnell Boehnen Hulbert & Berghoff LLP on 9/19/2014

The USPTO has been seeking feedback on the PTAB trial proceedings established by the Leahy-Smith America Invents Act. A Federal Register Notice from June 27, 2014 contained the "Request for Comments on Trial Proceedings...more

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America Invents Act › Public Comment

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