News & Analysis as of

Filing Deadlines Patents

Seyfarth Shaw LLP

The USPTO Is Issuing Patents Faster — Here’s Why That Matters

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Beginning May 13, 2025, the window between paying the issue fee and your patent officially issuing will become much shorter....more

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

PTAB Issues Additional Information on New Pre-Institution Discretionary Briefing

On April 25, 2025, the USPTO issued additional information in response to frequently asked questions (FAQs) about the “Interim Processes for PTAB Workload Management” memorandum issued on March 26, 2025. As discussed in our...more

A&O Shearman

Navigating the UPC’s evidence minefield: when confidentiality issues clash with procedural deadlines

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In July 2024, the UPC Court of Appeal (CoA) clarified its procedural rules surrounding evidence preservation and confidentiality. It confirmed that the deadline for bringing an action on the merits only starts to run after...more

McDermott Will & Emery

PTO Accelerates Patent Issuance Timeline

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The US Patent & Trademark Office (PTO) announced that it has shortened the time between the issue notification and the issue date for patents. Historically, the time between these two events averaged about three weeks....more

Jones Day

PTAB Finds Petition Time Barred

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In 2985 LLC d/b/a Mountain Voyage Company, LLC v. The Ridge Wallet LLC, a Patent Trial and Appeal Board (“PTAB”) panel denied inter partes review (“IPR”) institution where the petition was time barred under 35 U.S.C. § ...more

Dinsmore & Shohl LLP

USPTO Moves to Expedite Patent Issuance

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The USPTO recently announced that they would expedite patent issuance by reducing the time between Issue Notification and Issue Date. Effective May 13, 2025, patents will now issue approximately two weeks after receiving the...more

Womble Bond Dickinson

USPTO Announces Changes to Patent Issue Timelines and Design Application Examinations

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This week, the U.S. Patent and Trademark Office (USPTO) made two announcements of interest to patent holders and practitioners as part of modernization and efficiency efforts...more

Fox Rothschild LLP

USPTO to Expedite Patent Issuance

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The U.S. Patent and Trademark Office (USPTO) announced today that effective May 13, 2025, the time between an Issue Notification and issue date of a U.S. patent will be reduced to about one week. Currently, it takes three...more

Ladas & Parry LLP

USPTO Efforts at Modernity Speeds Patent Issuance

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On May 13, 2025, the U.S. Patent and Trademark Office (USPTO) will expedite Issue Dates for patents. This will reduce the average time from three weeks to about two, so patent holders can bring their investments to market...more

Smart & Biggar

Canadian Intellectual Property Office “Next Generation Patents” update and status as of April 10, 2025

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On July 17, 2024, the Canadian Intellectual Property Office (CIPO) launched a new electronic system and portal, MyCIPO Patents, as part of its Next Generation Patents initiative. The launch has been fraught with difficulties,...more

A&O Shearman

How to commence main proceedings before the UPC: deadlines and court fees

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Patent holders must start Unified Patent Court (UPC) proceedings on the merits within a certain period if they do not want to risk the revocation of provisional measures. The UPC has now clarified that filing the statement of...more

Jones Day

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

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The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more

Jones Day

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

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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

Proskauer - The Patent Playbook

Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers

On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new...more

Ballard Spahr LLP

USPTO Procedure Adds New Hurdle to PTAB Trial Institution

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On March 26, 2025, the United States Patent and Trademark Office (USPTO) announced changes to the Patent Trial and Appeal Board (PTAB) trial institution process, creating a new bifurcated approach to institution decisions....more

Kilpatrick

Pre-Institution Overhaul: Unpacking the PTAB’s New Briefing Procedures

Kilpatrick on

Hot on the heels of rescinding former Director Vidal’s June 2022 memo providing guidance on discretionary denials, Acting Director of the USPTO, Coke Morgan Stewart, issued a memo yesterday outlining new “Interim Processes...more

Bond Schoeneck & King PLLC

Beating the Wait: Practical Tips to Shorten Patent and Trademark Pendency

It is taking longer to get a patent. Since 2020, the average time from patent filing to receiving the first action from the U.S. Patent and Trademark Office (USPTO) has risen from 14 months to 21 months, a 50% increase in...more

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

Latest PTAB Memo Bifurcates Pre-Institution Briefing; Creates New Separate Briefing on Discretionary Considerations

On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs. Under the Interim Process,...more

Knobbe Martens

A Published Patent Application Is IPR Prior Art as of Its Filing Date

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Before Lourie, Prost, and Stark - Summary: In an IPR, a patent application is considered a “printed publication” as of the application’s filing date, not its publication date. Samsung filed a petition for IPR of a Lynk Labs...more

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

The PREVAIL Act Could Change PTAB Trials in a Big Way

Since the America Invents Act (“AIA”) established a new venue for hearing patent disputes, the Patent Trial and Appeal Board (“PTAB”), much ink has been spilled regarding the impacts of this forum on patent litigation and the...more

Foley & Lardner LLP

USPTO Puts an End to After-Final Pilot Program

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The U.S. Patent and Trademark Office (USPTO) has announced that its “After Final Consideration Pilot Program 2.0” (“AFCP 2.0”) will come to an end on December 14, 2024. First rolled out in 2013, the program was part of USPTO...more

McDonnell Boehnen Hulbert & Berghoff LLP

Rethinking In re Cellect and Its Consequences

The Federal Circuit's In re Cellect decision has caused a great deal of commentary and proposals to avoid its consequences, including changing prosecution strategies and filing prospective, precautionary terminal disclaimers...more

Goodwin

Issue 40: PTAB Trial Tracker

Goodwin on

Precedential Opinion Addresses Conclusory Expert Declarations - In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more

McDermott Will & Emery

PTO Adds Green Energy Category to Patents for Humanity Program

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On March 6, 2023, the US Patent & Trademark Office (PTO) introduced a new green energy category to its Patents for Humanity Program. This new award category provides business incentives for patent applicants, holders and...more

BakerHostetler

U.S. Electronic Patent Grants and the Effect on the Timing of Filing Continuation and Divisional Patent Applications

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On April 18, 2023, the U.S. Patent and Trademark Office (PTO) will begin moving away from issuing paper patents and will begin issuing patents electronically as electronic patent grants (eGrants). In addition to reducing...more

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