News & Analysis as of

Filing Deadlines United States Patent and Trademark Office

BakerHostetler

US Patents Set to Issue 33 Percent Faster from the Notification Date

BakerHostetler on

Starting May 13, the U.S. Patent and Trademark Office (USPTO) will accelerate the time between issue notification and the issue date of a patent. That is, the time frame will be cut from about three weeks to two weeks –...more

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

Avoid Pitfalls in Declaration of Use Filings: Domicile Address Requirements and U.S. Counsel Rule

Owners of U.S. trademark registrations issued in 2018 or 2019 will be facing an initial maintenance filing deadline this year (either a Section 8 or Section 71 Declaration of Use), and will need to take note of a new rule...more

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

Baker Botts L.L.P.

Impact of New USPTO Interim Procedures on Discretionary Denial of AIA Proceedings

Baker Botts L.L.P. on

Key Takeaway: The USPTO has reinstated earlier discretionary denial standards (including Fintiv) and introduced a new two-phase review process, which is expected to lead to more frequent denials of IPR petitions. Both patent...more

Seyfarth Shaw LLP

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

Seyfarth Shaw LLP on

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

ArentFox Schiff

USPTO Reshapes Discretionary Denials for Post-Grant Proceedings

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued two memoranda reshaping the Patent Trial and Appeal Board’s (PTAB) approach to discretionary denials for parallel proceedings....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

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

McDermott Will & Emery

PTO Accelerates Patent Issuance Timeline

McDermott Will & Emery on

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

Dinsmore & Shohl LLP

USPTO Moves to Expedite Patent Issuance

Dinsmore & Shohl LLP on

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

Womble Bond Dickinson on

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

Fox Rothschild LLP on

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

Ladas & Parry LLP on

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

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

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

Ballard Spahr LLP on

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

Knobbe Martens on

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

Foster Garvey PC

The US Patent and Trademark Office (USPTO) Announces New Trademark Fee Schedule

Foster Garvey PC on

The United States Patent and Trademark Office (USPTO) will implement a new fee schedule this month, introducing significant changes across all fee categories, including initial trademark application filing fees....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

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

New USPTO Trademark Filing Fees Take Effect January 18 2025

On November 18, 2024, the USPTO issued a final rule to increase certain trademark filing fees. The fees will take effect January 18, 2025. A full list of the changes, including some discontinued filing options, can be...more

Foley & Lardner LLP

USPTO Puts an End to After-Final Pilot Program

Foley & Lardner LLP on

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

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