News & Analysis as of

Filing Deadlines United States Patent and Trademark Office Patent Trial and Appeal Board

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

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

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

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

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

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

McDermott Will & Emery on

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

McDonnell Boehnen Hulbert & Berghoff LLP

Time Periods in Toolgen Interferences Extended by Party Stipulation

The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has issued a notice of extension of certain deadlines by party stipulation in the two interferences involving ToolGen Inc. as Senior Party (No. 106,126...more

American Conference Institute (ACI)

[Virtual Event] Paragraph IV on Virtual Trial - COVID-19 Edition - August 20th, 8:45 am - 6:00 pm EDT

Join us for a one-day virtual event for Counsel for Hatch-Waxman Litigators. While COVID-19 prevented us from meeting in person this April in NYC, we are pleased to announce a special one-day virtual event Paragraph IV on...more

Sunstein LLP

Virus-Related Legislation Extends Patent and Trademark Deadlines

Sunstein LLP on

The details of financial relief provided to households and businesses in the recently passed Coronavirus Aid, Relief and Economic Security (CARES) Act may have received all the press, but other provisions of the CARES Act...more

American Conference Institute (ACI)

[Webinar] Examining the COVID-19 Effect on the Business and Practice of Hatch-Waxman Litigation - June 2nd, 12:00 pm - 1:00 pm EST

The coronavirus global pandemic has ushered in extraordinary roadblocks for the pharmaceutical industry. To help you carve out a path forward, in-house senior executives and industry leaders will convene virtually at ACI’s...more

Spilman Thomas & Battle, PLLC

U.S. PTO COVID-19 Update: Patent Office Extensions Through May 31, 2020

The Director of the U.S. Patent and Trademark Office on April 28, 2020 signed a Notice of Extended Waiver for certain deadlines associated with patent-related filings, if the missed deadline resulted from situations relating...more

Mintz - Intellectual Property Viewpoints

How the CARES Act Affects Patent Related Deadlines

In accordance with the CARES (Coronavirus Aid, Relief, and Economic Security) Act, the USPTO has extended some patent-related deadlines. Subsection 12004(a) of the CARES Act gives the Director of the United States Patent...more

Goodwin

USPTO Extends Certain Deadlines to June 1 Due to COVID-19 Pandemic

Goodwin on

On April 28, 2020, the U.S. Patent and Trademark Office (USPTO) issued a notice to extend certain patent and trademark deadlines to June 1, lengthening extensions that the USPTO had announced on March 31.  Pursuant to the...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Further Extension of Certain Patent Deadlines

In a notice posted on its website last week, the U.S. Patent and Trademark Office announced that it was further extending the time to file certain patent-related documents and to pay certain required fees....more

Bracewell LLP

USPTO Extends Trademark And Patent Deadlines Due to Coronavirus Pandemic

Bracewell LLP on

As IP Offices around the world work to mitigate the impact of the global health threat, the U.S. CARES Act gives USPTO authority to extend statutory deadlines to help ease burden of IP owners affected by COVID-19 The...more

Stinson LLP

USPTO Extends Filing and Fee Payment Dates under CARES Act

Stinson LLP on

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the USPTO Director authorized a 30-day extension for filing dates and fee payment for those who are unable to meet patent-related deadlines due to the...more

Haug Partners LLP

Global Updates From Intellectual Property Offices During the COVID-19 Pandemic

Haug Partners LLP on

As the world is in the midst of the COVID-19 pandemic, intellectual property owners have expressed concern over the submission of documents to intellectual property offices and the effects the pandemic may have on pending...more

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