News & Analysis as of

Filing Requirements United States Patent and Trademark Office

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

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

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

K&L Gates LLP

Detailed Guidance on New USPTO IDS Size Fees

K&L Gates LLP on

On 19 January 2025 the USPTO enacted a new Information Disclosure Statement (IDS) size fee. A new IDS size fee, codified under 37 C.F.R. 1.17(v), is accrued for any pending application when the number of cumulative references...more

Fox Rothschild LLP

Large Entity, Small Entity or Micro-Entity: Which Type of Patent Applicant Are You? - UPDATED 4/3/25

Fox Rothschild LLP on

When applying for a patent application, certain entities are entitled to reduced USPTO filing fees. Applicants who qualify for small entity status can reduce many USPTO fees by 60%. Applicants who are micro entities can...more

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

Filings Up, Pendency Down – USPTO 2024 Year in Review (& Early Thoughts for 2025)

With 2024 now in the rearview mirror, it’s a great time to take a look at the past year’s U.S. trademark prosecution and examination numbers – and consider where the U.S. Patent and Trademark Office (“USPTO”) may be heading...more

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

Key Considerations When Using AI Tools to Draft and File Documents with the USPTO

The use of Artificial Intelligence (AI) tools in practice before the United States Patent and Trademark Office (USPTO) is changing how practitioners prepare and submit documents. The USPTO’s recent Guidance on Use of...more

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

USPTO Fees Are Rising Drastically in 2025: What to Do Now to Save Thousands of Dollars

Heading into 2025, patent applicants should prepare for significant fee increases at the United States Patent and Trademark Office (USPTO). These fee increases can significantly impact patent applicant behavior, leading...more

McDonnell Boehnen Hulbert & Berghoff LLP

The USPTO's Guidance on Use of AI-based Tools in Practice

Since President Biden issued his Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, the U.S. Patent and Trademark Office has been investigating the potential pitfalls of...more

Womble Bond Dickinson

Patent Practitioners Take Note: (Even) if You Use AI, Read Before You File

Womble Bond Dickinson on

On February 6, 2024, the USPTO weighed in with guidance for practitioners using—or considering using—AI in preparing submissions to the USPTO. In essence, Director Kathi Vidal has reminded practitioners that they must sign...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Delays Transition to DOCX (Again)

On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application...more

Womble Bond Dickinson

UPDATE: USPTO Non-DOCX Surcharge Now Set to Roll-Out on April 3, 2023

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) will begin applying a surcharge to all applications filed in non-DOCX form on April 3, 2023. The USPTO originally had announced the surcharge would take effect on Jan. 1,...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Bradley Arant Boult Cummings LLP

Overcoming TM Maintenance Filing Hurdles Amid Pandemic

As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create new obstacles for registrants. To maintain a federal trademark registration, registrants must periodically file an...more

Bradley Arant Boult Cummings LLP

As Pandemic Drags On, Trademark Registrants May Face Maintenance Filing Hurdles

Despite the black humor that March 2020 has never actually ended, time does keep marching on and presenting new challenges. As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create...more

Gibney Anthony & Flaherty, LLP

Securing Your Trademark in the U.S: Best Practices for Foreign Brand Owners

When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your...more

Moritt Hock & Hamroff LLP

United States Patent & Trademark Office Announces Fee Increase For 2021

The United States Patent and Trademark Office (“USPTO”) has announced that, effective January 2, 2021, it is increasing certain fees it charges to file trademark applications, maintain trademark registrations, petition the...more

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

Global Patent Prosecution Newsletter - October 2020

The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the...more

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

Patent Prosecution Tool Kit: When to Obtain Foreign Filing and Export Licenses

Two important, but sometimes overlooked issues in patent prosecution, particularly for companies with worldwide patent portfolios, are: 1) when a foreign filing license must be obtained; and 2) how to determine when an export...more

Perkins Coie

USPTO Announces COVID-19 Prioritized Examination Pilot Program for Small Entity and Micro Entity Applicants

Perkins Coie on

On May 8, the United States Patent and Trademark Office (USPTO) announced a new COVID-19 Prioritized Examination Pilot Program (CPEPP). This pilot program grants prioritized examination to applicants qualifying for small or...more

McDonnell Boehnen Hulbert & Berghoff LLP

Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 2 UPDATE

On March 11, World Health Organization Director-General Tedros Adhanom declared that the COVID-19 outbreak "can be characterized as a pandemic," cautioning that the WHO has "rung the alarm bell loud and clear." At the time...more

Sheppard Mullin Richter & Hampton LLP

USPTO Permitting Patent Applicants to Extend Certain Deadlines Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting patent applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing...more

Roetzel & Andress

U.S. Patent And Trademark Office Temporarily Extends Filing Deadlines

Roetzel & Andress on

Businesses – currently facing immediate crises arising from the COVID-19 pandemic – may be temporarily distracted from issues that, in more ordinary times, would be important to them, such as protecting and maintaining their...more

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