News & Analysis as of

Intellectual Property Protection Administrative Procedure

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

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

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Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

BCLP

Patent Office Withdraws Previous Discretionary Denial Guidance for Post-Grant Proceedings

BCLP on

On Friday afternoon, February 28, 2025, the United States Patent and Trademark Office (USPTO) issued a brief “bulletin” rescinding a memorandum issued by the former Director Kathy Vidal (“Vidal Memo”) providing guidance on...more

Morrison & Foerster LLP

Federal Circuit Significantly Broadens Qualifying Expenses for Economic Domestic Industry at the ITC

On March 5, the Federal Circuit held that sales, marketing, warehousing, quality control, or distribution expenditures may count as “employment of labor or capital” for purposes of satisfying the economic domestic industry...more

Smart & Biggar

Canadian Patent Office resumes granting of patents and is temporarily publishing list of pre-grant patents

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The Canadian Patent Office (CIPO) has advised that as of January 14, 2025, it had granted patents for which final fees were processed in the old system. CIPO has started to process applications where final fees were paid in...more

ArentFox Schiff

Navigating Changes at the USPTO: Impact of New Government Cost-Reduction Initiatives

ArentFox Schiff on

The new presidential Administration’s cost-reduction initiatives, including a hiring freeze and return-to-office mandate for federal employees, are poised to impact the efficiency of the US Patent and Trademark Office...more

Cozen O'Connor

Amendments to Trademarks Regulations Prompt Changes at Trademarks Opposition Board

Cozen O'Connor on

On January 29, 2025, the Canadian Intellectual Property Office (CIPO) announced that the long-awaited amendments to the Trademarks Regulations (SOR/2018-227) and new practice notices implementing cost awards, confidentiality...more

BakerHostetler

Key Points from the USPTO’s New Guidance on AI Use

BakerHostetler on

The U.S. Patent and Trademark Office (USPTO) recently issued guidance on the use of artificial intelligence (AI), particularly generative AI, in Intellectual Property (IP) practices involving documents filed at the USPTO....more

Fish & Richardson

The Basics of TTAB Oppositions

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Another person or entity has applied for a trademark at the United States Patent and Trademark Office (the “USPTO”) that is similar to your trademark. What can you do? One option is to institute an opposition with the...more

Morgan Lewis

Reissue

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A reissue application may be filed by a patent owner to correct an error in a patent. Reissue applications are useful to correct substantive errors that cannot be corrected with a certificate of correction. ...more

Faegre Drinker Biddle & Reath LLP

Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada? After reading that question, are you wondering what on earth a Madrid Protocol application is?...more

Smart & Biggar

Yes, CIPO really will be writing to your client instead of to you

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If you filed a Madrid application on behalf of your client, and designated Canada, you should have received a “Courtesy Letter” from the Canadian Intellectual Property Office (CIPO) advising you as follows...more

Spilman Thomas & Battle, PLLC

New Rules (for Electronic Trademark Filings)

On July 31, 2019, the United States Patent and Trademark Office ("USPTO") published final rules changes that mandate electronic filing. This new rule becomes effective on October 5, 2019. There are limited exceptions, so it...more

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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

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

Global Patent Prosecution - July 2019: Foreign Filing Requirements in the United States

This article discusses foreign filing requirements in the United States. Assuming the United States is the country of invention, the following questions are explored: (1) who needs to seek permission to file a patent...more

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

Global Patent Prosecution - May 2019: Strategic Use of the Patent Prosecution Highway

At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for...more

Knobbe Martens

Patent Law Update for Medical Device Companies 2018 (Presentation)

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Knobbe Martens Partners Paul Conover, Irfan Lateef, and Curtis Huffmire presented "Patent Law Update for Medical Device Companies 2018" at the MedTech Innovation Summit in San Francisco, CA on November 28, 2018. This session...more

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