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Intellectual Property Protection Patents United States Patent and Trademark Office

ArentFox Schiff

USPTO Raises Annual Cap on Prioritized Patent Examination Requests

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The US Patent and Trademark Office (USPTO) has finalized a rule increasing the annual limit on accepted requests for prioritized patent examination from 15,000 to 20,000, effective with fiscal year 2025 (FY 2025). This...more

Morgan Lewis

‘Settled Expectations,’ PTAB’s New Discretionary Denial Factor, Gains Additional Footing in Dabico

Morgan Lewis on

Acting Director of the USPTO Coke Morgan Stewart recently discretionarily denied institution of an inter partes review (IPR) based on a new consideration, “settled expectations,” that is, the length of time that the...more

MoFo Life Sciences

What Makes a Good Cell and Gene Therapy Application?

MoFo Life Sciences on

Cell and gene therapies represent a transformative frontier in modern medicine, offering potential cures for previously untreatable conditions. However, securing intellectual property (IP) protection for these innovations...more

DarrowEverett LLP

AI Created It—But Do You Own It? IP Issues Explained

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As artificial intelligence (AI) technologies increasingly generate content, designs, code, inventions, and even music, businesses face a pressing legal question: who owns the output when a machine creates it? The legal...more

Volpe Koenig

Intellectual Property in Popular Culture: When IP Goes “Pop”

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Like other areas of law, intellectual property (IP) is often depicted as part of a plot point in popular culture, such as movies and television. In addition, lP is often mentioned in the mass media, particularly when any...more

Offit Kurman

When to Patent: Common Mistakes Business Leaders Make

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Suppose a newly hired engineer on your team sketches a promising new concept for a health monitor in a notebook. Excited by the idea, you loop in marketing, and soon, your company is promoting the product’s features through...more

Jones Day

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

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A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more

Jones Day

USPTO Acting Director Denies IPR Institution Based on "Settled Expectations"

Jones Day on

Under a new U.S. Patent and Trademark Office ("USPTO") policy issued in March 2025, pre-institution inter partes review ("IPR") proceedings are now bifurcated, consisting of a first phase in which the director considers...more

Vorys, Sater, Seymour and Pease LLP

New Settled Expectations Policy at the PTAB Augurs Major Practice Changes

In a startling development, Acting Director of the USPTO Coke Morgan Stewart has denied institution of an inter partes review (IPR) on the basis of “settled expectations,” on the sole ground that the subject patent had been...more

Volpe Koenig

“Settled Expectations” as the New Gatekeeper for PTAB Discretionary Denials: Why Late-Stage IPRs Are Getting Harder to File

Volpe Koenig on

When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408  Paper 21, much of the commentary focused on the result....more

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

Volpe Koenig on

Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

Knobbe Martens

Patent Scorecard – Ranking Patent Portfolios in the Aerospace Industry

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The Institute of Electrical and Electronics Engineers (IEEE) recently released its 2025 “Patent Scorecard” where it analyzes and ranks companies with large patent portfolios in various industries, including aerospace. The...more

Jones Day

Applying Fintiv to a Parallel ITC Investigation

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The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

Jones Day

April 2025 Institution Rate Slips Below 45 Percent

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The PTAB has published its monthly statistics wrap up for April 2025. As expected, those statistics show a significant decline in the institution rate compared to the first six months of the fiscal year. In those first six...more

Wolf, Greenfield & Sacks, P.C.

Practical Guide to Claiming Small Molecules with Functional Language

Patent claims reciting compounds where at least one group of a compound genus is defined by its function are common. For example, familiar claim terms such as “chelating moiety,” “linker,” and “binding moiety” describe a...more

Jones Day

Acting Director Releases First Decisions Under New Bifurcated Process

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On May 16, 2025, USPTO Acting Director Coke Morgan Stewart released the first four discretionary denial decisions under the PTAB’s new process. Under the new process, the parties separately brief discretionary denial issues...more

Foley Hoag LLP

Patents Under Lock and Key: Managing Dual Use Technology in a Globalized World

Foley Hoag LLP on

Dual use technologies are innovations that have both civilian and military applications. Notable examples include advanced semiconductors, artificial intelligence (AI), encryption software, 3D printing, chemical and...more

Quarles & Brady LLP

USPTO Expediting Design Patent Issuances and De-Expediting Design Examination

Quarles & Brady LLP on

Starting May 13, 2025, the USPTO has begun accelerating the issuance of patents after the issue fee has been paid. Specifically, the duration between the Issue Notification and the Issue Date will be reduced to approximately...more

Proskauer - The Patent Playbook

Impact of the Leadership in Critical Technologies Act on U.S. Artificial Intelligence, Semiconductors and Quantum Computing

On the heels of the recent reintroduction of the PERA and PREVAIL Acts of 2025, a bipartisan group of lawmakers in Congress has introduced the Leadership in Critical and Emerging Technologies (“CET”) Act. The goal of the...more

McDermott Will & Emery

It’s a Matter of Timing: The PTO’s Latest Decisions on Discretionary Denials

McDermott Will & Emery on

Since the US Patent & Trademark Office’s (PTO) decision to rescind former Director Vidal’s memo on procedures for post-grant proceedings where there is parallel district court litigation, Current Acting Director Coke Morgan...more

Maynard Nexsen

A Guide for Successful Patent Disclosures from Start-Ups to Large Companies

Maynard Nexsen on

The quality of a patent begins to take shape at the time of disclosure. An inadequate disclosure can greatly affect the quality of the patent. The level of sophistication of a client typically dictates the quality of patent...more

A&O Shearman

Court Of Appeals For The Federal Circuit Holds That Conception Does Not Require Certainty of Success

A&O Shearman on

On May 12, 2025, the Court of Appeals for the Federal Circuit vacated-in-part and remanded a Patent Trial and Appeal Board (“PTAB”) decision in an interference proceeding concluding that the Broad Institute, Inc. (“Broad...more

Jones Day

Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

Jones Day on

USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB.  Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...more

Sheppard Mullin Richter & Hampton LLP

PTAB Rejects AI-Driven Medical Patent – Not for Novelty, But Eligibility

In a recent decision with important implications for artificial intelligence (AI) driven innovation, the Patent Trial and Appeal Board (PTAB) denied a patent for an AI-based medical tool. The refusal was not because the...more

Foley Hoag LLP

A Super CRISPR Week – the Week of May 12, 2025: Patent Battles, Clinical Milestones, and Next-Gen Tools

Foley Hoag LLP on

Key Takeaways: Federal Circuit Reopens CRISPR-Cas9 Priority Fight. The CAFC vacated the PTAB’s earlier ruling that UC lacked prior conception of CRISPR-Cas9 in eukaryotic cells, remanding the interference for reconsideration...more

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