News & Analysis as of

Inter Partes Review (IPR) Proceeding Motion to Amend America Invents Act

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

PTAB Year in Review – USPTO Rulemaking in 2024 Related to PTAB Practice and Procedures

The final year of Director Vidal’s tenure as the Director of the U.S. Patent and Trademark Office was a busy year for rulemaking at the Office. Since late 2023, five Notices of Proposed Rulemaking (NPRMs) directly related to...more

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more

Womble Bond Dickinson

USPTO Seeks to Cement PTAB Motion to Amend Pilot Program

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The United States Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act (AIA). Specifically, the USPTO is proposing...more

WilmerHale

PTAB/USPTO Update - March 2024

WilmerHale on

On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more

Fish & Richardson

USPTO Proposes Rules Updating Motion to Amend Practice Before the PTAB

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more

Jones Day

USPTO Requests Comments Regarding Motion to Amend Pilot

Jones Day on

The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Goodwin

Issue Twenty-Nine: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Foley & Lardner LLP

PTAB’s Motion to Amend Pilot Program: Review of Initial Results

Foley & Lardner LLP on

Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more

McDonnell Boehnen Hulbert & Berghoff LLP

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims.  The appeal raises issues of finality...more

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

PTAB Strategies and Insights - February 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Jones Day

PTAB Bar Association – Thought Leader Summit Recap

Jones Day on

In November, the PTAB Bar Association held its annual Thought Leader Summit. The Summit highlighted recent changes to PTAB practice, with a keynote address from USPTO Director Andrei Iancu. In the opening remarks, Director...more

Mintz - Intellectual Property Viewpoints

Favorable Trends For Patent Owners Post-Aqua Products

When former President Barack Obama signed the Leahy–Smith America Invents Act into law on Sept. 16, 2011, the patent system in the United States underwent one of its most sweeping and significant overhauls. The AIA replaced...more

Goodwin

Issue Twenty-One: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Jones Day

PTAB Proposes Burden of Persuasion Rules for AIA Amendments

Jones Day on

On October 21, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) provided a Notice of Proposed Rulemaking (“NPRM”) concerning their rules of practice in allocating...more

Mintz - Intellectual Property Viewpoints

USPTO Proposes New Rules for Amending Claims During AIA Reviews

Earlier this week, the United States Patent and Trademark Office (“USPTO”) proposed rule changes for amending patents in AIA proceedings. The proposed rule changes would apply to inter partes review (“IPR”), post-grant review...more

Kilpatrick

UPDATE: IPR/PGR Update: Uptick in Motion to Amend Grant Rate One-Year Post-Aqua Products and new Pilot Program are Promising Signs...

Kilpatrick on

In October of 2017, the Federal Circuit issued an en banc decision in Aqua Products Inc. v. Matal, holding that patent owners no longer bear the burden of proving patentability of their amended claims. Instead, the burden...more

Kilpatrick

USPTO Issues Guidance on Options to Amend through Reissue and Reexamination during AIA Trials

Kilpatrick on

On October 29, 2018, the US Patent & Trademark Office (USPTO or Office) issued a Notice requesting comments on proposed modifications to motion to amend (MTA) practice. The Office received a number of comments and questions...more

McDermott Will & Emery

Pilot Program for Motion to Amend Practice in PTAB Proceedings Under AIA

On March 15, 2019, The US Patent and Trademark Office (PTO) provided notice of a pilot program for motion to amend (MTA) practice and procedures in trial proceedings under the America Invents Act (AIA) before the Patent Trial...more

Jones Day

PTAB Initiates Motion to Amend Pilot

Jones Day on

On October 29, 2018, the Office published a request for comments (“RFC”) on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively...more

Kilpatrick

New Pilot Program: Motion-to-Amend Practice in PTAB Proceedings Gives Patent Owners New Options

Kilpatrick on

The US Patent and Trademark Office (USPTO) implemented a new pilot program on March 15, 2019 concerning motion-to-amend practice in America Invents Act (AIA) trials, including post-grant review (PGR), inter partes review...more

Kilpatrick

PTAB Issues Three New Precedential Opinions

Kilpatrick on

The Patent Trial and Appeal Board (PTAB) has been busy, designating three decisions as precedential on Monday after designating two decisions as precedential earlier this month. Two of the decisions involve the substantive...more

Jones Day

New PTAB Pilot Program for Claim Amendments

Jones Day on

The USPTO has proposed a pilot program intended to make it easier to amend claims before the PTAB. (See the USPTO’s Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings under the America...more

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