News & Analysis as of

Inter Partes Review (IPR) Proceeding Patents Final Rules

Proskauer - The Patent Playbook

Focus on Fintiv: Shift in Patent Office Guidance for Discretionary Denials of Patent Challenges

On February 28, 2025, the U.S. Patent and Trademark Office announced that it was rescinding a 2022 memorandum that provided guidance regarding the application of the Apple v. Fintiv decision to the Patent Trial and Appeal...more

Fish & Richardson

2024 Post-Grant Annual Report

Fish & Richardson on

Fish & Richardson’s 2024 Post-Grant Report takes a deep dive into the cases, trends, and statistics that shaped Patent Trial and Appeal Board (PTAB) practice throughout the year and how they might affect practitioners going...more

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

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

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

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

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

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

Director Review Codified as Director Vidal Steps Down—What is this Power and How Did Vidal Wield It?

With U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s return to private practice in December 2024 and the future permanent Director yet to be tapped for nomination, it is a good time to reflect on one of the...more

Erise IP

Eye on IPRs: January 2025: USPTO Fee Increases; Patent Challengers Can't Dismiss Fed. Cir. Appeal After Decision

Erise IP on

Effective January 19, 2025, the USPTO is increasing various patent filing fees, including an across-the-board fee increase as well as specific increases for America Invents Act trials, Director Review, and other procedures....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

Fish & Richardson

Recapping a Busy Summer for Director Review

Fish & Richardson on

United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Jones Day

PTO Promotes Judicial Independence in Final PTAB Rule

Jones Day on

On June 12, 2024, the USPTO issued a final rule governing the pre-issuance circulation and review of decisions within the PTAB. This formalized current USPTO procedures within the Standard Operating Procedure (SOP4) adopted...more

WilmerHale

PTAB/USPTO Update - May 2024

WilmerHale on

On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

WilmerHale

PTAB/USPTO Update - July 2023

WilmerHale on

On June 7, the USPTO released its 2022-2026 Strategic Plan. According to the USPTO, the new plan outlines the USPTO's mission-focused strategic goals, which are: (1) driving inclusive U.S. innovation and global...more

WilmerHale

PTAB/USPTO Update - April 2023

WilmerHale on

On March 6, the USPTO announced a new Green Energy Category of its Patents for Humanity Program. Patents for Humanity is an awards competition that recognizes innovators who use technology to meet global humanitarian...more

WilmerHale

PTAB/USPTO Update - March 2023

WilmerHale on

The USPTO published Revision 07.2022 of the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). A change summary is available here....more

WilmerHale

PTAB/USPTO Update - November 2022

WilmerHale on

USPTO News - ..On October 19, 2022 the USPTO issued a report titled “Where are U.S. women patentees? Assessing three decades of growth” examining trends in women’s patenting in the U.S. from 1990-2019. ..Director...more

WilmerHale

PTAB/USPTO Update - August 2021

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director. The Biden Administration has not made an announcement as to who will be nominated to become the next Director....more

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

PTAB Strategies and Insights - December 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

Lathrop GPM

USPTO Announces Across-the-Board Patent Fee Increases

Lathrop GPM on

The United States Patent and Trademark Office (USPTO) published a Final Rule today in the Federal Register, viewable at 85 Fed. Reg. 46932 (August 3, 2020), announcing fee adjustments affecting all aspects of patent practice...more

Latham & Watkins LLP

USPTO Harmonizes New Claim Construction Standard in PTAB Proceedings

Latham & Watkins LLP on

The PTAB will apply the same Phillips standard applied by district courts and the ITC. Key Points: ..The change is not retroactive, and will apply only to IPR, PGR, and CBM petitions filed on or after November 13, 2018....more

Williams Mullen

PTAB Adopts Phillips Claim Construction Standard for AIA Challenges

Williams Mullen on

Last week, the U.S. Patent and Trademark Office (“Patent Office”) published its Final Rule Package modifying the claim construction standard used in challenges before the Patent Trial and Appeal Board (“PTAB”), including...more

Goodwin

PTO Replaces Broadest Reasonable Interpretation Claim Construction Standard in IPR, PGR, CBM Proceedings

Goodwin on

Today, the PTO announced that it has published a final rule changing the claim construction standard applied during IPR, PGR, and CBM proceedings before the PTAB. The final rule replaces the “broadest reasonable...more

Troutman Pepper

New Final Rules for Post-Grant Proceedings Published by USPTO on April Fools Day

Troutman Pepper on

The USPTO has gone ahead and finalized new rules for post-grant proceedings under the America Invents Act (AIA) – despite heavy criticism that the rules do little to alter the lopsided nature of these proceedings. The new...more

Knobbe Martens

The USPTO Amends AIA Trial Rules: 4 Changes That You Need To Know

Knobbe Martens on

On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued amended final rules that govern trials under the America Invents Act (AIA), including inter partes review, post-grant review, covered business method...more

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