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Inter Partes Review (IPR) Proceeding Patents Proposed Legislation

WilmerHale

PTAB/USPTO Update - April 2025

WilmerHale on

On March 10, John Squires was officially nominated to be Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office....more

Jones Day

PREVAIL Act Passes Committee

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The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21, 2024. In...more

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

PTAB Spotlight Series with Lestin Kenton

In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow....more

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

2023 PTAB Year in Review: Analysis & Trends: The Changing Contours of IPR Estoppel Law

As any PTAB practitioner knows, the possibility of being estopped from asserting prior art in district court is a significant risk that must be considered when filing an IPR. Section 315(e)(2) prevents a petitioner, following...more

Knobbe Martens

PREVAIL Act Proposes Significant Changes PTAB Proceedings

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IP rights can be vital to the success of medical device companies.  Significant legislative changes governing some of these rights may be on the horizon.  Senators Coons (Delaware), Durbin (Illinois), Hirono (Hawaii), and...more

Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

Farella Braun + Martel LLP

What Patent Bills Would Mean for Infringement Litigation

Two bills recently introduced in Congress could significantly affect the current patent litigation landscape. The bipartisan bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting...more

Jones Day

Legislation: Will the Post-Grant Procedures Established by the AIA PREVAIL?

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The Senate recently introduced a bill directed to substantially narrowing the scope of post grant proceedings, including Inter Partes Reviews (“IPRs”), before the Patent Trial and Appeal Board (“PTAB”). First introduced by a...more

Farella Braun + Martel LLP

Takeaways From the Proposed PREVAIL Act

Two proposed bills recently introduced in Congress have the potential to greatly impact the current patent litigation landscape. The bills are titled the Promoting and Respecting Economically Vital American Innovation...more

McDermott Will & Emery

Coons and Tillis Introduce Two Bills Intended to Change Patent Landscape

McDermott Will & Emery on

In late June 2023, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced two bills in Congress that, if enacted, would change the patent adjudication landscape: - The Promoting and Respecting Economically Vital...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

McCarter & English, LLP

Senators Kick off Bipartisan Patent Reform Effort

In an unusual bipartisan effort, Senator Thom Tillis (R-N.C.) and Senator Chris Coons (D-Del.) have introduced a pair of bills that seek to strengthen US patents by limiting permissible challenges. The bill led by Tillis,...more

Jones Day

Legislation: PTAB Reform Act of 2022 (UPDATED)

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Since the passage of the America Invents Act in 2012, both petitioners and patent owners have expressed concerns regarding the procedures and practices of the Patent Trial and Appeal Board (PTAB). In an effort to respond to...more

Jones Day

Legislation: PTAB Reform Act of 2022

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On June 16, Senators Leahy, Cornyn, and Tillis introduced the PTAB Reform Act of 2022. The full text of the bill is available...more

Jones Day

Leahy-Corbin Proposals for “Restoring the America Invents Act”

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We recently reported on bipartisan legislation introduced by Senators Patrick Leahy (D) and John Cornyn (R) to significantly revamp certain features of the America Invents Act (AIA), ten years after its debut.  This proposed...more

Goodwin

Introduction of the Restoring the America Invents Act and Its Impact on the PTAB

Goodwin on

At an event held by the U.S. Manufacturers Association for Development and Enterprise and the Alliance for Automotive Innovation on Wednesday September 22, 2021, Senator Leahy (D- Vt.) announced the introduction of the...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

Fish & Richardson

Senator Hatch: Choose IPR or an Abbreviated Regulatory Pathway, But Not Both

Fish & Richardson on

Last week, Senator Orrin Hatch of Utah introduced the “Hatch-Waxman Integrity Act of 2018,” which seeks “to restore the careful balance the Hatch-Waxman Act struck to incentivize generic drug development.” ...more

Jones Day

STRONGER Patents Act Being Introduced to the U.S. House of Representatives

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On March 20, 2018, Reps. Steve Stivers (R-Ohio) and Bill Foster (D-Ill.) announced in an article that they would introduce the STRONGER Patents Act to the U.S. House of Representatives. More formally referred to as The...more

Schwabe, Williamson & Wyatt PC

With Sovereign Immunity, the McCaskill Bill, and Oil States, Big Changes Might Be in Store for Inter Partes Review

When the American Invents Act was passed in 2011, most of us saw the inter partes review process as a streamlined, relatively inexpensive procedure that would permit accused infringers, especially those accused by...more

Knobbe Martens

Changes to PTAB Practice Proposed by STRONGER Patents Act of 2017

Knobbe Martens on

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate by a bipartisan group led by Senator Chris Coons (D-Del.) and co-sponsored...more

Foley & Lardner LLP

STRONGER Patents Act of 2017 Disadvantages Domestic Manufacturers

Foley & Lardner LLP on

In late June, Senators Coons, Cotton, Durbin, and Hirono introduced the STRONGER Patents Act of 2017. The Act includes provisions that seek to heavily change the inter partes review and post-grant review processes. However,...more

Hogan Lovells

U.S. Patent Legislation: The STRONGER Patents Act of 2017

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In June, three democratic senators (Chris Coons from Delaware, Dick Durbin from Illinois, and Mazie Hirono from Hawaii) and one republican senator (Tom Cotton from Arkansas) introduced the “STRONGER Patents Act of 2017.” One...more

Bass, Berry & Sims PLC

The STRONGER Patents Act: Swinging the Pendulum in Favor of Patent Owners

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While the House Judiciary Committee conducts hearings today on "The Impact of Bad Patents on American Businesses," a movement is afoot in the Senate to revitalize the U.S. patent system. On June 21, 2017, a bipartisan group...more

Fish & Richardson

Legislative Developments in Post-Grant Proceedings

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Amidst a spate of high-profile IPR filings in the life sciences space by hedge fund financiers, the biotechnology industry has mobilized behind two chief legislative strategies designed to limit or eliminate its exposure to...more

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