News & Analysis as of

Manual of Patent Examining Procedure (MPEP) Patent Trial and Appeal Board

Cooley LLP

PTAB Rehearing Limits Double Patenting Rejections of Earlier Patent Applications From Later-Filed Family Members

Cooley LLP on

In Ex parte Baurin (Appeal 2024‑002920), the Patent Trial and Appeal Board (PTAB) denied the examiner’s request for rehearing and reaffirmed its prior reversal of six nonstatutory obviousness‑type double patenting (ODP)...more

Morrison & Foerster LLP

USPTO Puts Subject Matter Eligibility Declarations in the Spotlight

On December 4, 2025, U.S. Patent and Trademark Office (USPTO) Director John Squires issued two memoranda addressing subject matter eligibility and spotlighting an additional pathway to overcome a rejection under 35 U.S.C. §...more

McDermott Will & Schulte

Complete inventive entity required to avoid “by another” prior art under pre-AIA § 102(e)

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision finding claims directed to cladribine regimens for treating multiple sclerosis unpatentable as obvious....more

Baker Botts L.L.P.

Navigating the New Landscape of AI Patent Protection

Baker Botts L.L.P. on

The explosive growth of artificial intelligence has created unprecedented challenges for patent protection. While AI may be "the most transcendent and transformative technology of our time," as USPTO Director John Squires...more

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

Reexamination Petition Practice Is a Critical Tool for Patent Owner Success

Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more

Goodwin

USPTO Director Issues Precedential Review Decision Regarding Multiple Dependent Claims

Goodwin on

​​​​​​​Director Katherine Vidal of the U.S. Patent and Trademark Office (“USPTO”) issued a precedential review decision with respect to the interpretation of multiple dependent claims, in a case of first impression before the...more

Sheppard

Key Rules and Cases for Patent Practitioners Working on AI Patent Applications

Sheppard on

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) directed patent practitioners to current case law and sections of the Manual of Patent Examining Procedure (MPEP) as reminders as the patent practitioners...more

Jones Day

Fed. Cir. Directs Dismissal of Ex Parte Reexam

Jones Day on

On September 29, 2021, the Federal Circuit in In re: Vivint, Inc. (Fed. Cir. 2021) held that 35 U.S.C. § 325(d) applies to both inter partes review (IPR) petitions and requests for ex parte reexamination.  Accordingly, the...more

Jones Day

PTAB Provides Notice Of Sua Sponte Motion to Amend Ground

Jones Day on

The precedential ruling in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) allows the Patent Trial and Appeals Board (PTAB) to raise an issue regarding substitute claims that was...more

Mintz - Intellectual Property Viewpoints

Expediting Patent Prosecution After An Advisory Action

It can be difficult to advance prosecution of a U.S. patent application efficiently and effectively after prosecution has been closed and an Advisory Action has been mailed. Various U.S. Patent and Trademark Office (USPTO)...more

Mintz - Intellectual Property Viewpoints

Rise of the Improper Markush Grouping Rejection and Biomolecules

With the “improper Markush grouping” rejection, U.S. patent examiners may reject claims reciting various alternative polynucleotide or polypeptide sequences. However, there is no per se rule that groupings of alternative...more

Faegre Drinker Biddle & Reath LLP

October 2019 Patent Eligibility Guidance Update

Earlier this year, the United States Patent and Trademark Office (USPTO or “the Office”) published the 2019 Revised Subject Matter Eligibility Guidance (2019 PEG), which set forth newly revised procedures to be used by USPTO...more

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