News & Analysis as of

Patents Filing Deadlines Patent Trial and Appeal Board

Troutman Pepper Locke

The Top Five Challenges of Pursuing Litigation at the ITC

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Patent litigation at the International Trade Commission (ITC) is characterized by its rapid pace, with proceedings for investigations under 19 U.S.C. § 1337 typically concluding within 15 to 18 months after the filing of the...more

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

PTAB Issues Additional Information on New Pre-Institution Discretionary Briefing

On April 25, 2025, the USPTO issued additional information in response to frequently asked questions (FAQs) about the “Interim Processes for PTAB Workload Management” memorandum issued on March 26, 2025. As discussed in our...more

Jones Day

PTAB Finds Petition Time Barred

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In 2985 LLC d/b/a Mountain Voyage Company, LLC v. The Ridge Wallet LLC, a Patent Trial and Appeal Board (“PTAB”) panel denied inter partes review (“IPR”) institution where the petition was time barred under 35 U.S.C. § ...more

Jones Day

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

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The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more

Jones Day

PTAB Announces a Bifurcated Process for Consideration of IPR and PGR Petitions

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A new interim process for the acting director to exercise discretion as to whether to institute an inter partes review ("IPR") or a post-grant review ("PGR") was announced on March 26, 2025, in which discretionary...more

Proskauer - The Patent Playbook

Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers

On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new...more

Ballard Spahr LLP

USPTO Procedure Adds New Hurdle to PTAB Trial Institution

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On March 26, 2025, the United States Patent and Trademark Office (USPTO) announced changes to the Patent Trial and Appeal Board (PTAB) trial institution process, creating a new bifurcated approach to institution decisions....more

Kilpatrick

Pre-Institution Overhaul: Unpacking the PTAB’s New Briefing Procedures

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Hot on the heels of rescinding former Director Vidal’s June 2022 memo providing guidance on discretionary denials, Acting Director of the USPTO, Coke Morgan Stewart, issued a memo yesterday outlining new “Interim Processes...more

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

Latest PTAB Memo Bifurcates Pre-Institution Briefing; Creates New Separate Briefing on Discretionary Considerations

On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs. Under the Interim Process,...more

Knobbe Martens

A Published Patent Application Is IPR Prior Art as of Its Filing Date

Knobbe Martens on

Before Lourie, Prost, and Stark - Summary: In an IPR, a patent application is considered a “printed publication” as of the application’s filing date, not its publication date. Samsung filed a petition for IPR of a Lynk Labs...more

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

The PREVAIL Act Could Change PTAB Trials in a Big Way

Since the America Invents Act (“AIA”) established a new venue for hearing patent disputes, the Patent Trial and Appeal Board (“PTAB”), much ink has been spilled regarding the impacts of this forum on patent litigation and the...more

Goodwin

Issue 40: PTAB Trial Tracker

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Precedential Opinion Addresses Conclusory Expert Declarations - In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more

McDermott Will & Emery

PTO Adds Green Energy Category to Patents for Humanity Program

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On March 6, 2023, the US Patent & Trademark Office (PTO) introduced a new green energy category to its Patents for Humanity Program. This new award category provides business incentives for patent applicants, holders and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Time Periods in Toolgen Interferences Extended by Party Stipulation

The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has issued a notice of extension of certain deadlines by party stipulation in the two interferences involving ToolGen Inc. as Senior Party (No. 106,126...more

American Conference Institute (ACI)

[Virtual Event] Paragraph IV on Virtual Trial - COVID-19 Edition - August 20th, 8:45 am - 6:00 pm EDT

Join us for a one-day virtual event for Counsel for Hatch-Waxman Litigators. While COVID-19 prevented us from meeting in person this April in NYC, we are pleased to announce a special one-day virtual event Paragraph IV on...more

Sunstein LLP

Virus-Related Legislation Extends Patent and Trademark Deadlines

Sunstein LLP on

The details of financial relief provided to households and businesses in the recently passed Coronavirus Aid, Relief and Economic Security (CARES) Act may have received all the press, but other provisions of the CARES Act...more

American Conference Institute (ACI)

[Webinar] Examining the COVID-19 Effect on the Business and Practice of Hatch-Waxman Litigation - June 2nd, 12:00 pm - 1:00 pm EST

The coronavirus global pandemic has ushered in extraordinary roadblocks for the pharmaceutical industry. To help you carve out a path forward, in-house senior executives and industry leaders will convene virtually at ACI’s...more

Spilman Thomas & Battle, PLLC

U.S. PTO COVID-19 Update: Patent Office Extensions Through May 31, 2020

The Director of the U.S. Patent and Trademark Office on April 28, 2020 signed a Notice of Extended Waiver for certain deadlines associated with patent-related filings, if the missed deadline resulted from situations relating...more

Mintz - Intellectual Property Viewpoints

How the CARES Act Affects Patent Related Deadlines

In accordance with the CARES (Coronavirus Aid, Relief, and Economic Security) Act, the USPTO has extended some patent-related deadlines. Subsection 12004(a) of the CARES Act gives the Director of the United States Patent...more

Goodwin

USPTO Extends Certain Deadlines to June 1 Due to COVID-19 Pandemic

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On April 28, 2020, the U.S. Patent and Trademark Office (USPTO) issued a notice to extend certain patent and trademark deadlines to June 1, lengthening extensions that the USPTO had announced on March 31.  Pursuant to the...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Further Extension of Certain Patent Deadlines

In a notice posted on its website last week, the U.S. Patent and Trademark Office announced that it was further extending the time to file certain patent-related documents and to pay certain required fees....more

Bracewell LLP

USPTO Extends Trademark And Patent Deadlines Due to Coronavirus Pandemic

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As IP Offices around the world work to mitigate the impact of the global health threat, the U.S. CARES Act gives USPTO authority to extend statutory deadlines to help ease burden of IP owners affected by COVID-19 The...more

Haug Partners LLP

Global Updates From Intellectual Property Offices During the COVID-19 Pandemic

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As the world is in the midst of the COVID-19 pandemic, intellectual property owners have expressed concern over the submission of documents to intellectual property offices and the effects the pandemic may have on pending...more

Troutman Pepper Locke

USPTO Extends Certain Patent Deadlines to Address COVID-19 Delays

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Amid concerns from inventors, applicants and their representatives that the COVID-19 outbreak is creating hardships in maintaining the prosecution and protection of patents and trademarks, the Director of the United States...more

Snell & Wilmer

Waiver of USPTO Deadlines Under the CARES Act

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Further to our update from late last week, which outlined certain notices issued from the United States Patent and Trademark Office (USPTO) in light of the COVID-19 pandemic, on March 27, 2020, President Trump signed the...more

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