News & Analysis as of

Patents Filing Requirements

McDermott Will & Emery

PTO Accelerates Patent Issuance Timeline

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The US Patent & Trademark Office (PTO) announced that it has shortened the time between the issue notification and the issue date for patents. Historically, the time between these two events averaged about three weeks....more

Womble Bond Dickinson

USPTO Announces Changes to Patent Issue Timelines and Design Application Examinations

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This week, the U.S. Patent and Trademark Office (USPTO) made two announcements of interest to patent holders and practitioners as part of modernization and efficiency efforts...more

Fox Rothschild LLP

USPTO to Expedite Patent Issuance

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The U.S. Patent and Trademark Office (USPTO) announced today that effective May 13, 2025, the time between an Issue Notification and issue date of a U.S. patent will be reduced to about one week. Currently, it takes three...more

Ladas & Parry LLP

USPTO Efforts at Modernity Speeds Patent Issuance

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On May 13, 2025, the U.S. Patent and Trademark Office (USPTO) will expedite Issue Dates for patents. This will reduce the average time from three weeks to about two, so patent holders can bring their investments to market...more

Fox Rothschild LLP

Large Entity, Small Entity or Micro-Entity: Which Type of Patent Applicant Are You? - UPDATED 4/3/25

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When applying for a patent application, certain entities are entitled to reduced USPTO filing fees. Applicants who qualify for small entity status can reduce many USPTO fees by 60%. Applicants who are micro entities can...more

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

Key Considerations When Using AI Tools to Draft and File Documents with the USPTO

The use of Artificial Intelligence (AI) tools in practice before the United States Patent and Trademark Office (USPTO) is changing how practitioners prepare and submit documents. The USPTO’s recent Guidance on Use of...more

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

What is a Streamlined Reexamination Request (SRR)?

One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more

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

USPTO Fees Are Rising Drastically in 2025: What to Do Now to Save Thousands of Dollars

Heading into 2025, patent applicants should prepare for significant fee increases at the United States Patent and Trademark Office (USPTO). These fee increases can significantly impact patent applicant behavior, leading...more

McDonnell Boehnen Hulbert & Berghoff LLP

The USPTO's Guidance on Use of AI-based Tools in Practice

Since President Biden issued his Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, the U.S. Patent and Trademark Office has been investigating the potential pitfalls of...more

Mitratech Holdings, Inc

Workflow of the Week: Automating Intellectual Property (IP) Management

Streamline and accelerate the steps for protecting and managing intellectual property rights such as patents, trademarks, copyrights, and trade secrets. Protecting intellectual property like technological advancements,...more

Womble Bond Dickinson

Patent Practitioners Take Note: (Even) if You Use AI, Read Before You File

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On February 6, 2024, the USPTO weighed in with guidance for practitioners using—or considering using—AI in preparing submissions to the USPTO. In essence, Director Kathi Vidal has reminded practitioners that they must sign...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Delays Transition to DOCX (Again)

On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application...more

Womble Bond Dickinson

UPDATE: USPTO Non-DOCX Surcharge Now Set to Roll-Out on April 3, 2023

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The United States Patent and Trademark Office (USPTO) will begin applying a surcharge to all applications filed in non-DOCX form on April 3, 2023. The USPTO originally had announced the surcharge would take effect on Jan. 1,...more

Sheppard Mullin Richter & Hampton LLP

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the...more

Fenwick & West LLP

National Phase Initial Filing Estimates

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Due within 5 years of international filing date or within 2-months of issuance of a Direction to Request Examination, whichever is earliest (additional $1800). Excess fees of $125 for each claim over 20 are payable at...more

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

PTAB Strategies and Insights - October 2020: Petitioner Beware - No Cure For Missed Filing Requirements

Petitioners beware – the Board holds you to what is submitted on filing day for required documents. In Shenzhen Aurora Technology Company, Ltd. v. Putco, Inc., IPR2020-00670, “[t]he Petition relies on foreign language...more

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

Global Patent Prosecution Newsletter - October 2020

The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the...more

Troutman Pepper Locke

The Obligation to Submit Agreements in IPRs Is Broad

Troutman Pepper Locke on

DTN, LLC v. Farms Technology, LLC, IPR2018-01412, -01525 (June 14, 2019) - On June 11, 2020, the PTAB designated as precedential its 2019 decision in DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of...more

King & Spalding

COVID-19 – Take Action Now to Protect Intellectual Property Rights During Bankruptcy

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It is no secret that the outbreak of the coronavirus has caused untold damage, distress, and dislocation to the worldwide economy, leading many companies to consider their respective restructuring options. Given the current...more

McDonnell Boehnen Hulbert & Berghoff LLP

Impact of COVID-19 Pandemic on Patent Offices and Federal Courts – April 2 UPDATE

On March 11, World Health Organization Director-General Tedros Adhanom declared that the COVID-19 outbreak "can be characterized as a pandemic," cautioning that the WHO has "rung the alarm bell loud and clear." At the time...more

Roetzel & Andress

U.S. Patent And Trademark Office Temporarily Extends Filing Deadlines

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Businesses – currently facing immediate crises arising from the COVID-19 pandemic – may be temporarily distracted from issues that, in more ordinary times, would be important to them, such as protecting and maintaining their...more

Bradley Arant Boult Cummings LLP

Patent and Trademark Offices Provide Some Relief from Coronavirus, But Try to Meet Deadlines If Possible

Patent and trademark offices around the world have not been insulated from the effects of the global coronavirus pandemic. Many offices have directed their employees to transition to telework, and several have extended...more

Wilson Sonsini Goodrich & Rosati

Patent Junk Mail

As an Applicant for a patent, your information becomes public when the application publishes and once again when the patent itself issues. Unfortunately, there are several companies that mine this information for their own...more

Hogan Lovells

USPTO's guidelines for electronic filing: applicant/ registrant/party email addresses required

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Of particular interest, to receive a filing date after February 15, 2020, all new applications must include an email address for each applicant, even if represented by an attorney.  In addition, all applicants, registrants,...more

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

Global Patent Prosecution - December 2019

Prosecuting Bioinformatics Patent Applications in the United States, Europe, and China - The bioinformatics market is a multi-billion dollar industry, expecting to nearly double in a few years. However, seeking patent...more

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