News & Analysis as of

Patents Regulatory Reform Patent Trial and Appeal Board

Warner Norcross + Judd

It’s Confirmed: Discretionary Denials Will Likely be on the Rise Following USPTO’s New Guidance Following Withdrawal of Fintiv...

Following the U.S. Patent and Trademark Office’s (USPTO’s) decision to rescind the Fintiv Memo on Feb. 28, 2025, the result was that the Patent Trial and Appeal Board (PTAB) would have greater flexibility in exercising its...more

Ballard Spahr LLP

USPTO Procedure Adds New Hurdle to PTAB Trial Institution

Ballard Spahr LLP on

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

Kilpatrick on

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

Morrison & Foerster LLP

Pivot At The PTAB: The Acting Director Bifurcates Review

With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more

Latham & Watkins LLP

USPTO Rescinds and Replaces Guidance on Discretionary Denials

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On February 28, 2025, the United States Patent and Trademark Office (USPTO) rescinded a memorandum issued in June 2022 by former Director Katherine Vidal (the Vidal Memorandum) that provided guidance on discretionary denials...more

Foley & Lardner LLP

Delaying Examination of Continuing Applications Could Sabotage USPTO Goals

Foley & Lardner LLP on

Rumor has it that one of many behind-the-scenes changes being implemented at the USPTO relates to how (or when) continuing applications are taken up for examination. Typically, an examiner may give priority to a continuing...more

Morgan Lewis

USPTO in 2025: Leadership, Operational, Legislative, and Policy Changes to Watch

Morgan Lewis on

As 2025 unfolds, changes across the patent landscape are unfolding. From agency leadership transitions to proposed legislation and evolving AI-related policies, these shifts could impact patent prosecution, post-grant...more

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

USPTO Withdraws June 2022 Guidance on Fintiv Denials

On Friday, February 28, 2025, the United States Patent and Trademark Office (USPTO) announced the withdrawal of the June 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with...more

Baker Botts L.L.P.

Intellectual Property Report February 2025

Baker Botts L.L.P. on

It is well established that “a petitioner in an inter partes review … is not permitted to assert a ground of unpatentability under 35 U.S.C. § 112.” Dexcowin Golabl, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7,...more

Jenner & Block

PREVAIL Act Advances to the Senate: Potential Implications for Patent Challenges

Jenner & Block on

On November 21, 2024, the Senate Judiciary Committee voted by a narrow 11–10 margin to advance the PREVAIL Act to the Senate for consideration. The PREVAIL Act, or the Promoting and Respecting Economically Vital American...more

Jones Day

PREVAIL Act Passes Committee

Jones Day on

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

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

Jones Day

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

Jones Day on

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

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

USPTO Requests Comments Regarding Motion to Amend Pilot

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The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...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

Jones Day on

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

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