News & Analysis as of

Patents Rulemaking Process

Ladas & Parry LLP

Proposed Increases of United States Patent Fees

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On April 3, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of rulemaking setting out the fees that it proposes for the fiscal year starting on September 29, 2024. Although the proposed fees are...more

Foley & Lardner LLP

USPTO Aims to Mow Down Patent Thickets

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In a stunning Federal Register Notice published May 10, 2024, the U.S. Patent and Trademark Office (USPTO) proposes to impose a new requirement on terminal disclaimers filed to overcome obviousness-type double patenting...more

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

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Shaping the PTAB’s Rulemaking and Rule Enforcement...

A trio of cases this past year illustrate a trend of increasing importance of the Patent Office’s rulemaking and enforcement. Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023) The Federal Circuit’s...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023 #2

Apple Inc. v. Vidal, Appeal No. 2022-1249 (Fed. Cir. Mar. 13, 2023) In our Case of the Week, the Federal Circuit allowed Apple’s challenge to the Patent Trial and Appeal Board’s (“PTAB”) Fintiv rules to proceed, at least...more

McDermott Will & Emery

PTO Eliminates CLE Certification and Recognition for Patent Practitioners

The US Patent & Trademark Office (PTO) announced a final rule amending 37 C.F.R. § 11.11(a)(1) and (a)(3) to eliminate provisions concerning voluntary continuing legal education (CLE) certification for registered patent...more

McDermott Will & Emery

PTO Extends Public Comment Period on Patent Subject Matter Eligibility Guidance

The US Patent & Trademark Office (PTO) seeks public feedback on its existing patent subject matter eligibility (SME) guidance. The guidance was put in place in 2019. As noted in the PTO’s July 25, 2022, blog post, the 2019...more

Foley & Lardner LLP

USPTO Proposes To Require Form For IDS PTA Safe Harbor

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The USPTO Patent Term Adjustment (PTA) rules include a “safe harbor” that avoids a PTA deduction for “Applicant delay” for Information Disclosure Statements that are accompanied by a certain statement averring that the items...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO News Briefs - January 2022

USPTO Proposes Electronic Issuance of Patents - In a notice of proposed rulemaking published last month in the Federal Register (86 Fed. Reg. 71209), the U.S. Patent and Trademark Office is proposing to issue patents...more

Robins Kaplan LLP

[Webinar] Health Care Antitrust Under President Biden 2.0 - Almost One Year In: What Have We Learned About The Democrats’ Approach...

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In March 2021, our experienced intellectual property, antitrust, and health care litigation lawyers shared some predictions on antitrust policy and enforcement in the health care sector. In “Health Care Antitrust under...more

Jones Day

Apple v. Iancu: Oral Argument on Motion to Dismiss and Plaintiff Summary Judgment Motion

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Since the PTAB designated Apple v. Fintiv precedential, the six-factor, “holistic” test has been increasingly used to discretionarily deny institution of petitions challenging claims already subject to parallel litigation...more

Jones Day

BREAKING: Arthrex Headed to the Supreme Court

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On Tuesday, the Supreme Court granted certiorari in the three appeals from the Federal Circuit’s Arthrex decision, consolidating those three cases for briefing and argument. The questions to be presented are as follows...more

Jones Day

PTO Proposes PTAB POPR Presumption Principle Permutation

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On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for material...more

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

PTAB Strategies and Insights - May 2020: Should USPTO Be Able to Make New Law Without Rulemaking

Since arriving at the USPTO, Director Iancu has tried to bring clear messages and consistency to the Office. For purposes of this article, we concentrate on the new POP procedures for Board case law and rules, and how the...more

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

PTAB Strategies and Insights - May 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Foley & Lardner LLP

USPTO to Tweak PTA Rules in View of Supernus

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In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit held that the USPTO cannot charge a Patent Term Adjustment (PTA) deduction for “applicant delay” during a period when the applicant “could have done nothing to...more

Wilson Sonsini Goodrich & Rosati

Bipartisan and Bicameral Draft Bill Aims to Reform U.S. Patent Subject Matter Eligibility Law

Recently, a bipartisan, bicameral draft bill was introduced as part of an ongoing effort to reform U.S. patent subject matter eligibility law. In this alert, we discuss relevant background leading up to the draft bill, the...more

Troutman Pepper

Recent Proposal for Section 101 Reform

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A bipartisan group of Senators and Representatives recently released a framework for amending Section 101.  The group includes Senator Chris Coons (D-Del.) and Senator Thom Tillis (R-N.C.), as well as Representative Doug...more

Fenwick & West LLP

No Shortage of Viewpoints on New USPTO Patent Eligibility Guidelines

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In January, the USPTO announced it would seek comments on the new Guidance it had published on patent subject matter eligibility. We have previously discussed this Guidance and won’t repeat ourselves here. ...more

Hogan Lovells

Standard Essential Patent Update – August 2018

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In the August 2018 edition of Hogan Lovells’ Standard Essential Patent (SEP) Update, we report on recent news and case decisions from China, Germany, the United Kingdom, and the United States. This bi-monthly newsletter...more

Jones Day

Indefiniteness Standard Applicable in PGRs: Reasonably Certain or Clear?

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Whether a claim is indefinite under 35 U.S.C. § 112 is analyzed under different standards by District Courts and the PTAB. District Courts apply the standard articulated by the Supreme Court in Nautilus requiring a patent’s...more

Polsinelli

USPTO Seeks to Change BRI Patent Claim Construction Standard

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The United States Patent Trademark Office announced on May 8 that it proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patents with the same standard used in Federal district...more

Jones Day

ITC Updates Its Rules of Practice and Procedure

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Late last week, the International Trade Commission (“ITC”) finalized changes to its rules, which changes were first proposed in late 2015. The new rules are expected to be published in the Federal Register in early May 2018...more

Morrison & Foerster LLP

Will the Supreme Court Put the Brakes on the IPR Trend? Cuozzo Speed Tech., LLC v. Lee

Not so fast: the United States Supreme Court is set to review the America Invents Act’s (“AIA”) fast-track inter partes review (“IPR”) process. On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed...more

Fenwick & West LLP

Intellectual Property Bulletin - Spring 2015

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California’s Eraser Law: What IP Attorneys and Owners Need to Know - Hector recently graduated from UC Berkeley and is anxious about his upcoming job interview. He is about to enter the adult world. But he has also got...more

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