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Fish & Richardson’s 2024 Post-Grant Report takes a deep dive into the cases, trends, and statistics that shaped Patent Trial and Appeal Board (PTAB) practice throughout the year and how they might affect practitioners going...more
The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more
As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more
Earlier this year, the U.S. Patent and Trademark Office (USPTO) proposed a sweeping set of rules imposing new requirements on terminal disclaimers filed to overcome obviousness-type double patenting (OTDP) rejections, and...more
The U.S. Patent and Trademark Office ("USPTO") has withdrawn its proposed rule regarding terminal disclaimer requirements....more
The decision to end the program follows public resistance to a proposed fee structure aimed at offsetting its high administrative costs. The U.S. Patent and Trademark Office (USPTO) extended the After Final Consideration...more
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
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
Newly appointed USPTO Director Michelle Lee has responded to public criticism of the post-grant patent review mechanisms provided by the America Invents Act (AIA) by announcing in her blog last week that the government will...more