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Patents United States Patent and Trademark Office New Guidance

Seyfarth Shaw LLP

The USPTO Is Issuing Patents Faster — Here’s Why That Matters

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Beginning May 13, 2025, the window between paying the issue fee and your patent officially issuing will become much shorter....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

BakerHostetler

[Podcast] Making Moves: The USPTO Provides Guidance, Proposes Changes

BakerHostetler on

The U.S. Patent and Trademark Office had a busy summer in 2024. Businesses and individuals with AI and software-based inventions paid particularly close attention to the agency when, in July, it released updated guidance on...more

McDermott Will & Emery

PTO Accelerates Patent Issuance Timeline

McDermott Will & Emery on

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

McCarter & English, LLP

The Patents Are Coming! The Patents Are Coming!—USPTO Reduces Time to Issue Patents

Under the United States Patent and Trademark Office’s (USPTO) modernization efforts, the time between paying the issue fee and issuance of the patent is being reduced. Faster patent issuance gives patent applicants less time...more

Saul Ewing LLP

USPTO Accelerates the Issuance of Patents: What Intellectual Property Owners Need to Know

Saul Ewing LLP on

On April 15, 2025, the United States Patent and Trademark Office (“USPTO”) informed the public that, effective May 13, 2025, the USPTO will be accelerating the process for issuing patents. Currently, the time between Issue...more

Womble Bond Dickinson

USPTO's AI Patent Eligibility Guidance, Vincent Look

Womble Bond Dickinson on

In 2024, the USPTO published guidance on whether an AI-based invention is patent eligible. The guidance includes three hypothetical inventions, including one relating to using an artificial neural network for data anomaly...more

Jones Day

Blurring the Line Between the Dry and Wet Lab: Joint Inventorship in AI-Assisted Life Science Inventions

Jones Day on

In 2024, not one but two Nobel Prizes (in Chemistry and Physics) were awarded to researchers for their work in artificial intelligence ("AI"). Particularly noteworthy for the life science community is the Nobel Prize in...more

McDermott Will & Emery

Fintiv Guidelines for Post-Grant Proceedings Involving Parallel District Court Litigation

On March 24, 2025, the US Patent & Trademark Office (PTO) released new guidance that clarifies application of the Fintiv factors when reviewing validity challenges simultaneously asserted at the Patent Trial & Appeal Board...more

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

Venable LLP

Recent Developments on Discretionary Denials of Post-Grant Proceedings

Venable LLP on

On March 26, 2025, the acting USPTO director, Coke Morgan Stewart, published a Memorandum addressed to all judges for the Patent Trial and Appeals Board (PTAB), in which Acting Director Stewart detailed an interim bifurcated...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

Womble Bond Dickinson

USPTO Implements Bifurcated Review Process for PTAB Petitions Under New Policy

Womble Bond Dickinson on

USPTO Acting Director Coke Morgan Stewart announced that she will personally decide whether to deny each petition challenging a patent on discretionary grounds before the Patent Trial and Appeal Board evaluates the merits....more

Kilpatrick

PTAB: Initial Fallout from the New Director Guidance on Discretionary Denial of Institution

Kilpatrick on

Last week, my partner Justin Krieger published an alert regarding Acting Director Stewart's new guidance on discretionary denial. Shortly thereafter, Acting Director Stewart issued a decision vacating institution of several...more

Vorys, Sater, Seymour and Pease LLP

New USPTO Processes Put in Place Regarding PTAB Institution Decisions

On March 26, 2025, the U.S. Patent and Trademark Office (USPTO) announced new interim procedures for handling discretionary denials of post-grant proceedings before the Patent Trial and Appeal Board (PTAB).  These changes are...more

Fish & Richardson

What to Know About the PTAB’s Discretionary Denial Shakeups

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) has recently made several significant changes that are reshaping discretionary denials at the Patent Trial and Appeal Board (PTAB). ...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

Jones Day

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

Jones Day on

A new interim process for the 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 considerations and...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Issues Guidance on Discretionary Denials

In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more

Latham & Watkins LLP

USPTO Implements Interim Procedures Bifurcating Decisions to Institute AIA Trials

Latham & Watkins LLP on

On March 26, 2025, Acting Director of the United States Patent and Trademark Office (USPTO) Coke Morgan Stewart issued a memorandum (the Workload Memorandum) to all Administrative Patent Judges (APJs) of the Patent Trial and...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

BakerHostetler

Will Fewer PTAB Judges Increase the Rate of Discretionary Denials of IPRs and PGRs?

BakerHostetler on

The Acting Director of the United States Patent and Trademark Office just issued a memorandum setting out new procedures for discretionary denials of Inter Partes Reviews (IPRs) and Post-Grant Reviews (PGRs). The Acting...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

Latham & Watkins LLP on

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

Axinn, Veltrop & Harkrider LLP

Fintiv and the Resurgence of PTAB Discretionary Denials Involving the ITC

On March 24, 2025, the United States Patent and Tradmark Office (“USPTO”) issued a new Memorandum providing guidance on discretionary denials (or “Fintiv denials”) for inter partes review (“IPR”) challenges based on...more

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