News & Analysis as of

Proposed Amendments Patents United States Patent and Trademark Office

BakerHostetler

Patent Legislation Watch: PTAB Reform Bill ‘PREVAIL[S]’ Out of Senate Judiciary Committee

BakerHostetler on

In a close 11-10 vote, a bipartisan majority of the U.S. Senate Judiciary Committee advanced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act out of committee....more

Goodwin

Proposed USPTO Fee Changes Will Make It Much More Expensive to Patent and to Challenge Patents on Therapeutics. You Have an...

Goodwin on

The United States Patent & Trademark Office (USPTO or PTO) recently announced proposed changes to certain fees it charges with respect to patent applications, design patents, and America Invents Act (AIA) trials. These...more

Fenwick & West LLP

Still No Shortage of Viewpoints as Eligibility Debate Moves to the Hill

Fenwick & West LLP on

Back in March, I reported on the breadth of comments the USPTO received in response to its new Guidance on patent subject matter eligibility. Now, Congress has taken up the issue with a proposed draft of a new bipartisan,...more

Latham & Watkins LLP

PTAB Update: New Motion to Amend Procedures Proposed

Latham & Watkins LLP on

The new procedures could be in place before the end of 2018 with far-reaching effects for both patent owners and petitioners. Key Points: ..The new procedures allow a patent owner to file a motion to amend six weeks...more

Fish & Richardson

USPTO Proposes New Amendment Procedure for America Invents Act

Fish & Richardson on

Director Iancu proposed a new amendment procedure on Thursday, October 25. The Director indicates that his proposed changes to the existing amendment practice were intended to avail patent owners of a more viable option for...more

Goodwin

USPTO Proposes Changes to Post-Grant Amendment Procedures

Goodwin on

The USPTO announced a proposal today to change the procedures for amending claims in post-grant proceedings. Even though the AIA specifically provides for claim amendments in IPRs, claim amendments have been rare in actual...more

Mintz - Intellectual Property Viewpoints

Patent-Agent Privilege and the USPTO’s Proposed New Rule

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue....more

WilmerHale

Identification of Cases in Comments to Proposed Rule Change Is Consistent With Prior Guidance in PTAB Practice Guide

WilmerHale on

Privity and real party-in-interest (RPI) issues have become important, sometimes case determinative, for petitioners filing post-grant challenges such as inter partes reviews and covered business method reviews. The U.S....more

McDermott Will & Emery

New PTAB Trial Rules Proposed

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered...more

Wilson Sonsini Goodrich & Rosati

USPTO Announces Second Round of AIA Rule Changes

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) announced another set of proposed changes to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the America Invents Act (AIA)....more

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

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

Morrison & Foerster LLP

U.S. Patent and Trademark Office Announces Proposed Changes to AIA Proceedings

On August 19, 2015, the United States Patent and Trademark Office (“Office”) presented proposed amendments to the rules governing trial practice for inter partes review, post-grant review, transitional post-grant review for...more

Dorsey & Whitney LLP

USPTO Issues Second Round of Proposed Changes to the Rules of Practice Before the Patent Trial and Appeal Board

Dorsey & Whitney LLP on

The America Invents Act (AIA) was enacted into law on September 16, 2011. A major provision of the AIA provided for a number of post grant proceedings to be heard by the rebranded Patent Trial and Appeal Board (PTAB). ...more

Kelley Drye & Warren LLP

Catching-Up On House Judiciary Committee’s Revised Innovation Act

Recently the House Judiciary Committee voted 24-8 to approve a revised version of the Innovation Act. As we previously discussed, the Innovation Act was re-introduced in the House earlier this year in the same form approved...more

Saul Ewing Arnstein & Lehr LLP

Patent Prosecution Updates

On April 14, 2015, the House of Representatives introduced a bill to amend the pre-filing grace period provisions of the America Invents Act (AIA). The bill, entitled "Grace Period Restoration Act of 2015" (H.R. 1791),...more

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