News & Analysis as of

Regulatory Agenda Inter Partes Review (IPR) Proceeding

WilmerHale

PTAB/USPTO Update - March 2025

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On February 24, 2025 the United States Patent and Trademark Office (USPTO) announced that David Gooder would step down from his role as Commissioner for Trademarks at the end of the month....more

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

Director Review Codified as Director Vidal Steps Down—What is this Power and How Did Vidal Wield It?

With U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s return to private practice in December 2024 and the future permanent Director yet to be tapped for nomination, it is a good time to reflect on one of the...more

Erise IP

Eye on IPRs: January 2025: USPTO Fee Increases; Patent Challengers Can't Dismiss Fed. Cir. Appeal After Decision

Erise IP on

Effective January 19, 2025, the USPTO is increasing various patent filing fees, including an across-the-board fee increase as well as specific increases for America Invents Act trials, Director Review, and other procedures....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

Jones Day

USPTO Issues Notice of Proposed Rulemaking On Discretionary Denial, Serial and Parallel Petitions, and Settlement

Jones Day on

On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder feedback responsive to the...more

Knobbe Martens

PREVAIL Act Proposes Significant Changes PTAB Proceedings

Knobbe Martens on

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

Jones Day

USPTO Requests Comments Regarding Motion to Amend Pilot

Jones Day on

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

Proskauer - The Patent Playbook

Calls for USPTO to Adopt Policies to Modulate Drug Pricing

In the wake of the nomination of Kathi Vidal as Director of the USPTO, there will be significant attention paid to the agency’s responses to calls from both the executive and legislative branches to remake the agency’s...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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