News & Analysis as of

USPTO Pilot Program Patent Litigation Patent Trial and Appeal Board

Fenwick & West LLP

USPTO Issues New Rules Governing MTA Practice and Procedures at PTAB

Fenwick & West LLP on

The United States Patent and Trademark Office (USPTO) has announced new rules governing amendment practice in trial proceedings under the America Invents Act (AIA), making certain provisions of the motion to amend pilot...more

Womble Bond Dickinson

USPTO Seeks to Cement PTAB Motion to Amend Pilot Program

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act (AIA). Specifically, the USPTO is proposing...more

Fish & Richardson

USPTO Proposes Rules Updating Motion to Amend Practice Before the PTAB

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more

McDermott Will & Emery

Amending a Range? Better Enable It

McDermott Will & Emery on

In a post-grant review appeal, the US Court of Appeals for the Federal Circuit explained that patent claims reciting a range must enable the full scope of that range and, under the Administrative Procedure Act (APA), the...more

Haug Partners LLP

Preliminary Means Preliminary: Federal Circuit Emphasizes the Non-binding Nature of the PTAB’s Preliminary Guidance Under the...

Haug Partners LLP on

In Medytox, Inc. v. Galderma S.A, the Federal Circuit affirmed a Final Written Decision of the Patent Trial and Appeal Board (“Board”) that found Medytox’s proposed substitute claims invalid and denied Medytox’s motion to...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2023

Medytox, Inc. v. Galderma S.A., Appeal No. 2022-1165 (Fed. Cir. June 27, 2023) In this week’s Case of the Week, the Federal Circuit upheld an application by the Patent Trial and Appeal Board of its Pilot Program...more

Morgan Lewis

Early Results of USPTO’s New Climate Change Mitigation Pilot Program

Morgan Lewis on

The United States Patent and Trademark Office launched the Climate Change Mitigation Pilot Program last year to incentivize the filing of patent applications that cover technologies directed to climate change mitigation. With...more

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

USPTO Extends Motion to Amend Pilot Program

On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB) for a second time—now set to...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO News Briefs - October 2022

In a Patent Alert email distributed to stakeholders last month, the U.S. Patent and Trademark Office announced the replacement of four legacy search tools -- the Public-Examiner's Automated Search Tool (PubEAST),...more

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

2021 PTAB Year in Review: Analysis & Trends: A Niche Within a Niche: The PTAB’s Evolving Motion to Amend Practice

On March 15, 2019, the United States Patent and Trademark Office (USPTO) introduced a new Motion to Amend (MTA) Pilot Program. The Pilot Program gave patent owners an option to (1) receive Preliminary Guidance on the merits...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Kilpatrick

Five Impactful USPTO Procedural Developments for Patent Practitioners

Kilpatrick on

As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more

Mintz - Intellectual Property Viewpoints

Favorable Trends For Patent Owners Post-Aqua Products

When former President Barack Obama signed the Leahy–Smith America Invents Act into law on Sept. 16, 2011, the patent system in the United States underwent one of its most sweeping and significant overhauls. The AIA replaced...more

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

PTAB Strategies and Insights - March 2019

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

Latham & Watkins LLP

PTAB Update: Patent Office Issues Final Pilot Program for Motions to Amend

Latham & Watkins LLP on

Patent owners seeking amendments in PTAB proceedings will have two new options: asking for preliminary feedback, and revising their motions to amend. Key Points: ..The Final Pilot Program adds options to the amendment...more

McCarter & English, LLP

New Rules for Patent Office Litigation: Will They Make Patent Owners Happy?

On April 1, the U.S. Patent and Trademark Office (USPTO) published new rules for the increasingly popular America Invents Act (AIA) proceedings, such as inter partes reviews, covered business method reviews, and post-grant...more

Foley & Lardner LLP

USPTO Releases New Rules For AIA Post-Grant Proceedings

Foley & Lardner LLP on

On March 31, 2016, the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings” to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Stories of 2015: #16 to #20

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...more

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