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PTAB/USPTO Update - March 2025

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

Federal Circuit’s Decision Confirms That Published Patent Applications Are Prior Art In IPRs As Of Their Filing Date

On January 14, 2025, the Court of Appeals for the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 2023-2346 (Fed. Cir.), affirmed the Patent Trial and Appeal Board’s ruling that “a published patent...more

PTAB/USPTO Update - October 2024

On October 2, the USPTO terminated proceedings in approximately 3,100 patent applications due to the fraudulent entry of S-signatures of registered practitioners by others. The final order noted that improper use of a...more

PTAB/USPTO Update - May 2024

On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

USPTO’s Notice of Proposed Rulemaking for Discretionary Denial Briefing, Section 325(d), Instituting Parallel and Serial...

On April 19, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) that proposes rules regarding the exercise of discretion to determine whether to institute an Inter Partes...more

USPTO Issue Notice of Proposed Rulemaking for Rules Governing Director Review of Patent Trial and Appeal Board Decisions

On April 16, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions in America Invents Act (AIA)...more

PTAB/USPTO Update - April 2024

On March 8, the USPTO joined other intellectual property offices in celebrating International Women’s Day with a theme of “Invest in Women: Accelerate Progress.”...more

PTAB/USPTO Update - March 2024

On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more

PTAB/USPTO Update - September 2023

On August 31, 2023, the Patent Trial and Appeal Board published its updated Oral Hearing Guide. Changes reflected in the update include the addition of an all-virtual hearing option for AIA trials, updated information on how...more

PTAB/USPTO Update - August 2023

USPTO News - On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset....more

PTAB/USPTO Update - July 2023

On June 7, the USPTO released its 2022-2026 Strategic Plan. According to the USPTO, the new plan outlines the USPTO's mission-focused strategic goals, which are: (1) driving inclusive U.S. innovation and global...more

PTAB/USPTO Update - May 2023

On April 20, the USPTO announced an Advance Notice of Proposed Rulemaking (ANPRM) seeking public input regarding potential PTAB reforms, including proposed changes to discretionary institution practices, petition word limits,...more

PTAB/USPTO Update - October 2022

USPTO Leadership - ..This month, Director Kathi Vidal delivered official remarks at the International Copyright Institute and at the Global Forum on Intellectual Property. ..Director Vidal was appointed as a Federal...more

PTAB/USPTO Update - May 2022

USPTO Leadership - On April 13, Kathi Vidal was sworn in as the new Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). Director Vidal offered...more

PTAB/USPTO Update - April 2022

USPTO Leadership - Drew Hirshfeld is still performing the functions and duties of Director. President Biden nominated Kathi Vidal to be the next Director....more

PTAB/USPTO Update - October 2021

USPTO News - On September 9, 2021, Senators Patrick Leahy and Thom Tillis wrote a letter to Acting Director Andrew Hirshfeld requesting that the USPTO “take steps to reduce patent applicants’ making inappropriate...more

PTAB/USPTO Update - September 2021

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director. The Biden Administration has not made an announcement as to who will be nominated to become the next Director. ...more

USPTO/PTAB Update - February 2021

USPTO Director Andrei Iancu and Deputy Director Laura Peter resigned from their respective posts prior to inauguration day. Commissioner for Patents Drew Hirschfeld and Senior Counsel Coke Morgan Stewart are temporarily...more

Potential Changes to PTAB Practice on Multiple IPR Petitions

An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more

Current PTAB Guidance on Multiple IPR Petitions

In view of the increasing number of petitions for inter partes review filed before the Patent and Trial Appeal Board since its inception more than six years ago, the PTAB has increased its scrutiny of so-called “serial”...more

Key Takeaways from the First Updates to the AIA Trial Practice Guide

On August 13, the Patent Trials and Appeal Board (PTAB or Board) published updates to the AIA Trial Practice Guide (the TPG Update). The TPG Update is a supplement to the original Trial Practice Guide (TPG), which the PTAB...more

What District Courts Are Saying About Admissibility Of IPR

Six years after the America Invents Act created inter partes review proceedings, patent disputes increasingly involve parallel litigation, with at least one inter partes review proceeding in tandem with district court...more

Oil States v. Greene’s Energy: IPR Here to Stay, For Now

The U.S. Supreme Court on April 24 issued its decision in the closely watched patent case Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365 (2018). The case addressed a constitutional challenge to...more

Supreme Court Upholds IPRs but Strikes Down Partial PTAB Decisions in Two Important Patent Cases

The Supreme Court today decided two important cases involving patent rights and inter partes review at the US Patent and Trademark Office (PTO). Both cases affirm the importance of Post-Grant Proceedings as a part of an...more

Remands From the Federal Circuit Back to the Patent Trial and Appeal Board: Are They a “Redo” or Something More Limited?

The Court of Appeals for the Federal Circuit (Federal Circuit), the reviewing court for the decisions issued by the Patent Trial and Appeal Board (Board), has handled over 1,000 appeals from the Board on patent trials...more

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