On May 27, the USPTO announced the completion of a critical upgrade to the agency’s core financial system, Momentum, to streamline maintenance of the fee payment systems as well as several internal functions....more
In its recent decision in Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit affirmed the district court’s decision to allow Ingenico to introduce certain prior art at trial, finding that inter partes review (IPR) estoppel...more
Welcome to Wilmer Hale's PTAB/USPTO Update for May 2025....more
On March 10, John Squires was officially nominated to be Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office....more
4/8/2025
/ Administrative Appointments ,
Director of the USPTO ,
Inter Partes Review (IPR) Proceeding ,
New Legislation ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patents ,
Portal ,
Post-Grant Review ,
Precedential Opinion ,
Presidential Nominations ,
Proposed Legislation ,
USPTO
On March 26, 2025, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office Coke Morgan Stewart issued a memorandum that makes several significant...more
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
3/4/2025
/ America Invents Act ,
Apple ,
Cybersecurity ,
Data Protection ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Multi-Factor Authentication ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Policy Memorandums ,
Portal ,
Regulatory Agenda ,
Trademark Registration ,
Trademarks ,
USPTO
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
1/20/2025
/ America Invents Act ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Samsung ,
USPTO
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
5/7/2024
/ Administrative Review ,
America Invents Act ,
Artificial Intelligence ,
Comment Period ,
Directors ,
Fees ,
Final Rules ,
Inter Partes Review (IPR) Proceeding ,
NPRM ,
Patent Litigation ,
Patent Term Extensions ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Proposed Rules ,
Request for Continued Examination ,
USPTO
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
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
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
3/5/2024
/ America Invents Act ,
Artificial Intelligence ,
Guidance Update ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Motion to Amend ,
Obviousness ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Rules ,
USPTO
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
On March 6, the USPTO announced a new Green Energy Category of its Patents for Humanity Program. Patents for Humanity is an awards competition that recognizes innovators who use technology to meet global humanitarian...more
4/4/2023
/ Congressional Committees ,
Expedited Actions Process ,
Filing Fees ,
Final Rules ,
Humanitarian Assistance ,
Incentive Awards ,
Innovation ,
Inter Partes Review (IPR) Proceeding ,
Interim Rule ,
Patent Examinations ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
PTAB Precedential Opinion Panel (POP) ,
USPTO
The USPTO published Revision 07.2022 of the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). A change summary is available here....more
3/7/2023
/ Administrative Law Judge (ALJ) ,
Comment Period ,
Congressional Committees ,
Final Rules ,
Google ,
Inter Partes Review (IPR) Proceeding ,
Mylan Pharmaceuticals ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Roku ,
Samsung ,
USAA ,
USPTO ,
Xerox
USPTO News -
..On October 19, 2022 the USPTO issued a report titled “Where are U.S. women patentees? Assessing three decades of growth” examining trends in women’s patenting in the U.S. from 1990-2019.
..Director...more
11/2/2022
/ Administrative Appeals ,
Comment Period ,
Final Rules ,
Food and Drug Administration (FDA) ,
Inter Partes Review (IPR) Proceeding ,
Patent Examinations ,
Patent Trial and Appeal Board ,
Patents ,
PTAB Precedential Opinion Panel (POP) ,
Public Comment ,
Standard Essential Patents ,
USPTO ,
USPTO Pilot Program
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
9/9/2021
/ Administrative Procedure Act ,
America Invents Act ,
Biologics ,
Claim Construction ,
Fraud ,
Inter Partes Review (IPR) Proceeding ,
Orange Book ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Preliminary Injunctions ,
Trademarks ,
USPTO
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
8/18/2021
/ Administrative Patent Judges ,
Administrative Procedure ,
Final Rules ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
PTAB Precedential Opinion Panel (POP) ,
Trademark Manual of Examining Procedure (TMEP) ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States v Arthrex Inc ,
USPTO
Notices, Guidance and Requests -
..Administrative Updates to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases, 86 Fed. Reg. 54 (March 23, 2021) [Written...more
On December 20, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued its decision in IPR2018-01039, addressing “What is required for a petitioner to establish that an asserted...more
1/13/2020
/ Administrative Appeals ,
Final Written Decisions ,
Hulu ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Pleading Standards ,
Precedential Opinion ,
Preponderance of the Evidence ,
Printed Publications ,
Prior Art ,
PTAB Precedential Opinion Panel (POP) ,
Totality of Evidence
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
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
On February 7, 2019, in Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Company, the Federal Circuit dismissed an appeal brought by a petitioner in an inter partes review (IPR) for lack of standing and mootness because...more
2/13/2019
/ Article III ,
Biosimilars ,
Bristol-Myers Squibb ,
Inter Partes Review (IPR) Proceeding ,
Momenta ,
Mootness ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Standing
On October 3, the Office of Information and Regulatory Affairs (OIRA) completed its review of the US Patent and Trademark Office’s (USPTO) proposed new rule regarding changing the claim construction standard applied in...more
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
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