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
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 Leadership -
..Drew Hirshfeld is still performing the functions and duties of Director. No announcement from the Biden Administration as to who will be nominated to become the next Director.
IP Toolkit -...more
USPTO News -
USPTO announced a new category for its Patents for Humanity Program for inventors of technology to track, prevent, diagnose, or treat COVID-19....more
5/14/2021
/ Biden Administration ,
Coronavirus/COVID-19 ,
Fast Track Process ,
Infectious Diseases ,
Intellectual Property Protection ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Modernization Act (TMA) ,
Trademarks ,
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
USPTO News -
..Administrative Patent Judges Michael Cygan and Kristi L. R. Sawert, and Patent Attorney Thomas Volper discussed the one-year ex parte appeal, Fast-Track Appeals Pilot Program, and what happens after PTAB...more
3/2/2021
/ Administrative Law Judge (ALJ) ,
Appeals ,
Coronavirus/COVID-19 ,
Counterfeiting ,
Fast Track Process ,
Japan Patent Office ,
Korea ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Trademark Modernization Act (TMA) ,
Trademarks ,
USPTO
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
2/2/2021
/ Administrative Resignation ,
America Invents Act ,
E-Commerce ,
Filing Fees ,
Information Reports ,
International Trade Commission (ITC) ,
New Guidance ,
Patent Trial and Appeal Board ,
Patents ,
Public Comment ,
Trademark Infringement ,
Trademarks ,
USPTO
USPTO News -
..David Berdan has been appointed USPTO’s General Counsel. As General Counsel, Mr. Berdan will serve as the principal legal advisor to the Director. He will also supervise the Office of General Counsel and...more
USPTO News -
..USPTO releases report on artificial intelligence and intellectual property policy.
..Mary Critharis has been appointed the USPTO’s Acting Chief Policy Officer and Director for International Affairs. Ms....more
11/3/2020
/ Continuing Legal Education ,
Domain Name Registration ,
Final Rules ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Rules ,
Trademark Examination Guide ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO ,
World Intellectual Property Organisation
USPTO News -
..USPTO launches National Council for Expanding American Innovation (NCEAI)
..The PTAB has added an online form to the USPTO website that allows any member of the public to nominate any PTAB decision for...more
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
The USPTO has issued updated guidance for examiners and administrative patent judges (APJs) relating to subject matter eligibility under 35 U.S.C. 101 and examining computer-implemented functional claim limitations under 35...more
1/11/2019
/ Abstract Ideas ,
Administrative Patent Judges ,
Alice Corporation ,
Claim Construction ,
Computer-Related Inventions ,
Guidance Update ,
Mayo v. Prometheus ,
Means-Plus-Function ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
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
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
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
4/25/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
This has been a year in which automotive technology and the legal issues surrounding it have come increasingly to the forefront, both in legal circles and public perception. Given the many new entrants in the autonomous...more
12/26/2017
/ Automotive Industry ,
Connected Cars ,
Department of Transportation (DOT) ,
Design Patent ,
DRIVE Act ,
Driverless Cars ,
Motor Vehicles ,
NHTSA ,
Patents ,
Technology Sector ,
USPTO
In the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Aqua Products, a deeply fractured court provides a glimpse into the perspectives that some of the judges have on post-grant practice at the...more
11/21/2017
/ Appeals ,
Burden of Persuasion ,
Burden of Production ,
Burden of Proof ,
Chevron Deference ,
Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Remand ,
USPTO
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
When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more
4/18/2016
/ America Invents Act ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Litigation Strategies ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Printed Publications ,
Prior Art ,
USPTO ,
Young Lawyers
The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed...more
4/8/2016
/ Additional Discovery ,
Claim Construction ,
Duty of Candor ,
Expert Testimony ,
Final Rules ,
Motion to Amend ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Real Party in Interest ,
USPTO
With the implementation of the America Invents Act of 2011, inter partes review proceedings at the Patent Trial and Appeal Board have become a popular way to challenge the validity of a patent. The types of information which...more
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
The America Invents Act (AIA) was enacted into law on Sept. 16, 2011, and the U.S. Patent and Trademark Office implemented rules for governing the inter partes review, post-grant review, transitional program for covered...more
9/1/2015
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Comment Period ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patents ,
Post-Grant Review ,
Proposed Regulation ,
Real Party in Interest ,
USPTO