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USPTO Issues Revised Patent Subject Matter Eligibility Guidance and Guidance for Examining Computer-Implemented Functional Claims...

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

Uncertainty on Estoppel of Claims Amended at the PTAB

Since the Leahy-Smith America Invents Act (AIA) was enacted in 2011, thousands of petitions have been filed to request institution of inter partes review (IPR) to challenge patents. Upon the issuance of a final written...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

Can an Industry Group Appeal an Unfavorable IPR Decision?

Patent owners, both those practicing their invention and nonpracticing entities (NPEs), often approach companies they believe are infringing their patent rights. The patent owners threaten lawsuits if the companies do not...more

Inside WilmerHale’s Approach to Matter Management for IP

Matter management has become increasingly important for law firms and the clients that they serve. For clients, effective matter management can result in lower fees, more accurate estimates of costs, and better results, as...more

The Use of Applicant Admitted Prior Art in IPR Petitions

Admissions made by the patentee, either in the patent specification or during the course of prosecution, identifying a particular work as ‘‘prior art’’ can be relied upon for both anticipation and obviousness determinations....more

The Prevailing Uncertainty of a Second Bite at the Apple at the PTAB Under § 325(d) in Multiple Proceeding Cases

After filing a first post-grant proceeding, whether an inter partes review, a covered business method proceeding or a post-grant review petition challenging certain claims of a patent, the same petitioner may decide to file a...more

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