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The PTAB’s Discretionary Denial Crackdown: Strategy, Stats, and Survival Tips

Back in March, I wrote about Acting Director Coke Morgan Stewart’s overhaul of the pre-institution discretionary denial process. Since then, much has been written on the topic and, for better or worse, the dust has started to...more

A Distillation of the USPTO’s Notice of Proposed Rulemaking: “Changes under Consideration to Discretionary Institution Practices,...

On April 20, 2023, the USPTO announced Advance Notice of Proposed Rulemaking for potential PTAB reforms. The goal of the Notice was to seek public input regarding proposed changes to discretionary institution practices,...more

UPDATE: IPR/PGR Update: Uptick in Motion to Amend Grant Rate One-Year Post-Aqua Products and new Pilot Program are Promising Signs...

In October of 2017, the Federal Circuit issued an en banc decision in Aqua Products Inc. v. Matal, holding that patent owners no longer bear the burden of proving patentability of their amended claims. Instead, the burden...more

USPTO Issues Guidance on Options to Amend through Reissue and Reexamination during AIA Trials

On October 29, 2018, the US Patent & Trademark Office (USPTO or Office) issued a Notice requesting comments on proposed modifications to motion to amend (MTA) practice. The Office received a number of comments and questions...more

New Pilot Program: Motion-to-Amend Practice in PTAB Proceedings Gives Patent Owners New Options

The US Patent and Trademark Office (USPTO) implemented a new pilot program on March 15, 2019 concerning motion-to-amend practice in America Invents Act (AIA) trials, including post-grant review (PGR), inter partes review...more

PTAB Issues Three New Precedential Opinions

The Patent Trial and Appeal Board (PTAB) has been busy, designating three decisions as precedential on Monday after designating two decisions as precedential earlier this month. Two of the decisions involve the substantive...more

Supreme Court Holds AIA Did Not Eliminate Secret Prior Art

In a widely-anticipated decision, the U.S. Supreme Court held yesterday that the America Invents Act (AIA) did not change the scope of the on-sale bar to patentability. The unanimous decision, authored by Justice Thomas, held...more

5 KEY TAKEAWAYS: Helsinn v. Teva: The Status of Secret Prior Art and the On-Sale Bar

Kilpatrick Townsend attorneys Justin Krieger and Nicki Kennedy recently spoke at the Kilpatrick Townsend Intellectual Property Seminars on the topic of “Helsinn v. Teva: The Status of Secret Prior Art and the On-Sale...more

Final Rules: PTAB Adopts Phillips Standard for AIA Trials

Earlier today, the United States Patent & Trademark Office published its final rule package changing the claim construction standard used in AIA trials, replacing the broadest reasonable interpretation (“BRI”) claim...more

Supreme Court to Review AIA On-Sale Bar

Yesterday, the U.S. Supreme Court accepted Helsinn Healthcare S.A.’s certiorari petition to consider whether, under the America Invents Act (AIA), an inventor’s sale of an invention to a third party that is obligated to keep...more

4 KEY TAKEAWAYS: “Patents: Developing Issues in Post Grant Patent Challenges”

Kilpatrick Townsend partner Justin Krieger recently spoke at the North Carolina Bar Association’s “2018 Intellectual Property Law Section Annual Meeting and Litigation Section Joint CLE” in Raleigh, North Carolina. Mr....more

PTAB Proposes Adopting Narrower Phillips Claim Construction Standard

Consistent with Director Iancu’s goal of providing greater predictability and certainty in the US patent system, the US Patent and Trademark Office (USPTO) on Tuesday proposed a new rule to change the standard for claim...more

Federal Circuit Clarifies AIA On-Sale Bar

Helsinn v. Teva (Fed. Cir. 2017) - On May 1, 2017, a Federal Circuit panel ruled that the AIA did not change the statutory meaning of “on sale” and that the on-sale bar can be triggered by a sale whose existence is...more

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