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PTAB Update! USPTO Proposes New Rules and SOP4 on Internal Circulation and Review of PTAB Decisions

The USPTO published a Notice of Proposed Rulemaking (NPR) on Friday proposing new rules governing pre-issuance internal circulation and review of decisions within the PTAB. 88 Fed. Reg. 69578-69583 (Oct. 6, 2023). The Office...more

No Magic Words Required: Clarifying What Constitutes “Analogous Art” in PTAB Proceedings

PTAB petitioners frequently assert that claims are invalid as obvious over a combination of prior art references. A threshold requirement in any obviousness inquiry is whether the prior art constitutes analogous art. On...more

PTAB Issues 2nd Update to Trial Practice Guide—Access the Complete Trial Practice Guide, including all revisions to date, here!

Yesterday (July 15th), the PTAB published a second update to its Trial Practice Guide. This second update is twice as long as the August 2018 update and relies extensively on the many recently-designated precedential and...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

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