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The PREVAIL Act Is Back. Will It Prevail This Time?

On May 1, 2025, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. The...more

PTAB Issues FAQs on Interim Process for Workload Management

Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

USPTO Issues Advance Notice of Proposed Rulemaking for PTAB Proceedings

On April 21, the United States Patent and Trademark Office issued advance notice of proposed rulemaking concerning changes to America Invents Act proceedings before the Patent Trial and Appeal Board. Most of the changes under...more

2022 Post-Grant Annual Report

2022 was a milestone year for the Patent Trial and Appeal Board. In April, Kathi Vidal began her tenure as Director of the United States Patent and Trademark Office with an early focus on promoting increased efficiency at the...more

Legal Alert: USPTO Requests Comments on Discretion to Institute Trials Before the PTAB

The USPTO announced in the Federal Register that it is seeking comments on considerations for instituting trials under the America Invents Act (AIA). Specifically, the USPTO is considering the codification of its current...more

2019 Post-Grant Report

The Patent Trial and Appeal Board (PTAB) remains the forum of choice for challenging the validity of patent claims. However, it is notable that a comparison of 2019 and 2018 statistics reveals about a 30 percent decline in...more

One Year after Oil States, Constitutional Questions Remain

In April 2018, the Supreme Court issued Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, and SAS Institute v. Iancu, 138 S. Ct. 1348, a highly anticipated pair of decisions concerning post-grant...more

Fish & Richardson’s Post-Grant Report 2016

2016 marked the fourth anniversary of the America Invents Act (AIA). The Patent Trial and Appeal Board (PTAB) was once again the forum of choice for challenging patentability of claims, surpassing the Eastern District of...more

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