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AI Takeover: PTO Issues More Patent Eligibility Guidance for AI Inventions

The US Patent & Trademark Office (PTO) issued a 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, which focuses on subject matter eligibility for artificial intelligence...more

PTO Asks Whether Legislative Action for Experimental Use Exception Is Warranted

The US Patent & Trademark Office (PTO) issued a request for comments concerning the public’s views on the common law experimental use exception and whether Congress should enact a statutory experimental use exception. 89 Fed....more

PTO Finalizes Rules Promoting Independence in PTAB Decision-Making

The US Patent & Trademark Office (PTO) announced a final rule concerning pre-issuance internal circulation and review of decisions within the Patent Trial & Appeal Board. The new rules are designed to bolster the independence...more

PTO Reopens Comment Period for AI Inventorship Guidance

The US Patent & Trademark Office (PTO) reopened and extended until June 20, 2024, the period for public comment on the guidance regarding inventorship in applications involving artificial intelligence (AI) assisted...more

Patent Thicket Avoidance: PTO Proposes Changes to Terminal Disclaimer Practice

On May 10, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking (Notice) concerning major changes to the terminal disclaimer (TD) practice, which may lead to a sea change in patent prosecution...more

Clean Up on Aisle PTAB: Clarification of Discretionary Denial Practice

The US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking (NPRM) for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial & Appeal Board, seeking to codify existing...more

New Guidance Addresses Use of AI Systems, Tools in Practice Before the PTO

The US Patent & Trademark Office (PTO) issued new guidance on the use of artificial intelligence (AI) tools in practice before the PTO. The new guidance is designed to promote responsible use of AI tools and provide...more

PTO Proposes Trademark Application Filing Changes, Fee Adjustments

On March 26, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register concerning changes to trademark application filings and fee adjustments in trademark cases for 2025. The...more

PTO to Patent Examiners: Make Interpretation of Means-Plus-Function Claims Clear in the Record

On March 18, 2024, the US Patent & Trademark Office (PTO) issued a memorandum to patent examiners addressing means-plus-function and step-plus-function claim limitations and how to clearly articulate, in the prosecution...more

PTO Seeks Permanent Rules Regarding Motion to Amend Practice Before Board

On March 4, 2024, the US Patent & Trademark Office published a Notice of Proposed Rulemaking seeking to revise its Motion to Amend (MTA) pilot program practice in connection with certain America Invents Act (AIA) proceedings....more

New PTO Guidance: Use KSR Flexible Approach to Obviousness

On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for...more

Not Admitted to PTO Bar? No Problem.

On February 21, 2024, the US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking that would give parties the option to designate a non-registered practitioner as lead counsel in proceedings before the...more

PTO Issues Guidance, Request for Comment on AI Inventorship

On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions....more

PTO Provides Guidance for Computer-Related Design Patent Applications

The US Patent & Trademark Office (PTO) published a notice regarding supplemental guidance for PTO personnel examining design patent claims containing computer-generated images. 88 Fed. Reg. 80277 (Nov. 17, 2023)....more

PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor

On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC. The resulting sanctions order canceled five Longhorn patents. The...more

PTO Proposes Rules Promoting Independence in Board Decision-Making

Seeking to bolster the independence of administrative patent judge (APJ) panels when issuing decisions and increase transparency regarding Patent Trial & Appeal Board processes, the US Patent & Trademark Office (PTO) issued a...more

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