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America Invents Act › Intellectual Property Protection

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
Jones Day

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

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The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Riggs

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In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025) Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to...more

Kilpatrick

PTAB: A Provisional Application Must Provide Written Description Support for Relied Upon

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In a decision issued today, the Federal Circuit addressed the issue of whether an Examiner can rely on the filing date of a provisional application under pre-AIA 102(e) to support a rejection based on a later-filed and...more

Ward and Smith, P.A.

First-to-File: A Game-Changer in US Patent Law

Ward and Smith, P.A. on

The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Antedating Prior Art in Reissue and Reexamination: Part 1

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

Takeaways - - Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination. - “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to...more

WilmerHale

PTAB/USPTO Update - March 2025

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On February 24, 2025 the United States Patent and Trademark Office (USPTO) announced that David Gooder would step down from his role as Commissioner for Trademarks at the end of the month....more

BakerHostetler

The Return of ‘Fintiv’? Discretionary Denials of AIA Post-Grant Petitions Are Back on the Menu

BakerHostetler on

In one of the first acts by the United States Patent and Trademark Office (USPTO) in the new administration, the USPTO – via an email sent February 28 – rescinded former USPTO Director Kathi Vidal’s 2022 memorandum titled...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Rescinds Memo Addressing PTAB Discretionary Denial Procedures

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On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...more

Jones Day

PTAB Rescinds Discretionary Denial Memorandum

Jones Day on

On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.”  That memorandum discussed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

WilmerHale

Federal Circuit’s Decision Confirms That Published Patent Applications Are Prior Art In IPRs As Of Their Filing Date

WilmerHale on

On January 14, 2025, the Court of Appeals for the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 2023-2346 (Fed. Cir.), affirmed the Patent Trial and Appeal Board’s ruling that “a published patent...more

Bond Schoeneck & King PLLC

Fee Changes for Patent Matters

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The United States Patent and Trademark Office (USPTO) has announced changes to patent fees, which will take effect on Jan 19, 2025. Most current fees are subject to a 7.5% across-the-board increase while other fees are...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Refuses to Ignore Reference Where Patent Owner Fails to Overcome Prima Facie Evidence of ‘Different Inventive Entity’

Akin Gump Strauss Hauer & Feld LLP on

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more

Jones Day

USPTO Finalizes Partial Permanence of MTA Pilot Program

Jones Day on

On October 18, 2024, the USPTO’s final rule regarding Motion to Amend (“MTA”) practice and procedures in trial proceedings under the America Invents Act became effective. The rule makes permanent several MTA pilot program...more

DLA Piper

USPTO Issues Final Rule Regarding Process for Director Review

DLA Piper on

US Patent and Trademark Office (USPTO) Director Kathi Vidal recently issued a new final rule establishing the process for Director Review of some Patent Trial and Appeal Board (PTAB) decisions. This final rule, effective...more

Morgan Lewis

USPTO Implements PTAB Director Review Rules

Morgan Lewis on

The US Patent and Trademark Office (USPTO) implemented 37 CFR § 42.75 on October 31, 2024, establishing a formal framework for Director Review of Patent Trial and Appeal Board (PTAB) proceedings. During her tenure, Director...more

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more

Jones Day

PTAB Rule Permits Solo Representation and Automatic Pro Hac Vice Admission

Jones Day on

On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice attorneys. Full text of the final rule...more

Jones Day

PTO Codifies Scope of Director Review in Final Rule

Jones Day on

On September 30, 2024, the USPTO issued a final rule governing the process for Director Review of proceedings under the AIA. This formalized the USPTO’s interim Director Review procedures implemented by the USPTO following...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: USPTO Maintains Patent Bar Requirement to Serve as Lead PTAB Counsel

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

The U.S. Patent & Trademark Office (USPTO) published a final rule on October 10, 2024, that reaffirms that only members of the patent bar may serve as lead counsel in AIA proceedings before the Patent Trial and Appeal Board...more

McGuireWoods LLP

Four Key Takeaways From PTAB’s New Director Review Rules

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On Oct. 1, 2024, the U.S. Patent and Trademark Office (USPTO) issued a final rule governing Director Review of Patent Trial and Appeal Board (PTAB) decisions in contested proceedings brought under the America Invents Act...more

Pillsbury Winthrop Shaw Pittman LLP

Is the Federal Circuit Breathing Life Back Into False Patent Marking Claims?

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The Federal Circuit determined that if a company misleads consumers about the nature of a product by making false patent marking claims, it can be held liable under the Lanham Act. False marking claims under the Lanham Act...more

Baker Botts L.L.P.

Intellectual Property Report - October 2024

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In 2023, global investments in energy transition projects surged to approximately $1.7 trillion. This unprecedented investment level underscores the transformative shift toward cleaner energy sources and technologies....more

Sheppard Mullin Richter & Hampton LLP

Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

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Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

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Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

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