News & Analysis as of

America Invents Act › Patents › Administrative Procedure

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 -
Latham & Watkins LLP

USPTO Implements Interim Procedures Bifurcating Decisions to Institute AIA Trials

Latham & Watkins LLP on

On March 26, 2025, Acting Director of the United States Patent and Trademark Office (USPTO) Coke Morgan Stewart issued a memorandum (the Workload Memorandum) to all Administrative Patent Judges (APJs) of the Patent Trial and...more

Fish & Richardson

Final Motion to Amend Rules Now in Effect at the PTAB

Fish & Richardson on

On October 18, 2024, the United States Patent and Trademark Office’s (USPTO) final rules governing Motion to Amend practice and procedures before the Patent Trial and Appeal Board (PTAB) officially went into effect. ...more

Fish & Richardson

Recapping a Busy Summer for Director Review

Fish & Richardson on

United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

Fish & Richardson on

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

WilmerHale

PTAB/USPTO Update - August 2023

WilmerHale on

USPTO News - On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset....more

Jones Day

Legislation: Restoring the America Invents Act

Jones Day on

On Wednesday, September 29, 2021, Senators Patrick Leahy (D) and John Cornyn (R) introduced the Restoring the America Invents Act, a bill that would modify Patent Trial and Appeal Board (PTAB) procedures and facilitate...more

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

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

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

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an...more

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

PTAB Strategies and Insights - October 2019

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

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

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

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

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

PTAB Strategies and Insights - July 2019: Are the DMV Sloths From Zootopia Reflective of the Pace for Reissue Applications from...

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

The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more

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

PTAB Strategies and Insights - June 2019

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

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

USPTO Announces Sweeping Changes to Motion to Amend Procedures in AIA Trials via Pilot Program

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

On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more

Knobbe Martens

Patent Law Update for Medical Device Companies 2018 (Presentation)

Knobbe Martens on

Knobbe Martens Partners Paul Conover, Irfan Lateef, and Curtis Huffmire presented "Patent Law Update for Medical Device Companies 2018" at the MedTech Innovation Summit in San Francisco, CA on November 28, 2018. This session...more

Jones Day

USPTO’s Revised SOP Sheds Light on Selection of PTAB Panels

Jones Day on

The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases. The SOP, available here, provides guidance to Board administrative...more

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

USPTO Seeks Comment on Sweeping Changes to Motion to Amend Procedures in AIA Trials and Announces Likely Pilot Program

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

On October 26, 2018, the United States Patent and Trademark Office (USPTO) issued a Request for Comment on proposed changes to motion to amend practice in AIA trials. The Office states that its goal in proposing these changes...more

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

Global Patent Prosecution Newsletter - September 2018: Third Party Submissions in the U.S.: What You Need to Know

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

The America Invents Act provides an expanded process for a third party to submit prior art to the examiner concerning any U.S. patent application. The new process is aimed to encourage the public to submit relevant art as a...more

Knobbe Martens

Recent Update on Patent Trial Practice Guide

Knobbe Martens on

The United States Patent and Trademark Office (USPTO) published an update to the AIA Trial Practice Guide (‘‘Trial Practice Guide’’) in August 2018 to revise guidance on practices before the Patent Trial and Appeal Board...more

Foley & Lardner LLP

USPTO Offers Refund of Certain Non-Electronic Filing Fees Incurred During DSUEBSO

Foley & Lardner LLP on

One of the many concerns raised by the recent outage of the USPTO’s electronic filing system was the requirement to pay the surcharge due when a new U.S. application is not filed electronically. The surcharge is statutory...more

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

PTAB Strategies and Insights - June 2018: PTAB AIA Proceeding Deposition Strategy

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

Depositions are an important, yet sometimes overlooked, part of AIA proceedings, such as inter partes review (“IPR”) trial proceedings. It is important to understand that IPR depositions differ in significant ways – both in...more

Foley & Lardner LLP

SAS Institute: One Month In

Foley & Lardner LLP on

We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability...more

Foley & Lardner LLP

SAS Institute: Two Weeks In

Foley & Lardner LLP on

As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more

Knobbe Martens

USPTO Issues Guidance on Impact of SAS on AIA Trial Proceedings

Knobbe Martens on

On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings....more

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

Supreme Court Strikes Down PTAB Partial Institution Practice: If PTAB Institutes IPR, It Must Address All Challenged Claims in Any...

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

The Supreme Court has ruled by a narrow majority of 5-4 that the Patent Office’s regulation allowing for partial institution decisions in inter partes review is foreclosed by the text of 35 U.S.C. § 318(a). SAS Institute Inc....more

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

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

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

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more

Knobbe Martens

PTAB Issues New Remand Procedures

Knobbe Martens on

On November 16, 2017, the USPTO issued new procedures (“Standard Operating Procedure 9”) for governing cases remanded from the Federal Circuit. These procedures are applicable to all decisions remanded from the Federal...more

27 Results
 / 
View per page
Page: of 2
Next »

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up Log in
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide