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America Invents Act › United States Patent and Trademark Office › Patent Applications

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 -
McCarter & English, LLP

USPTO Discontinues Accelerated Examination for Utility Patent Applications, but Track 1 Remains a Good Option

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The USPTO recently announced that the Accelerated Examination program will be discontinued as of July 10, 2025. Given that the program has had limited use over the past decade, with fewer than 100 Accelerated Examination...more

McDermott Will & Emery

Take That Conception Out of the Oven – It’s CRISPR Even If the Cook Doesn’t Know

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Addressing the distinction between conception and reduction to practice and the requirement for written description in the unpredictable arts, the US Court of Appeals for the Federal Circuit explained that proof of conception...more

Morrison & Foerster LLP

Discretionary Denials—Act II

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On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Limits Reliance on Provisional Priority Date Under Section 102(e)(1)

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On March 24, the Federal Circuit held in In re Riggs that for a published non-provisional patent application to be prior art under pre-AIA 35 U.S.C. § 102(e)(1) based on an earlier provisional filing date, all citations to...more

Goodwin

The Court of Appeals for the Federal Circuit’s In Re Riggs Decision: 35 USC 102(e) Prior Art Requires Written Description Support...

Goodwin on

On March 24, 2025, the US Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision titled In Re: Riggs (the Riggs decision) that vacated a decision of the Patent Trial and Appeal Board (PTAB) of the US...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

Wilson Sonsini Goodrich & Rosati

2024 PTAB Year in Review

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Wilson Sonsini Goodrich & Rosati is pleased to present our 2024 PTAB Year in Review. We begin with a review of 2024 petition filings and outcomes at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and...more

Morgan Lewis

Federal Circuit Clarifies Secret Prior Art May Be Used in IPR Challenges

Morgan Lewis on

On January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd. clarified that inter partes review challenges may be “based upon published patent applications, and such published patent applications...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

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

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

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Sheppard Mullin Richter & Hampton LLP on

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

Foley & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

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For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

Morgan Lewis

Breaking Down the USPTO’s Not-So-Obvious Obviousness Guidelines

Morgan Lewis on

The US Patent and Trademark Office (USPTO) recently updated its guidance for patent examiners and applicants in determining obviousness under 35 USC § 103, based on the US Supreme Court’s ruling in KSR Int’l Co. v. Teleflex...more

WilmerHale

PTAB/USPTO Update - March 2024

WilmerHale on

On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more

Fenwick & West LLP

USPTO Doubles Down on Inapplicability of Dynamic Drinkware to AIA Cases in Precedential PTAB Decision

Fenwick & West LLP on

What You Need to Know The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating...more

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

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

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

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

Jones Day

Study Shows the Decline of Multiple Petitions for AIA Proceedings

Jones Day on

In an effort to shed light on the practice of filing multiple petitions under the America Invents Act (AIA) at the Patent Trial and Appeal Board (PTAB), the United States Patent and Trademark Office (USPTO) recently released...more

Goodwin

Proposed USPTO Fee Changes Will Make It Much More Expensive to Patent and to Challenge Patents on Therapeutics. You Have an...

Goodwin on

The United States Patent & Trademark Office (USPTO or PTO) recently announced proposed changes to certain fees it charges with respect to patent applications, design patents, and America Invents Act (AIA) trials. These...more

Foley & Lardner LLP

Significant New USPTO Fees Proposed for 2025

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The USPTO has commenced the fee-setting process for fee adjustments it expects to implement in January 2025. While many fee changes are modest (~5%), the USPTO proposes significant increases to design patent fees and PTAB...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

MoFo Tech

AI Trends For 2023 - AI Technology Leads Patent Filing Growth

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The prevalence and power of AI technologies are rapidly expanding, both at the captivating cutting-edge of creative AI models like the DALL-E image generator and the ChatGPT chatbot, and in the increasing pervasiveness of...more

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