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

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 -
Baker Botts L.L.P.

Ex Parte Reexaminations Poised to Make a Quiet Comeback: Discretionary Denial Guidance for Inter Partes Reexamination May Increase...

Baker Botts L.L.P. on

Imagine this. You were just served with a Complaint for patent infringement and learn that, some years ago, your competitor was granted a patent giving them a legal monopoly to exclude others, including you, from making,...more

A&O Shearman

Non-Application Of Interference Estoppel By PTAB In An IPR Institution Decision Found To Be Unreviewable

A&O Shearman on

On July 22, 2025, the Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board’s (the “PTAB”) decision not to apply interference estoppel and, therefore, to institute an inter partes review...more

Fish & Richardson

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

Fish & Richardson on

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

McDermott Will & Emery

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

McDermott Will & Emery on

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

Baker Botts L.L.P.

Impact of New USPTO Interim Procedures on Discretionary Denial of AIA Proceedings

Baker Botts L.L.P. on

Key Takeaway: The USPTO has reinstated earlier discretionary denial standards (including Fintiv) and introduced a new two-phase review process, which is expected to lead to more frequent denials of IPR petitions. Both patent...more

Fish & Richardson

PTAB Issues FAQs on Interim Process for Workload Management

Fish & Richardson on

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

Fitch, Even, Tabin & Flannery LLP

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

Fitch, Even, Tabin & Flannery LLP on

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

Venable LLP

Recent Developments on Discretionary Denials of Post-Grant Proceedings

Venable LLP on

On March 26, 2025, the acting USPTO director, Coke Morgan Stewart, published a Memorandum addressed to all judges for the Patent Trial and Appeals Board (PTAB), in which Acting Director Stewart detailed an interim bifurcated...more

Womble Bond Dickinson

USPTO Implements Bifurcated Review Process for PTAB Petitions Under New Policy

Womble Bond Dickinson on

USPTO Acting Director Coke Morgan Stewart announced that she will personally decide whether to deny each petition challenging a patent on discretionary grounds before the Patent Trial and Appeal Board evaluates the merits....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Riggs

Schwabe, Williamson & Wyatt PC on

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

Fish & Richardson

What to Know About the PTAB’s Discretionary Denial Shakeups

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The United States Patent and Trademark Office (USPTO) has recently made several significant changes that are reshaping discretionary denials at the Patent Trial and Appeal Board (PTAB). ...more

Holland & Knight LLP

New Guidance Regarding Fintiv Discretionary Denial at the PTAB

Holland & Knight LLP on

Two recent memoranda from the Patent Trial and Appeal Board (PTAB or Board) have sought to clarify the factors by which boards will evaluate discretionary denial under Fintiv. This guidance follows the U.S. Patent and...more

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

Latest PTAB Memo Bifurcates Pre-Institution Briefing; Creates New Separate Briefing on Discretionary Considerations

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

On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs. Under the Interim Process,...more

Holland & Knight LLP

Rescission of the Fintiv Guidance Memorandum, and What Comes Next

Holland & Knight LLP on

The U.S. Patent and Trade Office (PTO) on February 28, 2025, rescinded former PTO Director Kathi Vidal's June 21, 2022, memorandum (Memorandum) addressing discretionary denial of inter partes review (IPR) of patents that are...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

Rothwell, Figg, Ernst & Manbeck, P.C.

USPTO Withdraws June 2022 Guidance on Fintiv Denials

Rothwell, Figg, Ernst & Manbeck, P.C. on

On Friday, February 28, 2025, the United States Patent and Trademark Office (USPTO) announced the withdrawal of the June 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with...more

WilmerHale

PTAB/USPTO Update - March 2025

WilmerHale on

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

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

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

Fish & Richardson

USPTO Rescinds 2022 Guidance on Discretionary Denials

Fish & Richardson on

On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...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.

PTAB Year in Review – USPTO Rulemaking in 2024 Related to PTAB Practice and Procedures

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

The final year of Director Vidal’s tenure as the Director of the U.S. Patent and Trademark Office was a busy year for rulemaking at the Office. Since late 2023, five Notices of Proposed Rulemaking (NPRMs) directly related to...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

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

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