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Post-Grant Review Patents Corporate Counsel

Dickinson Wright

2025 Patent Filing Costs Rise: USPTO Fee Update and Response Strategies

Dickinson Wright on

In January 2025, the United States Patent and Trademark Office (USPTO) implemented a broad set of fee increases and structural adjustments intended to address rising operational costs and encourage more efficient patent...more

Fish & Richardson

Acting USPTO Director Stewart Issues First Decisions Under Interim Discretionary Denial Process

Fish & Richardson on

On Friday, May 16, the U.S. Patent and Trademark Office (USPTO) issued discretionary denial decisions in the first four matters considered under the USPTO’s new interim workload management process....more

Proskauer - The Patent Playbook

Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers

On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new...more

Jones Day

PTAB AIA FY2024 Roundup: Key Insights and Statistics

Jones Day on

The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable...more

Wolf, Greenfield & Sacks, P.C.

Sued: What In-House Counsel Without Litigation Experience Need to Know - Finding Your Outside Team

2: Finding Your Outside Team - This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit. The first...more

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

2023 PTAB Year in Review: Analysis & Trends

This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more

Morgan Lewis

USPTO Unleashes Wave of PTAB Rule Proposals

Morgan Lewis on

The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more

McDermott Will & Schulte

Clarification or Raising the Bar? PTO Director Issues New Guidance for Discretionary PTAB Denials

On June 21, 2022, US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a memorandum addressing interim procedures for discretionary denials in America Invents Act (AIA)-post grant proceedings at the Patent...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Morgan Lewis

2020 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Morgan Lewis on

As of 2020, post grant proceedings have been in use for eight years. Designed as an alternative to district court litigation post grant proceedings have offered litigants a faster and more cost effective forum for resolving...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Inadvertent Mistake in Analysis of Experimental Data that Substantially Impacts Proceeding Cannot be Corrected

The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced...more

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

2019 PTAB Year in Review: Analysis & Trends

Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review...more

Troutman Pepper Locke

Updated Procedures at the Patent Trial and Appeal Board

Troutman Pepper Locke on

July of 2019 has been an active month for the Patent Trial and Appeal Board (PTAB).  The PTAB issued a Trial Practice Guide Update that addresses: The July 2019 Update can be accessed on the PTAB website....more

Troutman Pepper Locke

Year In Review: Changes In PTAB Practice In 2018

Troutman Pepper Locke on

A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office. ...more

Fish & Richardson

PTAB Issues Only Its Third Post-Grant Review Decision to Date, Invalidates Storage Container Tracking Claims Directed to...

Fish & Richardson on

On August 2, 2016, the Patent Trial and Appeal Board (PTAB), in proceeding PGR2015-00009, invalidated a patent for storage container tracking and delivery as being directed to patent-ineligible subject matter under 35 U.S.C....more

BakerHostetler

Amended PTAB Rules to Take Effect on May 2, 2016

BakerHostetler on

On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will...more

Goodwin

New PTAB Trial Rules Will Apply to AIA Proceedings Effective May 2

Goodwin on

Early last year, the USPTO released a set of “quick fix” changes to AIA trial procedures before the Patent Trial and Appeal Board (PTAB). On August 20, 2015, the USPTO proposed a second set of rule changes that addressed more...more

Ballard Spahr LLP

Amended PTAB Rules Give Patent Owners a Boost

Ballard Spahr LLP on

The U.S. Patent and Trademark Office (USPTO) has unveiled a series of new rules that provide for significant changes to the procedures followed in Patent Trial and Appeal Board (PTAB) proceedings, including inter partes...more

Knobbe Martens

The USPTO Amends AIA Trial Rules: 4 Changes That You Need To Know

Knobbe Martens on

On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued amended final rules that govern trials under the America Invents Act (AIA), including inter partes review, post-grant review, covered business method...more

Mintz - Intellectual Property Viewpoints

USPTO “Forecloses” on Mortgage Processing Patent under Alice

Patent owners continue to face an uphill battle at the Patent Trial and Appeal Board. According to U.S. Patent Office statistics as of December 31, 2015, a majority (72%) of the 529 Inter Partes Reviews (IPR) proceeding to...more

K&L Gates LLP

Is Inter Partes Review Set for Supreme Court Review?

K&L Gates LLP on

In re Cuozzo Speed Tech., LLC presented the Federal Circuit with its first opportunity to address important, open questions about how the Patent Trial and Appeal Board (PTAB) handles its relatively new Inter Partes Review...more

Robins Kaplan LLP

Is The Deck Stacked Against Patent Owners In The PTAB?

Robins Kaplan LLP on

Two years after the creation of the America Invents Act post-grant proceedings, many patent owners are facing an uphill battle when attempting to defend their intellectual property before the Patent Trial and Appeal Board...more

BakerHostetler

Don’t Miss the Window for Post-Grant Review: Monitor Your Competitors by Creating Alert Systems

BakerHostetler on

The U.S. Patent and Trademark Office has new and popular procedures for challenging the validity of (in other words, killing) a competitor’s patent. The most powerful procedure, a Post-Grant Review (PGR), must be filed within...more

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