News & Analysis as of

United States Patent and Trademark Office › Administrative Appeals › Patent Trial and Appeal Board

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Morgan Lewis

USPTO Tightens Limits on AAPA Use in IPRs Following Qualcomm Precedent

Morgan Lewis on

A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “applicant admitted prior art (AAPA), expert...more

Fish & Richardson

What’s New in Director Review?

Fish & Richardson on

In July, the United States Patent and Trademark Office announced several changes to the interim process for Director review of Patent Trial and Appeal Board decisions. Originally established shortly after the Supreme Court’s...more

WilmerHale

PTAB/USPTO Update - November 2022

WilmerHale on

USPTO News - ..On October 19, 2022 the USPTO issued a report titled “Where are U.S. women patentees? Assessing three decades of growth” examining trends in women’s patenting in the U.S. from 1990-2019. ..Director...more

Knobbe Martens

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

Knobbe Martens on

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

Foley & Lardner LLP

PTAB Puts Method Of Treatment Patents Under The 101 Knife

Foley & Lardner LLP on

While the Supreme Court decisions in Myriad and Mayo have been applied to diagnostic-type claims, method of treatment patents were thought to be safe from the recent judicial expansion of the patent-(in)eligibility doctrine....more

McDermott Will & Schulte

PTO Initiates Post-Prosecution Pilot Program

McDermott Will & Schulte on

On July 11, 2016, the US Patent and Trademark Office (PTO) announced a new pilot program to enhance after final practice. The Post-Prosecution Pilot Program (P3) combines elements of the Pre-Appeal Request for Review and AFCP...more

Mintz - Intellectual Property Viewpoints

USPTO Implementation of AIA Does Not Violate Due Process: Federal Circuit Affirms the PTAB Panel Determining Institution of an IPR...

Mintz - Intellectual Property Viewpoints on

In Ethicon Endo-Surgery, Inc. v. Covidien LP, a 2-1 panel split of the Federal Circuit held that neither the American Invents Act (“AIA”) nor the Constitution precludes the same panel of the Patent Trial & Appeal Board...more

Mintz - Intellectual Property Viewpoints

Tips for Effectively Organizing PTAB Appeals Brief – Claim Grouping

Mintz - Intellectual Property Viewpoints on

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help...more

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