News & Analysis as of

United States Patent and Trademark Office › America Invents Act › Denial of Institution

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 -
McCarter & English, LLP

Navigating the Landscape of Patent Challenges at the USPTO

McCarter & English, LLP on

Challengers striving to beat higher-ranked opponents at the US Open tennis tournament happening now in New York are not the only challengers facing tricky new situations. Parties wishing to challenge the validity of US...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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

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

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Herbert Smith Freehills Kramer

United States Calls for Supreme Court to Deny Petition for Certiorari Challenging Fintiv Factors

Herbert Smith Freehills Kramer on

On Oct. 28, 2021, the Solicitor General filed a brief in opposition to Apple’s petition for a writ of certiorari in Apple Inc. v. Optis Cellular Tech., LLC et al. (No. 21-118). The government argued that the Federal Circuit...more

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

PTAB Strategies and Insights - March 2021: Is The Sliver of Light a Door Opening or Closing?

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

From the beginning of AIA proceedings, Petitioners that have lost at institution decision phase have tried using Mandamus to circumvent the statutory lack of appeal from institution decisions. Mylan Laboratories Ltd. v....more

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

PTAB Strategies and Insights - March 2021

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.

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

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

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

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