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United States Patent and Trademark Office › New Guidance

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 -
Dinsmore & Shohl LLP

Patent Trial and Appeal Board Hearings to be Held in Person

Dinsmore & Shohl LLP on

A recent notice from the United States Patent and Trademark Office (USPTO) informed patent owners that “Starting September 1, 2025 all Patent Trial and Appeal Board (PTAB) hearings will be held in person.” (Emphasis added)....more

Baker Botts L.L.P.

Discretionary Denials at the PTAB: Strategic Insights for Petitioners and Patent Owners in a Shifting Landscape

Baker Botts L.L.P. on

A set of recently issued memoranda by United States Patent and Trademark Office (“USPTO”) officials has re-energized the debate around discretionary denials in post-grant trials at the Patent Trial and Appeal Board (“PTAB”)....more

McDermott Will & Emery

Seeing double? Director instructs Board to resolve claim construction pre-institution

McDermott Will & Emery on

The acting director of the US Patent & Trademark Office (PTO) vacated and remanded a Patent Trial & Appeal Board decision to institute two inter partes review (IPR) petitions that challenged the same claims. The acting...more

Womble Bond Dickinson

USPTO Newest Discretionary Denials on Settled Expectations - Best Practices for Petitioners and Patent Owners

Womble Bond Dickinson on

Recently, the United States Patent and Trademark Office (“USPTO”) issued a series of discretionary denials of inter partes review (IPR) petitions, based on a new factor, the “settled expectations” of the Patent Owner....more

Fish & Richardson

USPTO: No Bright-Line Rule on When Expectations Become Settled

Fish & Richardson on

On June 18, 2025, U.S. Patent and Trademark Office Acting Director Stewart issued a discretionary denial decision in Dabico Airport Solutions Inc. v. AXA Power ApS, granting the patent owner’s request for discretionary denial...more

Baker Donelson

Insights from Month One of Acting Director Stewart's Decisions on Discretionary Denial under the New Interim Processes for PTAB...

Baker Donelson on

Just three months ago, Acting Director of the U.S. Patent and Trademark Office (USPTO) Coke Morgan Stewart rescinded existing guidelines governing the Patent Trial and Appeal Board's (PTAB) discretion to deny petitions for...more

ArentFox Schiff

USPTO Expands on ‘Settled Expectations’ as Basis for PTAB Discretionary Denials

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued a Director Discretionary Denial decision expanding on the “settled expectations” ground for discretionary denial of a post-grant review proceeding...more

K&L Gates LLP

First Denial Based on USPTO’s New Discretionary Denial Factors

K&L Gates LLP on

Earlier this year, Chief Judge Boalick issued guidance on the USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” explaining how the Fintiv...more

Jones Day

PTAB Clarifies Interim Workload Management Process

Jones Day on

On April 17, 2025, following Acting Director Coke Morgan Stewart’s memorandum announcing a new interim process to manage the workload of all PTAB judges, the USPTO held a Boardside Chat outlining the new bifurcated process...more

Vinson & Elkins LLP

File Early or Risk Denial: iRhythm IPR Institution Denial Underscores the Importance of Filing IPR Petitions Sooner Rather Than...

Vinson & Elkins LLP on

On June 6, 2025, the Acting Director of the United States Patent and Trademark Office (“USPTO”), Coke Morgan Stewart, issued a decision denying institution of five inter partes review (“IPR”) petitions filed by iRhythm, Inc....more

Proskauer - The Patent Playbook

Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.

Proskauer - The Patent Playbook on

The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent...more

Wilson Sonsini Goodrich & Rosati

Patent Office Denial of “Late” Inter Partes Review Petitions Changes Expectations

Wilson Sonsini Goodrich & Rosati on

On June 6, 2025, the acting Director of the U.S. Patent and Trademark Office (USPTO), Coke Morgan Stewart, issued a decision in iRhythm Technologies v. Welch Allyn, Inc.1 that initiates a new basis for discretionary denial...more

DLA Piper

How Delayed Notice of Date Accorded Mailings May Affect Inter Partes Review

DLA Piper on

Inter partes review (IPR) practices have seen significant changes since US Patent and Trademark Office Acting Director Coke Stewart assumed her current role in January 2025. Perhaps the most significant change has been Acting...more

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

The USPTO Provides Further Guidance on Discretionary Denials Policy

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

The USPTO’s recent guidance on discretionary denials has shifted patent practitioners back to the Fintiv and Sotera Wireless framework....more

Venable LLP

USPTO Guidance for Online Fakes

Venable LLP on

The numbers of online fakes have exploded in recent years, creating increasing issues for a broad array of consumer goods manufacturers and retailers, from luxury clothing and leather goods to car parts or smoking...more

Foley Hoag LLP

Reshaped IPR Landscape: Narrower Estoppel and Fewer New Cases

Foley Hoag LLP on

Key Takeaways - - A recent Federal Circuit decision in a case involving an inter partes review (IPR) significantly narrowed a patentee’s ability to rely on estoppel to block a defendant from raising invalidity grounds. -...more

Haug Partners LLP

The PTAB’s Overhaul of Its Discretionary Denial Procedures Signals a Pro-Patent Pivot

Haug Partners LLP on

Since Acting USPTO Director Coke Morgan Stewart took office in 2025, the Patent Trial and Appeal Board (PTAB) has overhauled its discretionary denial procedures for inter partes reviews (IPRs) and post-grant reviews (PGRs)....more

Sheppard Mullin Richter & Hampton LLP

Breaking Down the Bifurcated PTAB Review Process: What the USPTO’s Recent FAQ Drop Reveals

Sheppard Mullin Richter & Hampton LLP on

On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just...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

Seyfarth Shaw LLP

The USPTO Is Issuing Patents Faster — Here’s Why That Matters

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Beginning May 13, 2025, the window between paying the issue fee and your patent officially issuing will become much shorter....more

ArentFox Schiff

USPTO Reshapes Discretionary Denials for Post-Grant Proceedings

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued two memoranda reshaping the Patent Trial and Appeal Board’s (PTAB) approach to discretionary denials for parallel proceedings....more

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

PTAB Issues Additional Information on New Pre-Institution Discretionary Briefing

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

On April 25, 2025, the USPTO issued additional information in response to frequently asked questions (FAQs) about the “Interim Processes for PTAB Workload Management” memorandum issued on March 26, 2025. As discussed in our...more

BakerHostetler

[Podcast] Making Moves: The USPTO Provides Guidance, Proposes Changes

BakerHostetler on

The U.S. Patent and Trademark Office had a busy summer in 2024. Businesses and individuals with AI and software-based inventions paid particularly close attention to the agency when, in July, it released updated guidance on...more

McGuireWoods LLP

Role of USPTO’s Delegated Rehearing Panel Changing With New Administration

McGuireWoods LLP on

Coke Morgan Stewart, named on Inauguration Day 2025 as deputy director of the U.S. Patent and Trademark Office (USPTO) and now serving as acting director of the USPTO, has already indicated that she will manage Director...more

McDermott Will & Emery

PTO Accelerates Patent Issuance Timeline

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The US Patent & Trademark Office (PTO) announced that it has shortened the time between the issue notification and the issue date for patents. Historically, the time between these two events averaged about three weeks....more

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