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United States Patent and Trademark Office › New Guidance › Appeals

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

McDermott Will & Schulte

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

McDermott Will & Schulte 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

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

McGuireWoods LLP

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

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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 & Schulte

Fintiv Guidelines for Post-Grant Proceedings Involving Parallel District Court Litigation

McDermott Will & Schulte on

On March 24, 2025, the US Patent & Trademark Office (PTO) released new guidance that clarifies application of the Fintiv factors when reviewing validity challenges simultaneously asserted at the Patent Trial & Appeal Board...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

Vorys, Sater, Seymour and Pease LLP

New USPTO Processes Put in Place Regarding PTAB Institution Decisions

Vorys, Sater, Seymour and Pease LLP on

On March 26, 2025, the U.S. Patent and Trademark Office (USPTO) announced new interim procedures for handling discretionary denials of post-grant proceedings before the Patent Trial and Appeal Board (PTAB).  These changes are...more

WilmerHale

USPTO Issues Memo on Interim Process for PTAB Discretionary Denial Evaluation

WilmerHale on

On March 26, 2025, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office Coke Morgan Stewart issued a memorandum that makes several significant...more

Jones Day

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

Jones Day on

A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary considerations and...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Issues Guidance on Discretionary Denials

Akin Gump Strauss Hauer & Feld LLP on

In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more

Latham & Watkins LLP

USPTO Implements Interim Procedures Bifurcating Decisions to Institute AIA Trials

Latham & Watkins LLP on

On March 26, 2025, Acting Director of the United States Patent and Trademark Office (USPTO) Coke Morgan Stewart issued a memorandum (the Workload Memorandum) to all Administrative Patent Judges (APJs) of the Patent Trial and...more

BakerHostetler

Will Fewer PTAB Judges Increase the Rate of Discretionary Denials of IPRs and PGRs?

BakerHostetler on

The Acting Director of the United States Patent and Trademark Office just issued a memorandum setting out new procedures for discretionary denials of Inter Partes Reviews (IPRs) and Post-Grant Reviews (PGRs). The Acting...more

Morrison & Foerster LLP

Pivot At The PTAB: The Acting Director Bifurcates Review

Morrison & Foerster LLP on

With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more

Latham & Watkins LLP

USPTO Rescinds and Replaces Guidance on Discretionary Denials

Latham & Watkins LLP on

On February 28, 2025, the United States Patent and Trademark Office (USPTO) rescinded a memorandum issued in June 2022 by former Director Katherine Vidal (the Vidal Memorandum) that provided guidance on discretionary denials...more

Ropes & Gray LLP

USPTO Rescinds Interim Guidance on Discretionary Denials

Ropes & Gray LLP on

On February 28, 2025, the U.S. Patent and Trademark Office (“USPTO”) rescinded its June 21, 2022 Memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court...more

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

PTAB Strategies and Insights - April 2019: Supreme Court Sua Sponte Reverses Alice …We Wish

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

IPO published the following announcement on April 1st: Today the U.S. Supreme Court announced that it is reversing its infamous 2014 decision on patent eligibility in Alice Corp. v. CLS Bank and remanding. The court took...more

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

Federal Circuit Upholds Invalidity of Cleveland Clinic’s Claims Directed to Methods for Detecting an Elevated MPO Concentration

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

In Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, (Cleveland Clinic II)[1], a unanimous panel of the Federal Circuit provided yet another guidepost illustrating what is not...more

Knobbe Martens

USPTO issues Memo on Patent Eligibility of Method of Treatment Claims

Knobbe Martens on

The United States Patent and Trademark Office (USPTO) recently issued a memo providing examination guidance on the subject matter eligibility of the method of treatment claims. The memo discussed the recent Federal Circuit...more

Dorsey & Whitney LLP

New Patent Office Guidance Released on Subject Matter Eligibility

Dorsey & Whitney LLP on

As the law regarding patent eligibility for certain subject matter continues to evolve, the U.S. Patent and Trademark Office (USPTO) recently clarified its examination procedure relating to subject matter eligibility in a...more

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