News & Analysis as of

United States Patent and Trademark Office › Patent Trial and Appeal Board › Comment Period

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 -
WilmerHale

PTAB/USPTO Update - August 2025

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On July 31, 2025, Acting Under Secretary of Commerce for Intellectual Property and Director of the USPTO Coke Morgan Stewart issued a memorandum indicating that the USPTO “will enforce and no longer waive the requirement of...more

Baker Botts L.L.P.

Intellectual Property Report - August 2024

Baker Botts L.L.P. on

Be an Expert: Precedential PTAB Decision on Conclusory Expert TestimonyStutti TilwaA recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on...more

Fenwick & West LLP

Understanding the Latest on Director Review in AIA Proceedings

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The NPRM proposals align with interim guidance on requesting director review for key AIA trial decisions. Following the Arthrex v. Smith & Nephew ruling, director review by the USPTO Director remains crucial for addressing...more

WilmerHale

PTAB/USPTO Update - May 2024

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On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

McDermott Will & Schulte

PTO Proposes New Guidelines for Director Review in Board Proceedings

McDermott Will & Schulte on

The US Patent & Trademark Office (PTO) proposed new rules governing the process for Director review of Patent Trial & Appeal Board decisions in America Invents Act (AIA) proceedings. Rules Governing Director Review of Patent...more

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

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

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

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

Goodwin

Issue 44: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Jones Day

PTAB Proposes Permanent MTA Pilot Program Rules

Jones Day on

On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”) Practice and Procedures...more

Womble Bond Dickinson

USPTO Seeks to Cement PTAB Motion to Amend Pilot Program

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The United States Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act (AIA). Specifically, the USPTO is proposing...more

Fish & Richardson

USPTO Proposes Rules Updating Motion to Amend Practice Before the PTAB

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more

McDermott Will & Schulte

Not Admitted to PTO Bar? No Problem.

McDermott Will & Schulte on

On February 21, 2024, the US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking that would give parties the option to designate a non-registered practitioner as lead counsel in proceedings before the...more

WilmerHale

PTAB/USPTO Update - January 2024

WilmerHale on

On January 4, the USPTO announced the appointment of new leaders for the agency’s policy and communications teams. Sharon Israel will serve as the Chief Policy Officer and Director for International Affairs, and Jack...more

Jones Day

RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

Jones Day on

On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review of...more

McDermott Will & Schulte

PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor

McDermott Will & Schulte on

On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC. The resulting sanctions order canceled five Longhorn patents. The...more

WilmerHale

PTAB/USPTO Update - August 2023

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USPTO News - On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset....more

WilmerHale

PTAB/USPTO Update - July 2023

WilmerHale on

On June 7, the USPTO released its 2022-2026 Strategic Plan. According to the USPTO, the new plan outlines the USPTO's mission-focused strategic goals, which are: (1) driving inclusive U.S. innovation and global...more

Jones Day

USPTO Requests Comments Regarding Motion to Amend Pilot

Jones Day on

The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...more

Jones Day

USPTO Provides Insight on AMPRM Proposals

Jones Day on

The USPTO issued an advance notice of proposed rules (“ANPRM”) on April 21, 2023 and is requesting comments and feedback from practitioners on proposed, proposed changes at the PTAB. The full ANPRM document is available on...more

WilmerHale

PTAB/USPTO Update - June 2023

WilmerHale on

On May 23, the USPTO announced a request for comments seeking public input on whether to make permanent or modify the PTAB’s Motion to Amend (MTA) Pilot Program. The USPTO is also seeking related input on the rules of...more

Morrison & Foerster LLP

USPTO Proposed Rulemaking Could Reshape Post-Grant Practice Under the AIA

Morrison & Foerster LLP on

On April 21, the U.S. Patent and Trademark Office (USPTO) published an Advanced Notice of Proposed Rulemaking (ANPRM), based on a Request for Comments (RFC) published in 2020. The ANPRM sets forth a series of proposed rule...more

WilmerHale

PTAB/USPTO Update - March 2023

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The USPTO published Revision 07.2022 of the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). A change summary is available here....more

WilmerHale

PTAB/USPTO Update - November 2022

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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

McDermott Will & Schulte

PTO Requests Comments on Initiatives to Expand Board Opportunities, Registration to Practice Criteria

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In a pair of notices, the US Patent & Trademark Office (PTO) announced on October 18, 2022, that it is seeking public input on proposed initiatives directed at expanding opportunities to appear before the Patent Trial &...more

WilmerHale

PTAB/USPTO Update - October 2022

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USPTO Leadership - ..This month, Director Kathi Vidal delivered official remarks at the International Copyright Institute and at the Global Forum on Intellectual Property. ..Director Vidal was appointed as a Federal...more

WilmerHale

PTAB/USPTO Update - October 2021

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USPTO News - On September 9, 2021, Senators Patrick Leahy and Thom Tillis wrote a letter to Acting Director Andrew Hirshfeld requesting that the USPTO “take steps to reduce patent applicants’ making inappropriate...more

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