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United States Patent and Trademark Office › Patent Trial and Appeal Board › Patent Examinations

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 Memo Clarifies AI/ML Patent Eligibility Rules

Morgan Lewis on

Deputy Commissioner for Patents Charles Kim issued a memorandum to three technology centers reminding examiners how subject matter eligibility should be evaluated under 35 USC § 101. These technology centers often handle...more

MoFo Life Sciences

Beyond Final Rejection: What’s Next For Patent Prosecution After USPTO Terminates Its After Final Consideration Program?

MoFo Life Sciences on

On October 1, 2024, the United States Patent and Trademark Office (USPTO) announced that it is terminating its After Final Consideration Pilot Program 2.0 (AFCP 2.0), which is set to expire on December 14, 2024. The...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Dynamic Drinkware Written Description Requirement Inapplicable to Post-AIA Patents

Akin Gump Strauss Hauer & Feld LLP on

The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more

McDonnell Boehnen Hulbert & Berghoff LLP

Senators Tillis and Coons Once More Attempt to Fix Patent Eligibility

McDonnell Boehnen Hulbert & Berghoff LLP on

Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more

MoFo Life Sciences

USPTO RELEASES 2022‒2026 STRATEGIC PLAN

MoFo Life Sciences on

Last week, the USPTO released its 2022‒2026 Strategic Plan. The Strategic Plan outlines the USPTO’s overarching goals for the coming years. How are these initiatives likely to affect patent applicants and owners?...more

WilmerHale

PTAB/USPTO Update - April 2023

WilmerHale on

On March 6, the USPTO announced a new Green Energy Category of its Patents for Humanity Program. Patents for Humanity is an awards competition that recognizes innovators who use technology to meet global humanitarian...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Remains Hostile to Section 101 Appeals

McDonnell Boehnen Hulbert & Berghoff LLP on

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...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

Goodwin

USPTO Doubles Down Calling Out Pharmaceutical Industry

Goodwin on

​​​​​​​The new Director of the U.S. Patent and Trademark Office (USPTO), Katherine Vidal, published a stern reminder regarding the duties of disclosure and reasonable inquiry during examination of a patent application,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Think Twice About Appealing a § 101 Rejection to the PTAB

McDonnell Boehnen Hulbert & Berghoff LLP on

The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012.  As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

McDonnell Boehnen Hulbert & Berghoff LLP on

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Stories of 2021: #7 to #9

McDonnell Boehnen Hulbert & Berghoff LLP on

After reflecting upon the events of the past twelve months, Patent Docs presents its 15th annual list of top patent stories. For 2021, we identified nine stories that were covered on Patent Docs last year that we believe had...more

WilmerHale

PTAB/USPTO Update - January 2022

WilmerHale on

USPTO Leadership - ..Drew Hirshfeld is still performing the functions and duties of Director.  Kathi Vidal, the Biden Administration’s nominee to be the next Director, testified at the Senate Judiciary Committee’s hearing...more

Kilpatrick

Five Impactful USPTO Procedural Developments for Patent Practitioners

Kilpatrick on

As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more

Kilpatrick

After Hyatt v. Hirshfeld, it Might Be Time to Pay Attention to Prosecution Laches

Kilpatrick on

Gilbert Hyatt was one of many applicants who filed many patent applications shortly before the June 8, 1995 transition point, where patent terms transitioned from being defined based on 17 years from issuance to 20 years from...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)

McDonnell Boehnen Hulbert & Berghoff LLP on

The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 8-12): Patent Term Adjustments When Examiners Back Down

Morrison & Foerster LLP - Federal Circuitry on

Did you remember to send your favorite examiner a Valentine’s Day card?  Okay, so maybe that’s not the typical applicant/examiner relationship.  But this week we do look at some potential consequences from the back and forth...more

McDonnell Boehnen Hulbert & Berghoff LLP

The CRISPR Chronicles: Enter Toolgen

McDonnell Boehnen Hulbert & Berghoff LLP on

The U.S. Patent and Trademark Office Patent Trial and Appeal Board has declared interferences individually between Toolgen as Senior Party and as Junior Party the parties in the pending interference, Broad Institute, Harvard...more

Mintz - Intellectual Property Viewpoints

Expediting Patent Prosecution After An Advisory Action

Mintz - Intellectual Property Viewpoints on

It can be difficult to advance prosecution of a U.S. patent application efficiently and effectively after prosecution has been closed and an Advisory Action has been mailed. Various U.S. Patent and Trademark Office (USPTO)...more

McDonnell Boehnen Hulbert & Berghoff LLP

Gree, Inc. v. Supercell Oy (Fed. Cir. 2020)

McDonnell Boehnen Hulbert & Berghoff LLP on

One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer...more

Jones Day

PTAB Issues Guidance With Regard to AAPA

Jones Day on

On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA).  Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more

McDonnell Boehnen Hulbert & Berghoff LLP

Stupid § 101 Tricks

McDonnell Boehnen Hulbert & Berghoff LLP on

If we have learned anything from the last six-and-a-half years of patent eligibility jurisprudence, it is that nobody knows what's going on. Subject matter eligibility is a fundamental requirement for an invention to be...more

Goodwin

Issue Twenty-Seven: 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 monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Goodwin

Issue Twenty-Five: 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 monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Bass, Berry & Sims PLC

USPTO Designates Three Decisions Concerning Discretion to Deny Inter Partes Review Under 35 U.S.C. § 325(d)

Bass, Berry & Sims PLC on

On March 24, the USPTO issued two precedential decisions and one informative decision that clarify the circumstances under which the PTAB will utilize its discretion to deny IPR institution under 35 U.S.C. § 325(d). This...more

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