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United States Patent and Trademark Office › Prior Art › Patents

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 -
McDermott Will & Schulte

Use of general knowledge in IPR petitions will no longer work

McDermott Will & Schulte on

On July 31, 2025, the US Patent & Trademark Office (PTO) issued a memo clarifying the requirements under 37 C.F.R. § 42.104(b)(4) for inter partes review (IPR) petitions. The memo emphasizes that petitioners must clearly...more

Baker Botts L.L.P.

The Provisional Patent Trap—Why Cutting Corners Can Place Startup IP Rights at Risk

Baker Botts L.L.P. on

For startups sensitive to cash burn rate, provisional patent applications often seem like the perfect solution—lower filing fees, simplified requirements, and a full year to file the "real" application. However, this...more

McCarter & English, LLP

New Patent Office Guidance Raises Bar for IPR Petitioners

McCarter & English, LLP on

The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed...more

McDonnell Boehnen Hulbert & Berghoff LLP

American Science and Engineering, Inc. v. Stewart (Fed. Cir. 2025)

McDonnell Boehnen Hulbert & Berghoff LLP on

Under Dickinson v. Zurko courts (specifically, the Federal Circuit) should defer to factual determinations by administrative agencies like the U.S. Patent and Trademark Office unless they are not supported by substantial...more

Jones Day

Subsequent Challenge Does Not Justify Discretionary Denial

Jones Day on

In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same...more

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

July USPTO Guidance Sets Stricter Standards for Evidence in IPR Petitions

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

Acting Director of the USPTO, Coke Morgan Stewart, issued a memorandum last week that will change the way petitioners levy challenges to patents via inter partes review (IPR). The change will apply to any petition for IPR...more

Fish & Richardson

USPTO Limits Use of General Knowledge in IPR Proceedings

Fish & Richardson on

On July 31, the United States Patent and Trademark Office issued a memorandum (“Memo”) announcing that the Office will renew enforcement of 37 C.F.R. § 42.104(b)(4) (“Rule 104(b)(4)”) in inter partes review (IPR) proceedings....more

Baker Botts L.L.P.

Ex Parte Reexaminations Poised to Make a Quiet Comeback: Discretionary Denial Guidance for Inter Partes Reexamination May Increase...

Baker Botts L.L.P. on

Imagine this. You were just served with a Complaint for patent infringement and learn that, some years ago, your competitor was granted a patent giving them a legal monopoly to exclude others, including you, from making,...more

Knobbe Martens

Applicant Admitted Prior Art Can (Sometimes) Show Obviousness

Knobbe Martens on

SHOCKWAVE MED., INC., V. CARDIOVASCULAR SYS., INC. - Before Lourie, Dyk, and Cunningham.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019-00405. In inter partes review...more

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

What Should the USPTO Consider Changing for Implementing Post-Final Written Decision Estoppel in Ex Parte Reexamination Based on...

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

The estoppel provision of 35 U.S.C. § 315(e)(1) had largely prevented requesters from challenging claims of a patent via ex parte reexamination after an inter partes review (IPR) that resulted in a final written decision...more

Dinsmore & Shohl LLP

AI Enters the Design Patent Arena as the USPTO Launches DesignVision

Dinsmore & Shohl LLP on

In a significant step toward modernizing design patent examination, the United States Patent and Trademark Office (USPTO) has introduced DesignVision, a new artificial intelligence (AI)-powered image search tool now available...more

Jones Day

Inventor Testimony of Reduction Date Leads to Denial

Jones Day on

The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940 (“the ‘940 patent”). ...more

Dickinson Wright

2025 Patent Filing Costs Rise: USPTO Fee Update and Response Strategies

Dickinson Wright on

In January 2025, the United States Patent and Trademark Office (USPTO) implemented a broad set of fee increases and structural adjustments intended to address rising operational costs and encourage more efficient patent...more

ArentFox Schiff

USPTO to Launch AI-Powered Image-Based Search Tool for Design Patents Amidst New Legal Standards

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) has announced the upcoming launch of an artificial intelligence (AI)-powered image-based prior-art search tool for design patents, scheduled to go live on October 1, 2025 (fiscal...more

A&O Shearman

The Federal Circuit Rejects PTAB’s Use Of Traditional Construction Of “Consisting Essentially Of”

A&O Shearman on

On June 30, 2025, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the U.S. Patent Trial and Appeal Board (the “Board”) and remanded the case for further proceedings using a narrower construction of the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Holds Applicant Admitted Prior Art Cannot Form “Part of the Basis” of an IPR Ground, Reversing a PTAB Win for...

Akin Gump Strauss Hauer & Feld LLP on

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a...more

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

The Evolution of “New” in the “Substantial New Question” Standard in Patent Reexamination

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

As the Patent Trial and Appeal Board and the Acting USPTO Director refocus challengers, and with them Patent Owners, towards reexamination from inter partes review proceedings, the need to understand the nuance of “new” in...more

MoFo Life Sciences

What Makes a Good Cell and Gene Therapy Application?

MoFo Life Sciences on

Cell and gene therapies represent a transformative frontier in modern medicine, offering potential cures for previously untreatable conditions. However, securing intellectual property (IP) protection for these innovations...more

MoFo Life Sciences

A Tip for Improving Your “Improved” Jepson Claim: Include Written Description Support

MoFo Life Sciences on

The Federal Circuit issued a precedential opinion in In re: Xencor, Inc.concerning written support for Jepson claims. The decision affirms the decision of the Appeals Review Panel (ARP) of the USPTO, which held that the...more

Baker Botts L.L.P.

Patent Obviousness in the AI Era

Baker Botts L.L.P. on

The proliferation of artificial intelligence (“AI”) presents complex challenges for intellectual property, especially within patent law. In particular, the obviousness inquiry under 35 U.S.C. § 103 may be susceptible to...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 2025

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

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Jones Day

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

Jones Day on

A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more

Volpe Koenig

“Settled Expectations” as the New Gatekeeper for PTAB Discretionary Denials: Why Late-Stage IPRs Are Getting Harder to File

Volpe Koenig on

When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408  Paper 21, much of the commentary focused on the result....more

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

Volpe Koenig on

Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

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

Latest Director Discretionary Denial Decision in iRhythm Provides Valuable Insights

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

On June 6, 2025, Acting USPTO Director Stewart issued a decision in iRhythm Tech. v. Welch Allyn, Inc., IPR2025-00363, Paper 10 (and four related IPRs), which granted Patent Owner’s request for discretionary denial. This is...more

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