News & Analysis as of

United States Patent and Trademark Office Statutory Interpretation

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 Tightens Limits on AAPA Use in IPRs Following Qualcomm Precedent

Morgan Lewis on

A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “applicant admitted prior art (AAPA), expert...more

McDermott Will & Schulte

When is a word too common to trademark? Asking for a four-letter friend

In response to artist and entrepreneur Erik Brunetti’s ongoing efforts to register FUCK as a trademark for various goods and services, the US Court of Appeals for the Federal Circuit vacated the Trademark Trial & Appeal...more

International Lawyers Network

Can a Difference in Punctuation between a Trademark in a Drawing and Specimen of Use be Allowed for Registration?

Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark on the specimen of use has punctuation that is different from the drawing of the trademark in the...more

King & Spalding

USPTO Acting Director Stewart Limits Use of General Knowledge in IPR Petitions

King & Spalding on

On July 31, 2025, Acting USPTO Director Coke Morgan Stewart released a memo instructing the agency “that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art...more

ArentFox Schiff

USPTO Restricts Use of AAPA and Other General Knowledge Evidence in IPR Proceedings

ArentFox Schiff on

On July 31, the US Patent and Trademark Office (USPTO) issued a new memorandum announcing that it will begin enforcing 37 C.F.R. § 42.104(b)(4) that requires petitioners in inter partes review (IPR) proceeding to “specify...more

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

July USPTO Guidance Sets Stricter Standards for Evidence in IPR Petitions

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

Mayer Brown

Reinvigorated Enforcement of Evidentiary Rules and the Permissible Uses of General Knowledge in Inter Partes Review

Mayer Brown on

On July 31, 2025, the Acting Director of the US Patent and Trademark Office (USPTO) issued a significant memorandum that alters the evidentiary landscape for inter partes review (IPR) proceedings before the Patent Trial and...more

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 1 of 3)

Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more

Haug Partners LLP

Settled Expectations: How the PTAB’s New Discretionary Denial Framework Is Reshaping IPR Strategy

Haug Partners LLP on

In a recent article, Haug Partners previewed that the impact of the Patent Trial and Appeal Board’s (PTAB) new bifurcated approach to discretionary denial requests would depend on how the new Acting USPTO Director, Coke...more

Baker Donelson

Trademark Trouble: When the F-Word Fails to Function

Baker Donelson on

Recent Supreme Court decisions underscore how viewpoint-based refusals of trademark applications are unconstitutional. But can these viewpoint-based refusals survive under the "failure-to-function" doctrine instead?...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

Irwin IP LLP

No Rhythm, No Review: USPTO Director Skips a Beat on IPRs. 

Irwin IP LLP on

iRhythm Technologies, Inc., v. Welch Allyn, Inc., IPR2025-00363, IPR2025-00374, IPR2025-00376, IPR2025-00377, IPR2025-00378 (P.T.A.B. June 6, 2025) - On June 6, 2025, United States Patent and Trademark Office (“USPTO”)...more

Foley Hoag LLP

The Enlarged Board of Appeal of the EPO Further Aligns Claim Construction With U.S. and U.K.

Foley Hoag LLP on

Key Takeaways: - The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) issued its opinion in G1/24 on June 18, 2025 resolving divergent case law on how patent claims should be interpreted at the EPO. - The...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

Knobbe Martens

Results of The Deferred Subject Matter Eligibility Response Pilot Program

Knobbe Martens on

On June 18, 2025, the United States Patent and Trademark Office (USPTO) hosted an informational call to share the results of a study on the Deferred Subject Matter Eligibility (DSMER) Pilot Program, three years after its...more

Wilson Sonsini Goodrich & Rosati

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

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

Farella Braun + Martel LLP

New TTAB Precedent Prohibits Incorporation By Reference

In a precedential decision issued June 6, 2025, the Trademark Trial and Appeal Board (TTAB) confirmed what has long been suggested in its procedural manual: Appellants in ex parte appeals may not incorporate arguments from...more

Fitch, Even, Tabin & Flannery LLP

Priority Denied, Patent Derailed: When One Filing Cancels Out the Other

On April 22, 2025, the Federal Circuit issued a decision In re: Bonnie Iris McDonald Floyd that underscores a critical and often overlooked risk in design patent prosecution: relying on a utility patent application for...more

Sheppard Mullin Richter & Hampton LLP

Undetectable Amount of Magnification IS Magnification

This Federal Circuit Opinion analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures....more

McDermott Will & Schulte

No Fairytale Ending for Consumer Opposition: RAPUNZEL Reinforces Lexmark Standing Limits

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s dismissal of a trademark opposition brought by a consumer, holding that mere consumer interest is insufficient to establish...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

Morrison & Foerster LLP

Discretionary Denials—Act II

On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Provides Clarity on Use of Applicant Admitted Prior Art (“AAPA”) in IPRs

Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674...more

McDermott Will & Schulte

False Connection: Post-Application Date Evidence Can Be Considered

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register a mark on the grounds of false connection, explaining that the false connection inquiry can include evidence...more

Fish & Richardson

No Space at the Trademark Office for US SPACE FORCE

Fish & Richardson on

In a rare precedential decision involving Section 2(a) of the Lanham Act, the U.S. Court of Appeals for the Federal Circuit recently upheld a denial by the Trademark Trial and Appeal Board (TTAB) of applications filed for US...more

64 Results
 / 
View per page
Page: of 3

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide