Recently, the Patent Trial and Appeal Board (PTAB) announced a new interim procedure for decision circulation and internal review. This interim procedure is aimed at promoting feedback, eliminating inconsistencies, and increasing transparency during the decision pre-issuance process. The push for increased transparency comes as a result of last year’s Supreme Court decision in United States

Late last year, the PTAB published its final round of statistics for 2021. From October 1, 2020 to November 30, 2021, 1629 petitions were filed at the Patent Trial and Appeal Board (PTAB). The majority of petitions filed are for Inter Partes Review (IPR), with less than 10% of petitions filed for Post Grant Review

The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) recently released an updated Orange Book patent/biologic patent study on August 11, 2021. This is the third report providing data on post-grant petitions filed against Orange Book and biologic patents released by the PTAB, and it covers AIA petitions filed between September 16,

On September 16, 2021, eleven congressional leaders (“the Signors”) sent a letter to Andrew Hirshfeld, the acting director of the United States Patent and Trademark Office (“USPTO”), requesting the USPTO to reevaluate the Patent Trial and Appeal Board’s (“PTAB”) view on discretionary denials of petitions for inter partes review (“IPR”).  The Office uses discretionary denials

Recently, the Supreme Court received two petitions for writ of certiorari challenging the NHK-Fintiv rule. The PTAB applies the NHK-Fintiv rule when deciding whether to grant institution of an inter partes review. The two petitioners, Apple and Mylan, seek to challenge both the lawfulness of the NHK-Fintiv rule and the Federal Circuit’s contention that it

In some circumstances, patent applicants may petition the Patent Office to suspend non-statutory rules under 37 CFR § 1.183. As the text of the rule indicates, the Patent Office will only grant such petitions “[i]n an extraordinary situation, when justice requires,” but does not clarify the type of situations where this requirement would be met. 

Earlier this month, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register providing guidance regarding the proper presentation of prophetic examples and working examples in a patent application. According to the guidance, the proper presentation of prophetic and working examples requires them to be described in a manner such

On April 15, 2021, the United States Patent and Trademark Office (“USPTO”) implemented the COVID-19 Prioritized Examination Pilot Program (“Pilot Program”) to fast-track ex parte appeals of products or processes subject to an applicable FDA approval for COVID-19 use.

Generally, appeals to the Patent Trial and Appeal Board (PTAB) are taken up for decision in

Last month, in January 2021, the United States Patent and Trademark Office (“USPTO”) published a memorandum (the “January 2021 Memorandum”) clarifying how it will analyze claims for indefiniteness in AIA post-grant proceedings before the Patent Trial and Appeal Board (“PTAB”), namely patented claims in PGRs and CBMs and proposed substitute claims in IPRs.  Prior to