About the PTAB

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The United States Patent and Trademark Office (“USPTO”) announced that it considers the effects of COVID-19 (“the Coronavirus”) to be an “extraordinary situation.” Under 37 CFR 1.183, in extraordinary situations, the Director may suspend or waive any requirement of the regulations which is not a statutory requirement. Accordingly, as of the time of this writing,…

Following on the heels of the United States Patent and Trademark Office’s request for comments, the World Intellectual Property Organization (WIPO) recently released an issues paper on artificial intelligence (AI) and intellectual property (IP) policy.  Comments may be submitted by February 14, 2020.
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Continue Reading World Intellectual Property Organization Weighs in on Artificial Intelligence and Intellectual Property

On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]

Specifically, the Federal Register…

On August 22, 2019, the United States Patent and Trademark Office (USPTO) published a request for comments on patenting artificial intelligence inventions.  In addition to seeking general feedback from the public, the USPTO posed the following questions for comment:

  1. What are elements of an AI invention;
  2. How can a natural person contribute to conception

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The United States Patent and Trademark Office (“USPTO”) published the Office Patent Trial Practice Guide (“Practice Guide”) in 2012 to apprise the public of standard practices before the Patent Trial and Appeal Board (“PTAB” or “Board”) during AIA trial proceedings and to encourage consistency of procedures among panels of the Board. In order to keep…

An upcoming Precedential Opinion Panel (“POP”) at the Patent Trial and Appeal Board (“PTAB” or “the Board”) may offer improved clarity for petitioners and patent owners when a petitioner relies on non-patent literature in challenging a patent.

Background

Hulu, LLC sought inter partes review (“IPR”) of U.S. Patent No. 5,806,062 (“the ’062 patent”) asserting claims…

On March 8, 2019, in Personal Web Technologies, LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. Mar. 8, 2019) the Federal Circuit reversed the Patent Trial and Appeals Board’s (the “Board” or “the PTAB”) cancellation of U.S. Patent No. 7,802,310 (“the ’310 patent”) based on inherent obviousness in an inter partes review (“IPR”).   Another…

Last week, the first Precedential Opinion Panel (“POP”) entered a decision examining the scope of joinder available under 35 U.S.C. § 315(c). Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019). The POP made two determinations about the statutory authority of the Patent Trial and Appeal Board (“the…

On March 5, 2019, the USPTO hosted a rare and special event in recognition and celebration of female inventors and the contributions of women in science, technology, engineering, and mathematics (“STEM”). The celebration commenced with opening remarks from Laura A. Peter, Deputy Director of the USPTO, followed by keynote speeches from Congresswoman Martha Roby, Secretary…

The United States government is currently in a partial shutdown due to a lapse in appropriated funding for a portion of the federal government.  The partial shutdown began on December 22, 2018, and is currently in its fifth week.  Two government organizations affected by the shutdown are (i) the Department of Commerce, which includes the…