In Part I of this set of blogs, we discussed the impact of the rescission of former USPTO Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Patent Trial and Appeal Board. We also discussed Chief Judge Boalick’s Guidance Memorandum on the rescission. In Part II, we examine a … Continue Reading
Recent actions from the USPTO have engendered a great deal of discussion among the bar practicing before the Patent Trial and Appeal Board. On February 28, 2025, acting Director Stewart rescinded former Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Board. On March 24, 2025, Chief Judge Boalick … Continue Reading
In a May 10, 2024, Notice of Proposed Rulemaking (NPRM), the USPTO proposed sweeping changes in the rules governing the filing of terminal disclaimers. If the USPTO implements the proposed changes, entire patent families could be wiped out if just one claim of one patent in the family is found invalid over prior art. Patent … Continue Reading
We previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See ITC Section 337: Kiss of Death … Continue Reading
