USPTO Seeks Comment on Patent Trials and Appeals Board Rules

On April 21, 2023, the U.S. Patent and Trademark Office (USPTO) released its Advance Notice of Proposed Rulemaking seeking public comment on rules governing discretionary denial of petitions brought before the Patent Trials and Appeals Board. 

USPTO is considering changes that would provide for discretionary denials of petitions in the following categories, subject to certain conditions and exceptions discussed further in the notice:

  • Petitions filed by certain for-profit entities;
  • Petitions challenging under-resourced patent owner patents where the patentee has or is attempting to bring products to market;
  • Petitions challenging patent claims previously subject to a final adjudication upholding the patent claims against patentability challenges in district court or in post-grant proceedings before the USPTO;
  • Serial petitions;
  • Petitions raising previously addressed prior art or arguments (subject to the 35 U.S.C. 325(d) framework);
  • Parallel petitions; and
  • Petitions challenging patents subject to ongoing parallel litigation in district court.

The USPTO will hold a public information session with Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal on the ANPRM on May 9, 2023 from Noon to 1 PM ET.

Comments are due June 20, 2023 through, referencing docket PTO-P-2020-0022-0001.

Please contact Jamie Saloom at in the Office of Advocacy with your small business concerns.

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