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Same patent, same light: Director vacates IPR decision at odds with ITC decision

by | Aug 13, 2026 |

The director of the United States Patent & Trademark Office (USPTO) vacated a Patent Trial and Appeal Board final written decision finding challenged claims obvious where the US International Trade Commission, considering the same patent, parties, and obviousness theory, had reached the opposite conclusion. The director found that the Board had not adequately justified departing from the Commission’s analysis. Biofrontera Inc. v. Sun Pharmaceutical Industries Inc., IPR2024-01312 (USPTO Dir. July 29, 2026) (Squires, Dir.)

Biofrontera petitioned for inter partes review (IPR) of a Sun Pharmaceutical patent directed to a photodynamic dermatology device. The Board instituted review and ultimately found all challenged claims unpatentable as obvious.

The same patent was also at issue in a Section 337 investigation before the Commission. Sun Pharmaceutical had accused Biofrontera of importing certain photodynamic therapy systems that infringed two patents. An administrative law judge (ALJ) found infringement and recommended an exclusion order. The ALJ also found that Biofrontera had not shown the claims of the patent at issue in the IPR to be obvious.

Before the Board, Biofrontera argued that the ALJ’s determination did not warrant deference because it was not yet final, remained subject to Commission review, and was based on a different evidentiary record and burden of proof. The Board agreed and reached the opposite conclusion on obviousness.

On Director Review, the director rejected the Board’s explanations and vacated the final written decision. The director concluded that the Board had not identified a sufficient basis for reaching a patentability determination inconsistent with the Commission’s assessment of the same obviousness theory.

The director first rejected the Board’s reliance on the non-final status of the ALJ’s determination. By the time of Director Review, the full Commission had upheld the ALJ’s conclusion that Biofrontera had not shown the claims obvious, eliminating the finality concern on which the Board had relied. The director further explained that even a non-final ALJ determination may remain relevant when the Board considers whether parallel proceedings justify terminating or otherwise declining to continue an IPR.

The director also found that differences in the evidentiary records did not adequately explain the conflicting results. Although the IPR included expert testimony that had not been presented at the Commission, the Board did not sufficiently explain why that testimony warranted reaching a different conclusion on the same prior art combination.

Nor did the differing burdens of proof resolve the inconsistency. The director acknowledged that an IPR applies the preponderance-of-the-evidence standard, while a Commission respondent challenging patent validity faces a higher burden. But the difference in standards, standing alone, did not explain why the two tribunals reached conflicting factual conclusions regarding the same claim limitation and prior art combination.

Finding no adequate justification for the divergence, the director vacated the Board’s final written decision and dismissed the IPR petition rather than remanding for further proceedings.

Practice Note: Parties litigating patent validity in parallel Board and Commission proceedings should expect prior findings from one forum to receive meaningful consideration in the other, particularly where the same parties, prior [...]

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Unplugged: Claim construction errors, presumption of harm short-circuit preliminary injunction

by | Aug 13, 2026 |

The US Court of Appeals for the Federal Circuit vacated a preliminary injunction, finding that the district court improperly imported a spatial limitation into the claim term “backplate” and erroneously treated the structural term “pin” as a means-plus-function limitation. The Court also reiterated that in preliminary injunction proceedings, a strong showing of validity and infringement does not give rise to a presumption of irreparable harm. Socket Solutions, LLC v. Import Global, LLC, Case No. 25-1121 (Fed. Cir. Aug. 4, 2026) (Moore, C.J.; Prost, J.; Seeborg, Distr.J. (sitting by designation)).

Socket Solutions owns a patent directed to an indoor electrical outlet cover designed to conceal an outlet’s contact openings while permitting continued use of the outlet. Socket Solutions sued Import Global, alleging that Import Global’s Neat Socket product infringed. Socket Solutions also moved for a preliminary injunction. Adopting a magistrate judge’s reports and recommendations, the district court granted the injunction, barring Import Global from making, using, selling, offering to sell, or importing the accused product. Import Global appealed.

The Federal Circuit first addressed the district court’s construction of “backplate.” The district court construed the term as the component of the cover opposite the frontplate that included at least one set of electrical prongs. Import Global argued that the backplate instead referred to the portion of the cover closest to the wall outlet.

The Federal Circuit rejected both constructions because each imposed a spatial relationship not required by the specification. Looking to the written description, the Court explained that the backplate was used to define the thickness of the outlet cover. The Court therefore construed “backplate” as the component that, together with the frontplate, formed the cover such that the cover’s maximum thickness was measured between the frontplate and that component at the cover’s central portion. The Court also declined to require the backplate itself to include electrical prongs. Because the asserted claim separately recited that limitation, incorporating it into the construction of “backplate” would improperly render other claim language superfluous.

The Federal Circuit next concluded that the district court erred by construing “pin” as a means for making an electrical connection between a wire and a corresponding prong, effectively treating the term as a means-plus-function limitation under Section 112(f). Because the claim did not use the word “means,” the presumption against application of Section 112(f) applied. The Court found that the presumption was not overcome because the specification described a “pin” structurally, and the parties agreed that a skilled artisan would understand a pin to identify structure.

The Federal Circuit rejected Socket Solutions’ proposed purely functional construction as too broad because not every structure capable of connecting a wire to a prong is necessarily a pin. It likewise rejected Import Global’s proposed “mechanical system” construction as unsupported by the specification. Finding neither lexicography nor disavowal, the Court concluded that “pin” should receive its plain and ordinary meaning.

Finally, the Federal Circuit addressed the district court’s irreparable harm analysis. Although the Court did not decide whether Socket Solutions had established irreparable harm, [...]

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Not even a thread left: Single reference anticipation, missing claim limitation entitle defendant to JMOL

by | Aug 6, 2026 |

The US Court of Appeals for the Federal Circuit reversed a judgment of infringement, concluding that the asserted patent claims were anticipated by a single prior art reference and that the accused products did not satisfy a limitation under the district court’s claim construction. As a result, the Court concluded that the defendant was entitled to judgment as a matter of law (JMOL) of both invalidity and noninfringement. Board of Regents of the University of Texas v. Boston Scientific Corp., Case Nos. 24-2062; -2063 (Fed. Cir. July 27, 2026) (Taranto, Bryson, Cunningham, JJ.)

The Board of Regents of the University of Texas (UT) owns a patent directed to a composition containing at least one biodegradable polymer fiber that includes one or more dispersed therapeutic agents. The claimed invention may be used with commercially available stents to deliver drugs at the site where the stent is placed.

In 2017, UT sued Boston Scientific Corporation (BSC), alleging that BSC’s drug-eluting coronary stent systems infringed UT’s patent. Following claim construction, the case proceeded to trial. The jury found that BSC willfully infringed the asserted claims and rejected BSC’s argument in its motion for JMOL that the claims were anticipated by a prior art reference known as Song. The jury awarded damages to UT. The district court subsequently set aside the willfulness finding as legally unsupported but otherwise upheld the verdict. BSC appealed the infringement and validity rulings, and UT cross-appealed the district court’s decision overturning the willfulness verdict.

The Federal Circuit reversed the judgment for UT, finding that BSC was entitled to JMOL that the asserted claims were invalid as anticipated and, independently, that BSC did not infringe.

Addressing anticipation, the Federal Circuit concluded that Song disclosed each limitation of the asserted independent claim. Song taught the claimed biodegradable polymer fiber and disclosed the claimed “second phase” limitation. The Court explained that Song’s noncontiguous drug phases satisfied the requirement for discrete drug-containing regions.

The asserted dependent claims added limitations expressed in Markush-group form. Because Song disclosed at least one member of each claimed Markush group, the Federal Circuit concluded that those claims were also anticipated. The Court further found that Song disclosed the claimed release of a drug at varying rates.

The Federal Circuit separately concluded that BSC was entitled to JMOL of noninfringement. Under the district court’s claim construction, the asserted claims required a “thread-like” structure. The Court determined that UT’s evidence did not establish the presence of such a structure in BSC’s accused stent coatings.

UT’s infringement theory relied on sections of the coating that had been artificially separated for purposes of analysis. The Federal Circuit concluded that no reasonable jury could characterize those artificially isolated portions as the claimed thread-like structure. BSC therefore was entitled to JMOL of noninfringement.



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In vitro data, broad dosage ranges fail to enable patient-treatment claims

by | Jul 23, 2026 | ,

Clarifying the enablement standard for pharmaceutical method-of-treatment claims, the US Court of Appeals for the Federal Circuit affirmed a post-verdict grant of judgment as a matter of law (JMOL), finding patents directed to daily administration of a “unit dosage” to cancer patients invalid for lack of enablement. The Court concluded that the specification’s in vitro data and broad dosage ranges – some exceeding the maximum tolerated dose in humans – did not provide sufficient guidance for translating the disclosed results into a workable patient-dosing regimen. Wyeth LLC v. AstraZeneca Pharmaceuticals LP, Case No. 24-2325 (Fed. Cir. July 9, 2026) (Lourie, Linn, Hughes, JJ.)

Pharmaceutical and healthcare company Wyeth owns patents directed to methods of treating gefitinib- and/or erlotinib-resistant non-small cell lung cancer (NSCLC) by administering a daily “unit dosage” of an irreversible epidermal growth factor receptor (EGFR) inhibitor. A jury found that competitor AstraZeneca, which markets the irreversible EGFR inhibitor Tagrisso® (osimertinib), induced infringement and awarded Wyeth $107.5 million in damages. After trial, however, the district court granted AstraZeneca’s renewed JMOL motion, finding the asserted claims invalid for lack of enablement.

Wyeth appealed, arguing that the district court improperly changed its construction of “unit dosage” after trial, applied that revised construction in its enablement analysis, and improperly granted JMOL on enablement grounds.

The dispute centered on the construction of “unit dosage,” which the district court defined as “physically discrete units suitable as unitary dosage for the subject, each unit containing a predetermined quantity of active material calculated to produce the desired therapeutic effect.” Wyeth argued that the claims required only the identification of compounds capable of inhibiting EGFR activity. AstraZeneca countered that, because the claims expressly required daily administration to a patient, they necessarily required a dosage regimen suitable for human treatment.

The Federal Circuit agreed with AstraZeneca, finding that the claims “plainly require the daily administration of a unit dosage to a patient to achieve a therapeutic effect in treating g/e-resistant NSCLC, not merely the identification of compounds capable of inhibiting EGFR activity in vitro.”

The Federal Circuit rejected Wyeth’s contention that the district court had effectively imported US Food and Drug Administration (FDA) approval requirements into the enablement inquiry. The Court emphasized that enablement did not require proof of regulatory-grade safety or efficacy. Because the claims required daily administration to patients, however, the specification had to teach a skilled artisan how to arrive at a workable human-dosing regimen without undue experimentation.

The Federal Circuit determined that the specification failed to do so, as it disclosed only three exemplary compounds (EKB-569, HKI-357, and HKI-272), described their in vitro activity, and provided only broad projected dosage ranges (1-1,000 mg and 2-500 mg) without explaining how to translate those ranges into effective human dosing.

The trial record reinforced the lack of enablement. AstraZeneca presented unrebutted testimony, including from Wyeth’s own experts and co-inventors, that at least two disclosed compounds could not be administered within the claimed dosage ranges without exceeding the maximum tolerated dose in humans. One co-inventor testified that the [...]

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Preliminary injunction? Not when substantial questions remain

by | Jul 23, 2026 |

The US Court of Appeals for the Federal Circuit reversed a preliminary injunction in a patent infringement action, finding that the district court’s claim construction raised, at a minimum, substantial questions regarding infringement and that the patentee failed to establish irreparable harm. Ridge Corp. et al. v. Kirk NationaLease Co. et al., Case No. 25-1254 (Fed. Cir. July 13, 2026) (Dyk, Mayer, Taranto, JJ.)

Ridge Corporation, the exclusive licensee of manufacturer Cold Chain’s patent directed to an insulated overhead door, sued truck leasing and maintenance company Kirk NationaLease Co. (KNL) for patent infringement, tortious interference with business relationships, and false patent marking. After the Federal Circuit vacated an initial preliminary injunction because Ridge lacked standing to sue without the patent owner, Cold Chain joined the present action as a plaintiff. The district court again granted a preliminary injunction, concluding that the plaintiffs had demonstrated a likelihood of success on the merits. KNL appealed.

KNL argued that the district court improperly construed several disputed claim limitations and, therefore, erred in concluding that the plaintiffs were likely to succeed on the merits. The Federal Circuit agreed, explaining that a preliminary injunction should not issue where an accused infringer raises one or more substantial questions concerning infringement – questions that the patentee cannot show lack substantial merit.

The Federal Circuit identified three claim limitations that raised substantial questions of noninfringement:

  • The district court improperly construed the limitation requiring a panel that is “flexible along the entire length of the panel,” explaining that both the claim language and prosecution history supported a narrower construction.
  • The accused product raised a substantial question regarding the limitation requiring that “foam insulating material” form the second outermost surface of the door because the prosecution history distinguished prior art sandwich constructions on that basis.
  • The district court construed the term “insulated overhead door” too broadly, explaining that the specification and industry evidence supported construing the term as referring to a door suitable for cold-storage applications.

The Federal Circuit also determined that the district court erred in finding irreparable harm. Ridge asserted that it had reduced prices because of the defendants’ allegedly infringing products, but the Court found no evidence establishing the required causal nexus between the accused sales and Ridge’s pricing decisions. The Court likewise rejected Ridge’s reliance on its false-marking and tortious-interference claims because there was no credible evidence that the challenged conduct was likely to recur, making prospective injunctive relief inappropriate.

Practice note: This decision illustrates that a patentee seeking preliminary injunctive relief must establish more than a plausible infringement theory. Where the accused infringer raises substantial questions regarding claim construction or infringement, a preliminary injunction is inappropriate.



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Federal Circuit: Mandate rule applies only to issues actually decided on appeal

by | Jul 23, 2026 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness determination, finding that the Board did not exceed the scope of the Court’s prior mandate by addressing a claim limitation that the Board had not reached in its original final written decision. Intellectual Pixels Ltd. v. Sony Interactive Entertainment LLC, Case No. 24-2174 (Fed. Cir. July 10, 2026) (Dyk, Stoll, Stark, JJ.)

Sony Interactive Entertainment petitioned for inter partes review (IPR) of an Intellectual Pixels Limited (IPL) patent directed to methods and systems for generating digital images using an external visual server. IPL is a UK-based intellectual property licensing company known for holding a US patent that covers methods for generating and displaying digital images using a remote visual server. A key feature of the claimed invention was that the external server assumed responsibility for generating the images, relieving the client device of that processing burden.

The primary prior art reference disclosed a system in which a game was hosted “exclusively on a server/host computer” while users played the game through separate client or terminal computers. The Board instituted review but, in its first final written decision, concluded that Sony had not shown the challenged claims to be unpatentable.

Sony appealed. The Federal Circuit vacated the Board’s decision, finding that substantial evidence did not support the Board’s determination regarding the claim limitation requiring “generating” a new image.

On remand, the Board addressed a separate “compressing” limitation, concluded that the prior art satisfied that limitation, and issued a second final written decision finding the challenged claims unpatentable as obvious.

IPL appealed, arguing that the Board violated the Federal Circuit’s mandate by revisiting findings that had not been expressly disturbed in the first appeal. Under the mandate rule, issues decided on appeal generally may not be reconsidered by a lower tribunal on remand.

The Federal Circuit rejected IPL’s argument. One of the two findings IPL identified had, in fact, been vacated by the Court’s prior decision as unsupported by substantial evidence. The other concerned the Board’s observation that the primary reference was “completely silent as to the content or origin of that ‘compressed video MPEG stream.’” The Court concluded that this second finding fell outside the scope of the prior mandate because it related to the “compressing” limitation, which the Board had not reached in its first final written decision. Because the Board’s original decision rested only on the “generating” limitation, the “compressing” issue was not before the Court in the first appeal and, therefore, was not resolved – expressly or implicitly – by the Court’s mandate.

The Federal Circuit also noted that its prior discussion of the “generating” limitation had implicitly undermined IPL’s reliance on the Board’s earlier observation. Both the “generating” and “compressing” limitations referred to “at least one updated image,” making the prior finding difficult to reconcile with the Court’s earlier analysis.

IPL relied on a 2025 Federal Circuit decision, Bitmanagement Software GmBH v. United States, suggesting that factual findings made during [...]

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USPTO extends deadline for requesting director review of decisions instituting trial

by | Jul 16, 2026 |

The United States Patent and Trademark Office (USPTO) updated its director review process by extending the deadline for requesting director review of decisions made in Patent Trial & Appeal Board proceedings from 14 to 30 days.

Under 37 C.F.R. § 42.75(c)(1), a request for director review must be filed within the time period set forth in 37 C.F.R. § 42.71(d), unless the director grants an extension for good cause. Section 42 generally requires that a request for director review be filed within 14 days of a decision instituting trial or 30 days of a final decision or a decision denying institution.

In a precedential order in Light & Wonder, Inc. v. Evolution Malta Ltd., IPR2025-01072, Paper 30 (Director June 22, 2026), however, the director waived the 14-day deadline and extended it to 30 days. The USPTO has now incorporated that change into its published director review process.

The updated process explains that the deadline may be extended in exceptional circumstances, provided that “the trial has not progressed meaningfully.” Examples of exceptional circumstances include:

  • Dismissal of all or substantially all claims in co-pending litigation
  • Findings of fact and conclusions of law rendering all or substantially all challenged claims invalid in litigation
  • Violation of a Sotera stipulation

Parties seeking an extension based on exceptional circumstances must email Director_PTABDecision_Review@uspto.gov, copy counsel for all parties, and explain in three sentences or fewer why an extension is warranted. The remaining parties will then be given an opportunity to respond.



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Back on track: Contextual inquiry required before applying § 112(f) to software claim element

by | Jul 16, 2026 |

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s indefiniteness ruling based on an insufficient means-plus-function analysis under 35 U.S.C. § 112(f) while affirming the denial of judgment as a matter of law (JMOL) and a new trial following a jury verdict finding a related patent invalid as anticipated. TrackTime, LLC v. Amazon.com Services LLC, Audible, Inc., Case No. 24-1102 (Fed. Cir. July 2, 2026) (Prost, Taranto, JJ; Kovner, J., sitting by designation.)

TrackTime sued Amazon and Audible for patent infringement, asserting two related patents directed to time-synchronized transcript technology for audio and video files. One patent relates to methods for annotating and sharing time-synchronized transcripts on mobile devices. The other relates to “tap-to-jump” technology, which allows a user to tap a word in a transcript and jump to the corresponding point in the associated audio or video file.

The district court issued a claim construction order finding the annotation-and-sharing patent invalid for indefiniteness. The court concluded that the claim terms “executable program code configured to facilitate annotation” and “executable program code configured to synchronously play multimedia” were means-plus-function terms that recited functions without sufficient corresponding structure. Because the specification did not adequately disclose structure for performing those functions, the district court held the terms indefinite.

The tap-to-jump patent proceeded separately to a jury trial. The jury found the asserted claim invalid on multiple grounds, including anticipation by a prior art program called LiveNote, and found no infringement. The district court later denied TrackTime’s post-trial motions for JMOL and a new trial. TrackTime appealed both the indefiniteness ruling on the annotation-and-sharing patent and the denial of JMOL and a new trial on the tap-to-jump patent.

The Federal Circuit vacated and remanded the indefiniteness ruling on the annotation-and-sharing patent, finding the district court’s § 112(f) analysis insufficient considering the Federal Circuit’s intervening decision in Dyfan, LLC v. Target Corp. (2022). In Dyfan, the Court explained that determining whether a limitation should be construed under § 112(f) requires a full contextual analysis, including whether the claim language recites sufficient structure when viewed in light of the specification, the surrounding claim language, and how a person of ordinary skill in the art would understand the term.

The Federal Circuit found that the district court did not conduct the full inquiry required by Dyfan because it failed to consider extrinsic evidence regarding usage in the field and how a skilled artisan would understand the disputed “executable program code” limitations. The Court declined to decide the § 112(f) issue in the first instance, leaving it to the district court on remand to determine whether the disputed limitations, read in context, recited sufficient structure for performing the claimed annotation and synchronous-play functions on a mobile device.

The Federal Circuit reached a different result on the tap-to-jump patent. TrackTime argued that LiveNote failed to disclose three limitations, namely “performing a data lookup,” a “mobile computing device,” and a “touch-sensitive input interface.” The Court rejected each argument. It found that TrackTime [...]

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Construing claims to fit the brand

by | Jul 9, 2026 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s claim construction and grant of a preliminary injunction, concluding that an accused infringer’s proposed construction would have produced the “highly improbable” result of excluding the patentee’s Orange Book-listed drug from the scope of the asserted claims. Otsuka America Pharmaceutical, Inc. v. Hetero Labs Limited, Case No. 25-2016 (Fed. Cir. July 1, 2026) (Bryson, Stoll, JJ.) (Dyk, J., dissenting in part)

Otsuka sued Hetero Labs, alleging that Hetero Labs’ generic drug product would infringe Otsuka’s patent rights. Otsuka moved for a preliminary injunction to prevent Hetero Labs from entering the market. The district court granted the motion, concluding that Otsuka was likely to succeed on its infringement claim. Hetero Labs appealed, arguing that the district court erred in construing the asserted claims.

The central dispute concerned how to calculate the patent’s claimed weight ratio. The representative claim requires administering dextromethorphan in combination with quinidine, with the proviso that the “weight to weight ratio of dextromethorphan to quinidine is 1:0.5 or less.” The district court construed “dextromethorphan” and “quinidine” to include their pharmaceutically acceptable salts. Under that construction, the claimed ratio is calculated using the full weight of the compounds as administered – for example, the full weight of dextromethorphan hydrobromide rather than only the dextromethorphan active moiety. Hetero Labs, by contrast, argued that when the compounds are administered as salts, the ratio must be calculated using only the weight of the active moieties.

The Federal Circuit affirmed the district court’s construction, concluding that the intrinsic evidence supported construing “dextromethorphan” and “quinidine” to include both the free base compounds and their pharmaceutically acceptable salts. The Court found that the patent claims, specification, and prosecution history consistently used those terms to encompass the compounds in the form in which they are administered. The Court also found that extrinsic evidence supported its construction. Relying in part on its 2007 decision in Osram GmbH v. ITC, the Court explained that Hetero Labs’ proposed construction would produce the “highly improbable” result of excluding Otsuka’s Orange Book-listed Nuedexta product – the very product the patent was intended to protect – from the scope of the claims. The Court also rejected Hetero Labs’ indefiniteness argument, concluding that the claims were not rendered indefinite simply because they encompassed formulations using either free bases or pharmaceutically acceptable salts.

Judge Dyk, dissenting in part, concluded that the district court’s construction was inconsistent with both the intrinsic evidence and the purpose of the claimed invention. According to Judge Dyk, the invention depended on maintaining a specific ratio of dextromethorphan to quinidine to ensure that:

  • Dextromethorphan achieved a therapeutic effect
  • Quinidine slowed the metabolism of dextromethorphan
  • Patients were not exposed to excessive amounts of quinidine

In his view, calculating the claimed ratio using the full weight of pharmaceutically acceptable salts rather than only the active moieties distorted that relationship by incorporating the weight of carrier ions that have no therapeutic significance. Judge Dyk also disagreed with the majority’s reliance [...]

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Unintentional delay: USPTO shortens threshold for additional information requirement

by | Jul 1, 2026 |

On June 24, 2026, the United States Patent and Trademark Office (USPTO) revised its practice of requiring additional information for certain petitions based on unintentional delay and changed the conditions under which the corresponding higher petition fee applies. The new rule is effective August 13, 2026.

In March 2020, the USPTO clarified that additional information would generally be required for petitions based on unintentional delay in the following three circumstances:

  • A petition to revive an abandoned application filed more than two years after the application became abandoned.
  • A petition to accept a delayed maintenance fee payment filed more than two years after the patent expired for nonpayment.
  • A petition to accept a delayed priority or benefit claim filed more than two years after the priority or benefit claim was due.

The USPTO required petitioners to provide additional information when a petition was filed more than two years after the relevant deadline. The additional information was intended to establish the facts and circumstances surrounding the entire period of delay and demonstrate that the entire delay was “unintentional.” The USPTO reasoned that the two-year threshold would reduce uncertainty and unpredictability concerning patent rights.

Under the new rule, the USPTO has shortened the threshold for requiring additional information from two years to one year. The USPTO explained that the one-year threshold will further increase certainty and predictability concerning patent rights by requiring applicants and patentees to provide an adequate explanation establishing that the entire delay was unintentional. According to the USPTO, such an explanation “safeguards a patentee’s rights by establishing on the record that the delay was unintentional, and protects the public by prohibiting revival, reinstatement, entry of a benefit or priority claim, or excuse of delay” when a party cannot establish that the delay was unintentional. The USPTO also explained that the revised threshold will promote efficiency by encouraging applicants to monitor their patent files and promptly address errors.

The new rule extends this one-year threshold to petitions seeking to excuse an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with international design applications. The USPTO emphasized, however, that it retains discretion to require additional information whenever there is a question whether a delay was unintentional, regardless of the length of the delay.

Because the revised rule increases the evidentiary requirements and the cost of reviewing petitions filed after an extended delay, the USPTO also revised the threshold for when the higher petition fee applies. Under the new rule, the higher fee applies to petitions filed more than one year after the applicable deadline, rather than more than two years after the deadline. According to the USPTO, applying the higher fee at the one-year threshold will further encourage applicants to file petitions promptly, benefiting applicants by reducing delays in the examination process and promoting greater certainty and predictability regarding patent rights.

Practice note: Petitioners filing a petition to revive an abandoned application more than one year after the application became abandoned, a petition to [...]

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