United States Patent and Trademark Office/USPTO Archives

United States Patent and Trademark Office/USPTO

USPTO extends deadline for requesting director review of decisions instituting trial

by Tori Lazerson | Jul 16, 2026 | Patents

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.

Unintentional delay: USPTO shortens threshold for additional information requirement

by Kelsey Wun | Jul 1, 2026 | Patents

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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Not so bulletproof: USPTO rejects discretionary denial across seven IPR petitions

by Ashley K. Justice | Jun 25, 2026 | Patents

The United States Patent and Trademark Office (USPTO) denied a patent owner’s request for discretionary denial of seven inter partes review (IPR) petitions, further providing guidance on the factors to consider when exercising discretionary review. The decision was designated informative on June 15, 2026. Tesla, Inc. v. Bulletproof Property Mgmt., LLC, IPR2026-00204; -00205; -00219; -00222; -00227; -00228; -00229 (USPTO, June 15, 2026)

The USPTO Director previously issued a short notice referring Bulletproof’s (the patent owner) requests for discretionary denial and Tesla’s oppositions to them for merits consideration. Unlike many prior discretionary denial decisions that were issued with limited or no analysis, this decision directly addressed the parties’ arguments and explained why each weighed against discretionary denial of Bulletproof’s petitions.

First, Bulletproof argued that institution should be denied because of parallel district court litigation. The USPTO Director rejected that argument, noting that a trial date had not been set and that Tesla stipulated it would not pursue any invalidity grounds that were raised or reasonably could have been raised in the IPRs. According to the USPTO, the stipulation reduced the risk of duplicative proceedings and inconsistent outcomes, making institution a more efficient use of party and agency resources.

Second, Bulletproof further argued that institution should be denied because a key prior art reference had previously been presented to the USPTO. Although the reference appeared in information disclosure statements submitted during prosecution of related child applications, it was not presented during examination of the application from which the challenged patents claimed priority. The USPTO agreed with Tesla that the examiner had effectively overlooked the reference and that Tesla had demonstrated that the USPTO erred in a manner material to patentability.

Third, Bulletproof contended that settled expectations favored denial. The USPTO disagreed, finding no meaningful settled expectations given that the challenged patents were issued less than two years earlier. The relatively brief period between issuance and filing the petitions weighed against discretionary denial.

Lastly, the USPTO found Tesla’s evidence that the accused products are manufactured in the United States persuasive. Although Bulletproof asserted that between one-quarter and one-third of the products’ components originated abroad, it provided no supporting evidence. The USPTO’s analysis is consistent with its March 11 memorandum identifying factors relevant to institution decisions, including the extent to which the challenged products are manufactured domestically.

Practice note: Over the past year, about one in four petitions for institution survive the USPTO Director’s discretionary denial review. Denying Bulletproof’s petition for review of an institution decision underscores the USPTO’s focus on efficiency, avoidance of duplicative proceedings, and domestic manufacturing considerations when evaluating requests for discretionary denial. Institution petitioners may strengthen their position by demonstrating that institution will promote efficient resolution of validity issues, offering broad litigation stipulations where appropriate, and presenting evidence of US-based manufacturing activities.

AIA reviews: An alternative to litigation, not a second chance

by Kelsey Wun | May 28, 2026 | America Invents Act, Patents

Addressing the scope of discretionary institution under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) denied institution of inter partes review (IPR), concluding that the petitioner was attempting to use the Patent Trial & Appeal Board as a “second bite at the apple” after unsuccessfully litigating substantially similar invalidity issues in district court, contrary to the AIA’s purpose of providing a streamlined alternative to litigation. Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026).

Magnolia challenged the validity of Kurin’s patent directed to a blood-testing device in district court. After the district court excluded Magnolia’s invalidity expert based on disclosure deficiencies related to claim construction and a jury subsequently found the patent not invalid, Magnolia filed an IPR petition asserting substantially similar anticipation and obviousness grounds. The Director denied institution, concluding that Magnolia had already had a full and fair opportunity to litigate those issues in district court and was improperly attempting to relitigate them before the Board.

The Director explained that Congress created IPRs and post-grant reviews (PGRs) under the AIA to provide streamlined and cost-effective alternatives to district court litigation, not to facilitate repetitive validity challenges or expand parallel litigation. The decision noted that, in practice, many petitioners pursue AIA review alongside district court litigation, sometimes asserting overlapping invalidity theories or taking inconsistent positions across forums, thereby increasing costs and burdening both patent owners and the USPTO.

The Director further emphasized that AIA proceedings serve broader public-interest objectives beyond resolving private disputes, including promoting efficiency, fairness, predictability, and the integrity of the patent system. In exercising discretionary institution authority, the USPTO considers factors such as examiner error, inconsistent positions across forums, settled expectations, and whether institution would represent an appropriate use of USPTO resources.

Applying those principles, the Director concluded that Magnolia’s petition fell outside the intended purpose of AIA review because Magnolia was not using the Board as an alternative forum for resolving validity disputes, but instead to relitigate substantially similar invalidity theories after an unfavorable outcome in district court. The Director emphasized that Magnolia had already contested validity in district court using anticipation and obviousness grounds similar to those asserted in the petition and that the parties had expended substantial resources litigating those issues.

The Director rejected Magnolia’s argument that institution was warranted because no tribunal had adjudicated the merits of its anticipation and obviousness theories after the district court excluded its expert testimony. According to the Director, Magnolia had a full and fair opportunity to litigate those issues, and the exclusion of its expert resulted from deficiencies within Magnolia’s control. Permitting institution under those circumstances, the Director explained, would improperly allow Magnolia to obtain a “second bite at the apple” before the USPTO.

In discussing the public-interest considerations that inform discretionary institution decisions, the Director highlighted several precedential and informative decisions addressing issues such as substantial examiner error, inconsistent positions across forums, foreign sovereign petitioners, and settled expectations. The Director explained that these decisions reflect [...]

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How ex parte is ex parte reexam?

by Lisette Donewald | Apr 16, 2026 | Patents

Under a new procedure, announced in an Official Gazette Notice dated April 1, 2026, patent owners may now provide input before the United States Patent and Trademark Office decides whether to initiate an ex parte reexamination proceeding. Previously, while patent owners could participate after reexamination was ordered, they had no opportunity to submit arguments before the Office determined whether a request raised a substantial new question of patentability (SNQ). Under the new policy, patent owners may submit a limited pre-order paper to inform that threshold determination.

Ex parte reexamination is an administrative mechanism that allows third parties to challenge patent validity outside of court. Unlike inter partes review and post-grant review – both adjudicated by Patent Trial and Appeal Board judges – ex parte reexaminations are handled by the Central Reexamination Unit and initiation there turns on whether or not the request raises an SNQ.

The new procedure introduces an optional patent owner pre-order paper that must be filed within 30 days of service of the reexam request, with no extensions available. The submission is limited to 30 pages and must focus on why the cited prior art does not raise an SNQ. Supporting declarations are permitted and do not count toward the page limit, but incorporation by reference is not allowed.

The notice also places important limits on the scope of these submissions. The patent owner’s paper must be directed only to the issues raised in the request and should not address matters outside that scope. For example, the Office indicates that arguments regarding discretionary denial under 35 U.S.C. § 325(d) are not part of the SNQ determination and therefore should not be included.

Requesters have limited ability to respond to a patent owner’s pre-order paper. While responses are not ordinarily permitted, a requester may petition to file a reply (limited to 10 pages). Any such reply must be filed within 15 days of service of the patent owner’s paper and requires payment of a fee.

These changes may shift the dynamics of ex parte reexamination practice. Historically, institution decisions were made based solely on the requester’s submission. The new procedure allows patent owners to present arguments earlier in the process, potentially assisting the Office in evaluating whether the request satisfies the SNQ standard before ordering reexamination.

For challengers, this change increases the importance of the initial request. Requests should be drafted with the expectation that the patent owner may respond before institution and that opportunities to reply will be limited.

Picture this: AI enhancements to trademark search and examination

by Amit Kumar Saha, PhD | Apr 16, 2026 | Trademarks

The United States Patent and Trademark Office (USPTO) has announced several new artificial intelligence (AI) enhancements to its trademark search system and to the Trademark Center, continuing its broader effort to modernize trademark examination and improve both searchability and application quality.

One of the most notable updates is a new beta image-search capability within the USPTO’s trademark search system. This feature allows users to upload an image to identify similar marks with related design elements, functioning in a manner comparable to reverse image search tools available on commercial platforms. By enabling users to search for visually similar marks more intuitively, the tool may enhance clearance efforts, particularly for design marks that can be difficult to capture through traditional keyword-based searching.

The USPTO also announced that, beginning April 23, the Trademark Center will include a mark description and color claim generator. This feature is intended to assist applicants in drafting accurate and complete mark descriptions and color claims, which are often a source of inconsistency and procedural deficiency in trademark applications. By reducing guesswork and standardizing how such information is presented, the generator may help minimize office actions and improve overall application quality.

In addition to front-end user tools, the USPTO highlighted its Trademark Classification Agentic Codification Tool (Class ACT), an AI-driven system designed to automate certain back-end classification and coding functions. Class ACT assigns international classes to applications and generates design search codes and pseudo marks that make trademark records more easily searchable. Historically, these classification and coding steps could take months to complete, delaying examination and limiting searchability in the interim. The USPTO reports that Class ACT can perform these functions almost immediately, while still subject to human review to ensure accuracy and consistency.

Taken together, these developments reflect a continued shift toward integrating AI into both applicant facing and internal aspects of trademark prosecution. By accelerating classification, expanding search functionality, and assisting with application drafting, the USPTO seeks to streamline workflows while maintaining examiner oversight.

Practice note: Trademark applicants and practitioners may wish to incorporate the tools discussed above into clearance and filing strategies, particularly for design marks and applications involving complex descriptions or color claims. At the same time, AI generated results may surface a broader range of potentially relevant marks and classifications, underscoring the need for careful professional review. These tools are best viewed as supplements to – not substitutes for – informed legal analysis and strategic judgment.

Ticket to ride: USPTO requires counsel for foreign patent applicants

by Lauren Hong | Apr 2, 2026 | Patents

The United States Patent and Trademark Office (USPTO) adopted a final rule requiring foreign-domiciled patent applicants and patent owners to be represented by a registered US patent practitioner, signaling a meaningful procedural shift aimed at harmonization, efficiency, compliance, and fraud prevention. 91 Fed. Reg. 13510 (Mar. 20, 2026).

The USPTO explained that the rule is intended primarily to address recurring compliance and fraud concerns, such as false or improper certifications, including micro entity certifications, and other filings that misrepresent eligibility for fee reductions or expedited treatment. Because registered US practitioners are subject to the USPTO’s Rules of Professional Conduct and disciplinary authority, the agency views mandatory representation as a more reliable accountability mechanism.

The USPTO also cited practical administrative considerations, indicating that foreign pro se filings are more likely to be procedurally deficient and therefore consume disproportionate examination and processing resources, particularly when application papers are not in condition for publication or examination upon receipt.

The final rule clarifies how the requirement will operate in practice. While a foreign domiciled applicant may still obtain a filing date without a practitioner’s signature, any subsequent papers will not be entered unless signed by a registered US patent practitioner. This includes application data sheets, micro entity certifications, petitions, amendments, and other key prosecution documents. In some circumstances, the consequences for noncompliance may be significant. For example, if an unsigned application data sheet is treated merely as a transmittal letter, inventorship, priority, or benefit claims may not be properly established at filing, necessitating corrective petitions and additional cost. Likewise, requests that must be made at filing, such as nonpublication or prioritized examination requests, may be forfeited if not properly signed.

The USPTO emphasized that the rule is procedural rather than substantive. It does not alter the standards of patentability or the requirements for securing a filing date. The rule applies to all filings received on or after its effective date, regardless of the application’s effective filing date. The USPTO also noted that an applicant that believes it has been incorrectly designated as foreign domiciled may respond to that determination even before retaining counsel, although conclusory or unsupported assertions are unlikely to succeed.

Practice note: Foreign applicants and patent owners should now assume that US practitioner involvement is essential to preserve rights and avoid preventable procedural defects.

Virtually displayed: USPTO updates guidance for computer-generated interfaces and icons

by Taylor MacDonald | Mar 26, 2026 | Patents

To address evolving digital technologies, the United States Patent and Trademark Office (USPTO) issued supplemental guidance for examining design patent applications directed to computer-generated interfaces and icons. The guidance expands flexibility for applicants – particularly in projection, hologram, and virtual and augmented reality (PHVAR) contexts – while maintaining the statutory requirement that claimed designs be tied to an article of manufacture.

The USPTO first sought public input in 2020 on how the “article of manufacture” requirement under 35 U.S.C. § 171 should apply to emerging digital designs. Although many commenters urged recognition of PHVAR designs, subsequent guidance issued by the USPTO in 2023 did not fully address those technologies. The latest supplemental guidance responds to continued stakeholder feedback, particularly regarding the limitations imposed by prior drawing requirements.

Traditionally, applicants seeking protection for computer-generated icons or graphical user interfaces (GUIs) were required to depict a physical article of manufacture, such as a display screen, in solid or broken lines in the drawings. This requirement ensured that the claimed design was not merely a “transient or disembodied” image but was instead tied to a statutory article of manufacture.

The updated guidance removes the requirement that drawings depict a display panel or other physical article, provided that the title and claim clearly identify the relevant article of manufacture (e.g., a computer, computer display, or computer system). In such cases, the article need not appear in the drawings, so long as the application, taken as a whole, makes it clear that the claimed design is “for” an article of manufacture and not merely an abstract or disembodied image. For example, phrases such as “interface for a computer system” or “icon for a display panel” are sufficient to establish that the design is tied to a qualifying article.

The USPTO reiterated that the guidance “does not constitute substantive rulemaking and hence does not have the force and effect of law.” Examiners will continue to evaluate applications under all applicable patentability provisions, including §§ 102, 103, and 112.

Overall, the updated guidance provides applicants with greater flexibility in claiming and depicting computer-generated designs while reaffirming that such designs must remain tied to a qualifying article of manufacture.

USPTO signals new emphasis on US manufacturing in IPR and PGR institution decisions

by Lauren Hong | Mar 19, 2026 | Patents

The United States Patent and Trademark Office (USPTO) issued a Memorandum on March 11, 2026, signaling that the Patent Trial & Appeal Board may place increased weight on domestic manufacturing activity and the interests of small businesses when deciding whether to institute inter partes review (IPR) or post grant review (PGR).

The America Invents Act (AIA) established IPR and PGR proceedings as mechanisms for challenging the validity of issued patents before the Board. In establishing the framework for institution decisions, the statute directs the USPTO Director to consider broader policy concerns, including the impact on the US economy, the integrity of the patent system, and the efficient administration of the USPTO.

The Memorandum highlights concerns regarding the decline of US manufacturing, particularly in the electronics and computer sectors. Citing government studies, the USPTO notes that the offshoring of key industries has contributed to economic and national security vulnerabilities. According to the USPTO, these developments bear directly on the Director’s statutory obligation to consider the economic effects of Board institution decisions.

While some stakeholders contend that IPR and PGR proceedings protect US manufacturers and small businesses from weak patents, the USPTO observed that many of the most frequent petitioners are large companies that report little domestic manufacturing activity and have not made meaningful investments in US production. According to the Memorandum, this data prompted the USPTO to question whether the current discretionary institution framework adequately accounts for the interests of companies that do invest in domestic manufacturing.

As a result, the USPTO announced that certain factors related to US manufacturing and small businesses may now inform discretionary institution determinations. The USPTO encourages parties to address these considerations explicitly in their discretionary briefing.

When evaluating whether to institute an IPR or PGR, the Director may consider:

Whether the products accused of infringement in parallel litigation are manufactured in the United States or tied to domestic manufacturing investments.
Whether the patent owner produces competing products in the US.
Whether the petitioner qualifies as a small business that has been sued for patent infringement.

The Memorandum clarifies that manufacturing considerations are not limited to final assembly but may also encompass the production of components and situations in which products manufactured domestically are later processed abroad. For method claims, the relevant product for this analysis will be the device used to perform the claimed method.

These considerations apply to all to all IPRs and PGRs in which the due date for a patent owner discretionary brief has not yet elapsed.

USPTO Director IPR institution discretion survives APA challenge

by Amol Parikh | Feb 26, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that the United States Patent and Trademark Office’s (USPTO) framework for discretionary denials of inter partes review (IPR) is a general statement of policy, not a substantive rule, and therefore is exempt from the Administrative Procedure Act’s notice‑and‑comment requirements.

The USPTO Director issued a trio of related instructions to the Patent Trial & Appeal Board for its exercise of delegated non-institution authority, addressing the common situation where the IPR petitioner and the patent owner are already involved in a district court litigation over the patent at issue. Two of the instructions were in the form of precedential Board decisions, which set forth six exclusive factors, weighing in favor or against institution, that the Board must assess. These instructions are generally referred to as the NHK-Fintiv instructions that, as Board precedent, bind only the Board and not the USPTO Director.

Several IPR petitioners argued that the Director’s instructions to the Board effectively bind the USPTO as an agency and thus should have been promulgated through formal rulemaking.

The Federal Circuit disagreed, emphasizing that institution decisions rest ultimately with the USPTO Director. The Court explained that while the NHK-Fintiv framework provides guidance on how that discretionary authority may be exercised, the Director retains the ability to depart from the framework in any given case. To that end, the guidance does not carry the force and effect of law and does not impose legally binding obligations on the agency or the public.

Practice note: The decision reinforces the Federal Circuit’s post‑Arthrex theme that the Director enjoys broad and largely unreviewable discretion at the IPR institution stage.

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