Posts in USPTO

Broad functional genus claiming was previously a standard strategy for innovators seeking IP protection for antibodies. Prior guidance from the USPTO, including the “newly characterized antigen” test, encouraged broad claiming of antibodies based upon their function alone. For decades, that effectively allowed innovators to claim much more than they in fact discovered in practice. In the wake of the Supreme Court’s Amgen decision, courts have adopted the reasoning articulated in Amgen to strike down functional genus antibody claims for lacking either enablement or written description.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied a request for mandamus relief by Lambeth Magnetic Structures, LLC, who asked the CAFC to direct the  U.S. District Court for the Western District of Pennsylvania to vacate its order staying a patent infringement suit pending resolution of an ex parte reexamination (EPR) of the asserted patent claims.

The United States government, on behalf of President Donald Trump, abandoned its application to register the trademark BOARD OF PEACE on July 3, after filing an express abandonment, according to U.S. Patent and Trademark Office (USPTO) documents. The application was a source of controversy earlier this year, when Representative Jamie Raskin (D-MD), Ranking Member of the House Judiciary Committee, sent a letter to USPTO Director John Squires pressing him to answer questions about the Office’s role in filing the trademark application on behalf of the Trump Administration.

Most patent attorneys know the Jerome Lemelson story—the prolific inventor whose aggressive use of continuation and continuation-in-part applications resulted in some patents remaining pending for decades, earning the label of “submarine patents.” While Lemelson’s tactics sparked controversy and eventual legislative reforms aimed at curbing undue delays, one principle emerged clearly from his experiences: new matter in patent law must receive a new priority date…. To patent applicants, 35 U.S.C. § 132(a) means that the detailed description of their non-provisional patent applications must be perfect when filed, and that even if new information is discovered after filing, no changes can be made. In practice, this is an extremely harsh standard, and is disproportionately punitive to small business inventors who lack the deep pockets to absorb repeated filing costs and years of delay.

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a Per Curiam opinion, today affirmed a Trademark Trial and Appeal Board (TTAB) ruling that the mark MON AMI is confusingly similar to the previously registered mark, AMÌ, and that MON AMI could therefore not be registered.

On the same day it granted a trademark petition, the U.S. Supreme Court denied certiorari in a number of patent cases as its term nears an end, including the closely-watched case of Hyatt v. Squires, which challenged the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) approach to the doctrine of prosecution laches. In addition to the Hyatt case, the Court also denied cert today in Finesse Wireless LLC v. AT&T Mobility LLC, et. al.; Polar Electro Oy v. Firstbeat Technologies Oy; and Ortiz & Assoc. Consulting, LLC v. Vizio, Inc.

Last week, U.S. Patent and Trademark Office (USPTO) Director John Squires issued a decision denying institution of inter partes review (IPR) proceedings petitioned by tech giant Apple to challenge patent rights owned by WeCrevention, the intellectual property holding subsidiary of Taiwanese semiconductor developer Etron Technology. Director Squires’ ruling continues the ongoing crackdown against gamesmanship at the Patent Trial and Appeal Board (PTAB) by petitioners pursuing positions inconsistent with district court litigation to increase their odds of invalidating competitor patent rights.

In an order issued earlier this week, U.S. Patent and Trademark Office (USPTO) Director John Squires granted Director Review and partially vacated a Patent Trial and Appeal Board (PTAB) Final Written Decision that found several claims of U.S. Patent No. 11,828,425 unpatentable as obvious. Squires remanded the case after finding that the Board did not explain why its conclusion as to claim 2 differed from the outcome of a parallel district court proceeding on the same claim.

Recent developments in ex parte Corteva Agriscience LLC (Reexamination Control 90/019,130; Patent 10,947,555 B2) clarify obviousness-type double patenting (ODP) in the context of patent families with multiple continuations and varying patent term adjustments (PTA)…. In Corteva, the Patent Trial and Appeal Board (PTAB) distinguished Cellect and extended Allergan by holding that a child patent (here, the ’555 patent) is not unpatentable for ODP if it does not expire later than the original patent in the family, including any PTA awarded to the original patent. Below is a figure from Corteva.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Sansone v. United States Patent and Trademark Office, affirming the U.S. District Court for the Eastern District of Virginia’s dismissal of a pro se inventor’s lawsuit and denial of his motion for summary judgment. Stanley Sansone filed U.S. Patent Application No. 16/255,511 on January 23, 2019, seeking a patent for a wearable thermal device, but a patent examiner rejected all claims. The Patent Trial and Appeal Board (PTAB) affirmed the rejection, after which Sansone sought continued examination.

A trademark dispute between The Church of Jesus Christ of Latter-day Saints (“the Church”) and the Mormon Stories Podcast (“the Podcast”) has  this week become a broader fight over the Church’s Mormon-related trademark portfolio. The Church’s complaint, filed on April 17, 2026, alleged that the Podcast’s name, branding, and use of Church imagery create a likelihood of confusion regarding whether the Podcast is actually affiliated with the Church. Meanwhile, the Podcast’s answer to the complaint and counterclaim goes further. Rather than merely denying infringement, the Podcast is now seeking cancellation of multiple Mormon-related trademarks owned by the Church..

The U.S. Patent and Trademark Office (USPTO) on late Monday issued a notice designating as precedential a Sua Sponte Director Review Order of a Patent Trial and Appeal Board (PTAB) decision granting institution in three inter partes review (IPR) proceedings. The order waived the 14-day deadline for requesting Director Review of a decision to institute trial and denied institution under Hulu, LLC v. Piranha Media Distribution, LLC, IPR2024-01252, Paper 27 (Director Apr. 17, 2025).

The U.S. Supreme Court today denied a petition for certiorari in Dolby Laboratories Licensing Corporation v. Unified Patents LLC, a case that asked the High Court to consider whether patent owners have a right to require Patent Trial and Appeal Board (PTAB) petitioners to identify all real parties in interest (RPIs) in inter partes review (IPR) proceedings. The petition stems from a precedential June 2025 U.S. Court of Appeals for the Federal Circuit (CAFC) decision dismissing Dolby Labs’ appeal from the PTAB for lack of an injury-in-fact to confer Article III standing. The Federal Circuit held that, although patent owners might have the right to dispute unnamed RPIs during IPR proceedings, the America Invents Act (AIA) does not give patent owners a freestanding right to identify RPIs.

The Supreme Court of the United States denied certiorari today in Game Plan, Inc. v. Uninterrupted IP, LLC, leaving in place a precedential decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) that affirmed the Trademark Trial and Appeal Board’s (TTAB’s) cancellation of Game Plan’s trademark registration and dismissal of its opposition to six intent-to-use applications filed by Uninterrupted IP, LLC (UNIP).