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ARTICLE · 23 SEPTEMBER 2025

New PTAB Guidance On Prior Adjudications

Mayer Brown
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On September 16, 2025, the Acting Director of the US Patent and Trademark Office (USPTO) issued another memorandum outlining new guidance for patent claims challenged before the Patent Trial and Appeal Board...

United StatesIntellectual Property
Amanda Streff Bonner
Amanda Streff Bonner
Daniel Kim
Daniel Kim
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On September 16, 2025, the Acting Director of the US Patent and Trademark Office (USPTO) issued another memorandum outlining new guidance for patent claims challenged before the Patent Trial and Appeal Board (PTAB). This guidance applies when the PTAB is reviewing patent claims (or substantially similar patent claims) that have already been adjudicated in a federal district court, the US International Trade Commission (ITC), or in a previous USPTO proceeding.

Key Takeaways

  • Duty to Explain: If the Board reaches a finding of fact or conclusion of law that is different from a prior ruling on the same or similar claims, it is now required to provide a detailed written explanation for the different outcome. This explanation must be articulated in its institution decision or final written decision.

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