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ARTICLE · 02 MAY 2024

USPTO Releases Notice Of Proposed Rule Making Codifying Several Precedential Case Factors

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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On April 19, the USPTO released a Notice of Proposed Rulemaking ("NPR") that proposes modifications to the IPR and PGR rules for (i) briefing discretionary denial issues...

United StatesIntellectual Property
Safiya Aguilar
Safiya Aguilar
Joshua Goldberg
Joshua Goldberg
Amanda Murphy
Amanda Murphy
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On April 19, the USPTO released a Notice of Proposed Rulemaking ("NPR") that proposes modifications to the IPR and PGR rules for (i) briefing discretionary denial issues, (ii) 325(d) Considerations, (iii) instituting parallel and serial petitions, and (iv) terminating these proceedings after a settlement agreement. While the NPR codifies most of the precedential Board decisions relating to discretionary denials, it does not codify or mention the Fintiv factors relating to co-pending litigation.

Separate Briefing for Discretionary Denial Issues:

Acknowledging that "most commenters" responding to the USPTO's Advanced Notice of Proposed Rulemaking "favored separate briefing to discuss discretionary denial issues," the NPR provides a "separate briefing process for discretionary institution arguments."

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