PTAB/USPTO Update - February 2023

PTAB/USPTO Update - February 2023

Client Alert



  • On January 18, the USPTO announced the launch of the IP Identifier tool, which is designed to enable users who are less familiar with intellectual property to identify whether they have adequate protections to support their business, invention, or brand. 
  • The USPTO is seeking public comments on its draft 2022-2026 Strategic Plan.  The deadline for submissions is February 17, 2023, and the final strategic plan will be posted on the strategic planning webpage in spring 2023.

Notices, Guidance, and Requests

Final Rules

Interim Rules

  • There are no new interim rules.

Proposed Rules

  • There are no new proposed rules.

PTAB Decisions

  • New Precedential PTAB Decisions 
  • There are no new precedential PTAB decisions.
  • New Informative PTAB Decisions 
  • There are no new informative PTAB decisions.

New Requests for POP Review

  • Darfon Innovation Corp. v. Shipman (IPR2022-01008) [Requesting POP review of Institution Decision, presenting the questions of (1) “Whether references that are not statutory priority art can form the basis for a Section 325(d) denial”; (2) “Whether references that post-date the priority date applied by the examiner can form the basis for a Section 325(d) denial”; and (3) “Whether a combination of references, not specifically considered in combination by the examiner, can form the basis for a Section 325(d) denial”]
  • Google LLC v. Jawbone Innovations, LLC (IPR2022-00888) [Requesting POP review of Institution Decision on the basis that “[t]he Board’s decision in IPR2022-00888 contradicts its decision to institute in IPR2022-00797 (Paper 12), which involved the same claim features and the same prior art” and because the Board’s decision “incorrectly holds that: (1) one teaching in the prior art cannot teach two overlapping claim features and (2) an independent claim does not cover an embodiment that one of its dependent claims covers”]



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