PTAB/USPTO Update - August 2025

USPTO News:

• On July 31, 2025, Acting Under Secretary of Commerce for Intellectual Property and Director of the USPTO Coke Morgan Stewart issued a memorandum indicating that the USPTO "will enforce and no longer waive the requirement of 37 C.F.R. § 42.104(b)(4) ... that a petition for inter partes review (IPR) 'must specify where each element of the claim is found in the prior art patents or printed publications relied upon.'" Under this policy, "applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not 'prior art consisting of patents or printed publications' ... may not be used to supply a missing claim limitation."
• On July 23, 2025, the USPTO announced that all hearings before the Patent Trial and Appeal Board (PTAB) will be held in-person at one of the USPTO's offices, effective September 1, 2025, except upon a showing of good cause. The public can still attend remotely by requesting access from PTABHearings@uspto.gov at least three days in advance.
• On July 17, 2025, the USPTO released the new artificial intelligence (AI)-based DesignVision tool to design patent examiners for searching prior art.
• On July 11, 2025, the USPTO announced that it had expanded its accelerated grant program to allow for accelerated examination in Belize, Guatemala, and the United Arab Emirates to applicants who previously received related patents in the United States.
• On July 9, 2025, Acting Director Stewart addressed the World Intellectual Property Organization (WIPO) regarding traditional knowledge and genetic resources, cost-effectiveness of the Patent Cooperation Treaty (PCT) system, and promotion of intellectual property rights.

Department of Commerce News:

• On July 28, 2025, the Wall Street Journal wrote that U.S. Commerce Secretary Lutnick has publicly discussed charging patent holders an additional fee that represents a percentage of the patent's value to raise additional funds. According to the article, the "Commerce Department officials are discussing charging patent holders 1% to 5% of their overall patent value," which "is being considered by [Secretary] Lutnick as part of his plans to raise revenue and narrow the government's budget deficit." Various details have not been shared, including "whether the new fee would replace the existing flat fees or add to them."

General Notices:

• Design Vision: A New Artificial Intelligence-Powered Image Search Tool, __ OG __ (August 12, 2025) (providing notice of "Design Vision, a new artificial intelligence (AI)-based image search tool, to the Patents End-to-End (PE2E) search suite, to enhance efficiency and effectiveness of prior art searches.")
• Performance Review Board, 90 Fed. Reg. 35285 (July 25, 2025) (providing notice of appointment of the following to the USPTO's Performance Review Board for Senior Level and Senior Executive Service positions at the USPTO: Coke M. Stewart, Chair, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO William Covey, Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director of the USPTO Christopher J. Shipp, Chief of Staff, USPTO Anne T. Mendez, Vice Chair, Acting Chief Administrative Officer, USPTO Valencia Martin-Wallace, Acting Commissioner for Patents, USPTO).
• Agency Information Collection Activities; Submission to the Office of Management and Budget for Review and Approval; Comment Request; Patents External Quality Survey, 90 Fed. Reg. 34643 (July 23, 2025) (information collection regarding "USPTO Quality Survey is designed to measure opinions about the services the USPTO provides to its patent application customers").
• Agency Information Collection Activities; Submission to the Office of Management and Budget for Review and Approval; Comment Request; Legal Processes, 90 Fed. Reg. 30053 (July 8, 2025) (information collection regarding "requirements [for service of process] related to civil actions and claims involving current and former employees of the United States Patent and Trademark Office (USPTO)....").
• Statutory Penalties for False Assertions or Certifications of Small and Micro Entity Status, 1536 O.G. 204 (July 8, 2025) (providing notice that "[t]he USPTO will begin issuing a combined notice of payment deficiency and order to show cause as to why a fine should not be assessed ('combined notice and order'), when the USPTO makes a preliminary determination that a pending patent application ('application') or patent contains a false assertion or certification [of small or micro entity status] that resulted in the payment of at least one fee in an unentitled reduced amount.").
• Request for Comments on OECD's Working Party on Countering Illicit Trade (WP-CIT) Draft Voluntary Guidelines for Countering Illicit Trade in Counterfeit Goods on Online Marketplaces; Reopening of Comment Period, 90 Fed. Reg. 29851 (July 7, 2025) (reopening comment period for May 19, 2025 notice requesting input on "Draft Voluntary Guidelines for Countering Illicit Trade in Counterfeit Goods on Online Marketplaces. See Request for Comments on OECD's Working Party on Countering Illicit Trade (WP–CIT) Draft Voluntary Guidelines for Countering Illicit Trade in Counterfeit Goods on Online Marketplaces. 90 FR 21291.").

Final Rules

• 2025 Increase of the Annual Limit on Accepted Requests for Prioritized Examination, 90 Fed. Reg. 29990 (July 8, 2025) ("[E]xpand[ing] the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year to 20,000.").

Interim Rules

• There are no new interim rules.

Proposed Rules

• There are no new proposed rules.

Legislation:

• On August 1, Senators Margaret Wood Hassan and Josh Hawley introduced S.2658 - A bill to require sponsors of drug applications and holders of approved applications to provide certain submissions and communications to the Food and Drug Administration and the United States Patent and Trademark Office.
• On July 21, Representative Joe Neguse introduced H.R.4570 - Interagency Patent Coordination and Improvement Act of 2025, which would "establish an interagency task force between the United States Patent and Trademark Office and the Food and Drug Administration for purposes of sharing information and providing technical assistance with respect to patents, and for other purposes."
• On July 17, the Senate unanimously agreed to S.Res.314 - A resolution recognizing the importance of trademarks in the economy and the role of trademarks in protecting consumer safety, by designating the month of July as "National Anti-Counterfeiting and Consumer Education and Awareness Month."
• On July 15, Senators Peter Welch, Josh Hawley, and Amy Klobuchar introduced S.2276 - ETHIC Act, which would, among other things, only allow one patent from the same patent group, which is defined as patents subject to terminal disclaimers, to be asserted against defendants in generic or biosimilars infringement actions.

PTAB Decisions:

• New Precedential PTAB Decisions

• New Informative PTAB Decisions

• New Director Reviews of Board Decisions

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