Imagine That IP Law Blog

In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d). Early PTAB decisions like Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), and Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) (precedential), reinforced that message.

Similarly, PUMA North America, Inc. v. NIKE ... Read More ›

The Patent Eligibility Restoration Act of 2025 (PERA 2025) is a proposed amendment to 35 U.S.C. § 101 that establishes clearly defined statutory exceptions to patent eligibility and eliminates all judicial exceptions. Support for PERA 2025 has been somewhat mixed: companies facing infringement lawsuits oppose its expansion of patentable subject matter, while firms in the life sciences sector, particularly in diagnostics and biotechnology, have tended to support it.

Section 101 Patent Subject Eligibility Unpredictability
Any discussion of PERA 2025 must begin with 35 U.S.C ... Read More ›