IP UPDATE

Unintentional delay: USPTO shortens threshold for additional information requirement

by Kelsey Wun | Jul 1, 2026 | Patents

On June 24, 2026, the United States Patent and Trademark Office (USPTO) revised its practice of requiring additional information for certain petitions based on unintentional delay and changed the conditions under which the corresponding higher petition fee applies. The new rule is effective August 13, 2026.

In March 2020, the USPTO clarified that additional information would generally be required for petitions based on unintentional delay in the following three circumstances:

A petition to revive an abandoned application filed more than two years after the application became abandoned.
A petition to accept a delayed maintenance fee payment filed more than two years after the patent expired for nonpayment.
A petition to accept a delayed priority or benefit claim filed more than two years after the priority or benefit claim was due.

The USPTO required petitioners to provide additional information when a petition was filed more than two years after the relevant deadline. The additional information was intended to establish the facts and circumstances surrounding the entire period of delay and demonstrate that the entire delay was “unintentional.” The USPTO reasoned that the two-year threshold would reduce uncertainty and unpredictability concerning patent rights.

Under the new rule, the USPTO has shortened the threshold for requiring additional information from two years to one year. The USPTO explained that the one-year threshold will further increase certainty and predictability concerning patent rights by requiring applicants and patentees to provide an adequate explanation establishing that the entire delay was unintentional. According to the USPTO, such an explanation “safeguards a patentee’s rights by establishing on the record that the delay was unintentional, and protects the public by prohibiting revival, reinstatement, entry of a benefit or priority claim, or excuse of delay” when a party cannot establish that the delay was unintentional. The USPTO also explained that the revised threshold will promote efficiency by encouraging applicants to monitor their patent files and promptly address errors.

The new rule extends this one-year threshold to petitions seeking to excuse an applicant’s failure to act within prescribed time limits under the Hague Agreement in connection with international design applications. The USPTO emphasized, however, that it retains discretion to require additional information whenever there is a question whether a delay was unintentional, regardless of the length of the delay.

Because the revised rule increases the evidentiary requirements and the cost of reviewing petitions filed after an extended delay, the USPTO also revised the threshold for when the higher petition fee applies. Under the new rule, the higher fee applies to petitions filed more than one year after the applicable deadline, rather than more than two years after the deadline. According to the USPTO, applying the higher fee at the one-year threshold will further encourage applicants to file petitions promptly, benefiting applicants by reducing delays in the examination process and promoting greater certainty and predictability regarding patent rights.

Practice note: Petitioners filing a petition to revive an abandoned application more than one year after the application became abandoned, a petition to [...]

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La vida loca: First Circuit vacates summary judgment entered before meaningful discovery

by Richard (Rick) Evans | Jul 1, 2026 | Copyrights

The US Court of Appeals for the First Circuit vacated summary judgment in favor of singer Ricky Martin in a copyright infringement action, concluding that the district court improperly resolved key factual issues without allowing the plaintiff to obtain discovery. The Court also vacated the district court’s order invalidating the plaintiff’s copyright registration because that ruling depended on the same prematurely decided issues. Luis Adrián Cortés-Ramos v. Enrique Martin-Morales, a/k/a Ricky Martin, Case No. 24-1805 (1st Cir. June 12, 2026) (Thompson, Aframe, JJ.) (Barron, J., dissenting in part).

The dispute stems from Cortés-Ramos’s submission of a song and music video to a contest sponsored by a recording studio and Ricky Martin for inclusion on the 2014 FIFA World Cup official album. After Martin released the song “Vida,” Cortés-Ramos alleged that it infringed his copyrighted work. Martin defended on the ground that Cortés-Ramos had assigned his copyright to the recording studio by agreeing to the contest rules. Cortés-Ramos contended that he never received those rules despite signing documents acknowledging compliance with them.

The district court rejected Cortés-Ramos’s argument that the dispute belonged in arbitration because Martin was not a party to the arbitration agreement between Cortés-Ramos and the recording studio. The court then adopted an expedited summary judgment schedule that foreclosed discovery, concluding that Cortés-Ramos had assigned his rights to the recording studio and, as a result, that his copyright registration was invalid. Cortés-Ramos appealed.

The First Circuit agreed that the district court properly exercised jurisdiction because Martin could not be compelled to arbitrate under an agreement to which he was not a party. The Court cautioned, however, that factual findings in the litigation could have preclusive effect in the parallel arbitration between Cortés-Ramos and the recording studio.

The First Circuit nevertheless vacated the summary judgment ruling, explaining that Cortés-Ramos had repeatedly sought discovery regarding evidence uniquely within the possession of the recording studio and Martin. Although Cortés-Ramos had not formally moved under Federal Rule of Civil Procedure 56(d), the Court treated his repeated requests for discovery as functionally seeking Rule 56(d) relief. The Court found it fundamentally unfair to resolve dispositive issues while denying Cortés-Ramos access to evidence necessary to challenge Martin’s assertion that the contest documents assigned ownership of the work.

Because the district court entered summary judgment without permitting discovery on issues central to ownership of the copyright, the First Circuit vacated both the summary judgment order and the ruling invalidating Cortés-Ramos’ copyright registration and remanded for further proceedings.

Compound errors: Written description, not typographical error analysis, controls priority claim

by Taylor MacDonald | Jul 1, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed summary judgment that the asserted patent was invalid as anticipated because the provisional application to which it claimed priority did not provide adequate written description support for the claimed compound. The Court explained that the proper inquiry was whether the provisional demonstrated possession of the later-claimed subject matter, not whether a discrepancy in the provisional could be characterized as an obvious typographical error. Enanta Pharmaceuticals, Inc. v. Pfizer Inc., Case No. 25-1427 (Fed. Cir. June 23, 2026) (Lourie, Bryson, Chen, JJ.)

Enanta owns a patent direct to coronavirus inhibitors. The patent claimed priority to a July 20, 2020, provisional application. In April 2021, before Enanta filed a nonprovisional application correcting what it later characterized as a typographical error, Pfizer publicly disclosed the compound that ultimately became part of its COVID-19 treatment, Paxlovid®.

The dispute centered on a structural limitation defining an alkyl substituent. The provisional disclosed NHC(O)-C2-C12-alkyl while the asserted patent claimed NHC(O)-C1-C12-alkyl. According to Enanta, the “C2” designation in the provisional was an obvious drafting error that a person of ordinary skill in the art would recognize and mentally correct.

The district court granted summary judgment that the patent was anticipated because the asserted claims were not entitled to the provisional application’s filing date. Enanta appealed.
While the Federal Circuit affirmed, it clarified that the district court framed the issue incorrectly. Rather than asking whether a court could correct an alleged error in the provisional, the proper question was whether the provisional itself provided sufficient written description support for the later-claimed invention.

In clarifying the appropriate inquiry, the Federal Circuit rejected Enanta’s reliance on cases addressing correction of errors in issued patents and decisions concerning genus-species written description issues, explaining that those authorities did not govern the priority analysis presented here. Nor could the Court simply construe the provisional to correct the alleged mistake because the disclosure was subject to reasonable debate.

Applying the written description standard, the Federal Circuit concluded that “C2 is simply different from C1.” Because the provisional disclosed only the C2 structure, it did not demonstrate that the inventors possessed the later-claimed C1 embodiment as of the provisional filing date. The Court also found Enanta’s expert testimony insufficient to create a genuine issue of material fact, explaining that generalized opinions regarding carbon chain nomenclature and drafting errors elsewhere in the specification did not establish written description support for the specific claimed limitation.

Because the asserted claims were not entitled to the provisional application’s priority date, Pfizer’s intervening public disclosure constituted anticipatory prior art, rendering the patent invalid.

Not so bulletproof: USPTO rejects discretionary denial across seven IPR petitions

by Ashley K. Justice | Jun 25, 2026 | Patents

The United States Patent and Trademark Office (USPTO) denied a patent owner’s request for discretionary denial of seven inter partes review (IPR) petitions, further providing guidance on the factors to consider when exercising discretionary review. The decision was designated informative on June 15, 2026. Tesla, Inc. v. Bulletproof Property Mgmt., LLC, IPR2026-00204; -00205; -00219; -00222; -00227; -00228; -00229 (USPTO, June 15, 2026)

The USPTO Director previously issued a short notice referring Bulletproof’s (the patent owner) requests for discretionary denial and Tesla’s oppositions to them for merits consideration. Unlike many prior discretionary denial decisions that were issued with limited or no analysis, this decision directly addressed the parties’ arguments and explained why each weighed against discretionary denial of Bulletproof’s petitions.

First, Bulletproof argued that institution should be denied because of parallel district court litigation. The USPTO Director rejected that argument, noting that a trial date had not been set and that Tesla stipulated it would not pursue any invalidity grounds that were raised or reasonably could have been raised in the IPRs. According to the USPTO, the stipulation reduced the risk of duplicative proceedings and inconsistent outcomes, making institution a more efficient use of party and agency resources.

Second, Bulletproof further argued that institution should be denied because a key prior art reference had previously been presented to the USPTO. Although the reference appeared in information disclosure statements submitted during prosecution of related child applications, it was not presented during examination of the application from which the challenged patents claimed priority. The USPTO agreed with Tesla that the examiner had effectively overlooked the reference and that Tesla had demonstrated that the USPTO erred in a manner material to patentability.

Third, Bulletproof contended that settled expectations favored denial. The USPTO disagreed, finding no meaningful settled expectations given that the challenged patents were issued less than two years earlier. The relatively brief period between issuance and filing the petitions weighed against discretionary denial.

Lastly, the USPTO found Tesla’s evidence that the accused products are manufactured in the United States persuasive. Although Bulletproof asserted that between one-quarter and one-third of the products’ components originated abroad, it provided no supporting evidence. The USPTO’s analysis is consistent with its March 11 memorandum identifying factors relevant to institution decisions, including the extent to which the challenged products are manufactured domestically.

Practice note: Over the past year, about one in four petitions for institution survive the USPTO Director’s discretionary denial review. Denying Bulletproof’s petition for review of an institution decision underscores the USPTO’s focus on efficiency, avoidance of duplicative proceedings, and domestic manufacturing considerations when evaluating requests for discretionary denial. Institution petitioners may strengthen their position by demonstrating that institution will promote efficient resolution of validity issues, offering broad litigation stipulations where appropriate, and presenting evidence of US-based manufacturing activities.

Up in smoke: Eighth Circuit sends Lanham Act dispute to state court

by Lauren Hong | Jun 25, 2026 | Trademarks

The US Court of Appeals for the Eighth Circuit affirmed dismissal of a trademark dispute on forum non conveniens grounds, finding that the Lanham Act claims concerning ownership and scope of trademark rights arose out of a stock purchase agreement and therefore belonged in the state court designated by the parties’ forum selection clause. Vaughn Boyd v. Deadwood Tobacco Company, Case No. 25-1659 (8th Cir. June 8, 2026) (Smith, Kelly, Grasz, JJ.)

The dispute stemmed from the 2018 sale of Deadwood Tobacco, a South Dakota cigar business associated with the DEADWOOD family of marks. Prior to the sale, Deadwood Tobacco and Drew Estate had collaborated on a successful cigar line sold under names including Sweet Jane, Fat Bottom Betty, and Crazy Alice. The stock purchase agreement reserved trademark registrations associated with those three brands from the transaction. After acquiring the company, the new owners launched additional cigar products under other Deadwood Tobacco branding. Vaughn Boyd and Drew Estate (the sellers under the agreement) subsequently alleged that the new products infringed trademark rights they had retained under the agreement.

After the parties failed to reach a resolution, Boyd and Drew Estate filed suit under the Lanham Act in federal district court in Florida. The district court concluded that the asserted trademark claims arose out of the stock purchase agreement and therefore fell within the scope of the agreement’s South Dakota forum selection clause.

Following that dismissal, Deadwood filed a related contract suit in South Dakota state court and Boyd and Drew Estate countered with a Lanham Act claim in federal district court in South Dakota. The South Dakota district court likewise determined that the dispute arose from the agreement and that the forum selection clause was valid and mandatory. Boyd and Drew Estate appealed the district court decision.

On appeal, Boyd and Drew Estate argued that their claims arose exclusively under federal trademark law rather than contract law and therefore did not “arise out of” the agreement. They further contended that the forum selection clause was permissive rather than mandatory and could not divest federal courts of jurisdiction. Finally, they asserted that public policy favored adjudication of Lanham Act claims in federal court.

The Eighth Circuit rejected each argument. Beginning with trademark ownership, the Court emphasized that trademark rights are inseparable from the goodwill they represent. Because determining the scope of Boyd and Drew Estate’s retained trademark rights required analyzing what goodwill, if any, accompanied the reserved marks, resolution of the dispute necessarily depended on interpreting the stock purchase agreement. The Court therefore concluded that the trademark claims arose out of the agreement, notwithstanding that they were pleaded solely under the Lanham Act.

The Eighth Circuit also found that the forum selection clause was mandatory. The agreement provided that disputes arising out of the agreement “shall” be venued in Lawrence County, South Dakota, and that the Lawrence County circuit court “shall have jurisdiction.” Applying South Dakota law, the Eighth Circuit found the language unambiguously mandatory and concluded that the reference to [...]

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