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**INVENTOR GROUPS LACKED STANDING TO CHALLENGE PATENT COVER’S “RIGHT TO EXCLUDE” LANGUAGE
US Inventor, Inc. v. Squires, 24-2378 — On August 21 in an opinion by Judge KOVNER, sitting by designation, the Federal Circuit affirmed a district court’s dismissal of a suit brought by inventor-advocacy groups against the USPTO for lack of standing. The groups argued that the reference to the “right to exclude” on the cover of patents is misleading following the Supreme Court decision in eBay Inc. v. MercExchange and sued to compel the U.S. Patent & Trademark Office to revise it. They claimed standing because the language forced the organizations to divert resources into member education and had personally misled individual inventor-members.
The Federal Circuit held that spending time and money to advise members, by itself, did not create standing under FDA v. Alliance for Hippocratic Medicine. And in contrast to Havens Realty Corp. v. Coleman, the plaintiffs here did not allege interference with core business activities. It also noted each member declarant had admitted knowledge of eBay so faced no ongoing risk of being misled.
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO COMMENTS ON PROPOSED REAL-PARTY-IN-INTEREST DISCLOSURE RULE FOR EX PARTE REEXAMINATION
On Friday IPO President John Cheek submitted comments to the USPTO on IPO’s behalf regarding a proposed rule requiring real-party-in-interest disclosure for third-party ex parte reexamination requests. The comments acknowledged the legitimate concern that a real party in interest or privy could be used to evade statutory estoppel under 35 U.S. C. § 315(e) or § 325(e) but argued the proposed rule is broader than necessary to address that issue. IPO noted that ex parte reexamination has long permitted anonymous third-party requests for legitimate reasons and that Congress declined to impose a real-party-in-interest requirement on ex parte reexamination requesters under 35 U.S.C. § 302, in contrast to the express requirement Congress wrote into IPR and PGR petitions under § 312(a)(2).
Only a small percentage of ex parte reexamination requests involve patents previously challenged in an IPR or PGR, suggesting a universal disclosure requirement is unnecessary. IPO recommended the USPTO consider a narrower disclosure trigger tied to cases involving an IPR/PGR final written decision. IPO also called for clarity on the Central Reexamination Unit’s role in making RPI determinations, confidentiality safeguards (including FOIA and subpoena handling), and a correction process for incomplete disclosures.
USPTO DIRECTOR SQUIRES SWEARS IN INITIAL PPAC AND TPAC MEMBERS
On Friday in a hybrid in-person/virtual ceremony, USPTO Director JOHN A. SQUIRES swore in four initial members of the Patent Public Advisory Committee (PPAC) and two initial members of the Trademark Public Advisory Committee (TPAC). The PPAC members are JOHN DUFFY (University of Virginia School of Law), BILL JOHNSON (Independent Inventor), TRACY-GENE DURKIN (Sterne, Kessler, Goldstein & Fox), and MAKAN DELRAHIM (Paramount). The TPAC members are COURTNEY LAGINESS (Worldpay) and DAVID GOODER (former USPTO Commissioner for Trademarks). A USPTO LinkedIn post announcing the ceremony indicated that the committees bring outside expertise, candor, and real economy sensibilities that help the USPTO do more for American ingenuity.
PPAC and TPAC were created by the American Inventors Protection Act of 1999 to advise the Secretary of Commerce and USPTO Director on patent and trademark operations. Under 35 U.S.C. § 5, each committee must have nine voting members, chosen to represent the diverse users of the USPTO. At least 25% of PPAC members must be small entity representatives and at least one independent inventor must always be included. Each committee also has three nonvoting members representing USPTO-recognized labor organizations. Members serve staggered three-year terms.
By statute, each committee must review USPTO policies, goals, performance, budget, and user fees and advise the Director accordingly. Members have access to USPTO records and information, apart from personnel matters, privileged material, and confidential patent application data. Committee meetings are generally open to the public.
Each must publish an annual report in the Official Gazette within 60 days of the fiscal year’s end, and the committees play an integral role in USPTO fee adjustments. The USPTO must issue fee adjustment proposals to the committees who are then charged with gathering written public comments, holding public hearings, and delivering written reports with recommendations on the fee adjustments to the USPTO Director.
IPO ANNUAL MEETING EXPO HALL FEATURES IP HUB PRESENTATIONS
The 2026 Annual Meeting IP Expo Hall features dozens of companies and organizations showcasing the latest products and services to meet your organization’s IP needs. This year’s IP Expo will also feature the return of the IP Hub, an educational lounge that features short 15-minute presentations during breaks for attendees to learn more about products and resources. We encourage attendees to meet face-to-face with our exhibitors to see firsthand the innovative products and services that will help your organization find solutions to its challenges. IP Hub Presentations include:
- AI for Patent Practice – What Every Firm Should Look For
- Securing Innovations – Korea’s Strong IP Enforcement
- IP Trivia Showdown – Fast Answers. Big Prize. Surprising IP Facts.
- Inside an AI-Enabled FTO Workflow
- From Patent Signals to Decision-Ready Monetization Opportunities
- JPO as a Global Partner – Advancing Value for International IP Stakeholders
- Foreign-Language Patent Applications in Japan
- Model Context Protocol – Connecting AI to Verifiable IP and R&D Data
- How AI is Redefining Corporate IP Departments
- Vetting AI Vendors – A Due Diligence Framework for IP Practice
Presentation descriptions and times are listed in the brochure on the IPO Annual Meeting website under the “Program” tab.