USPTO TO REQUIRE IPR PETITIONS TO SPECIFY WHERE EACH CLAIM ELEMENT IS FOUND IN PATENT OR PRINTED PUBLICATION RELIED UPON
Last week USPTO Acting Director COKE STEWART issued a memorandum to Patent Trial and Appeal Board judges announcing that the USPTO will require IPR petitions filed on or after September 1, 2025, to “specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Petitioners “may not use applicant admitted prior art, expert testimony, common sense, [or] other evidence (collectively, general knowledge) that is not ‘prior art consisting of patents or printed publications’ to supply a missing claim limitation,” but “may still use general knowledge to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art.”
IPO ANNUAL MEETING SESSION: A LEAP OF (BAD) FAITH
Register for IPO’s Annual Meeting, September 7-9, and attend a session on “A Leap of (Bad) Faith: Dealing with Trademark Pirates,” organized by IPO’s International Trademark Law & Practice Committee. The session will focus on developments in the US, European Union and China relating to bad faith trademark filings. Speakers include YEN FLORCZAK (3M Innovative Properties Co.); JIMMY HUANG (East IP); and JENNIFER MIKULINA (McDermott Will & Emery LLP). The discussion will be moderated by ANTHONY PRENOL (CPST Intellectual Property).
The panel will address issues such as: best practices for recovering pirated marks, recent developments in pirate practices, registry responses to fraudulent behavior (the use of borrowed attorney credentials), legislative initiatives, innovations in judicial practice (the use of unfair competition law) and other strategies adopted by trademark owners. Visit the website for additional information and to register.
BRAZIL ENACTS CLEAR REGULATIONS FOR ACQUIRED DISTINCTIVENESS IN TRADEMARKS
For the first time, the Brazilian Patent and Trademark Office (INPI) has established rules for the acknowledgement of secondary meaning, effective on November 28, 2025. Under the new regulation, requests for recognition of acquired distinctiveness can be submitted at the time of filing of a trademark application, within 60 days of its publication, within an appeal of a rejection or in response to pre-grant or post-grant oppositions. For pending cases, requests will be exceptionally accepted within 12 months counted from the effective date of the new rules.
Once requested, applicants will have 60 days to provide evidence of (1) at least three years of continuous use of the trademark and (2) its exclusive association with the applicant’s goods or services by a relevant portion of Brazilian consumers. INPI may issue office actions to request additional information, and rejections can be appealed. Thank you to Latin American Practice Committee Co-Vice Chair RICARDO NUNES (Lefosse) and Secretary RAFAEL SALOMÃO (Lefosse) for submitting this news item on behalf of the Committee.
JOIN IPO’S WELLNESS COMMITTEE FOR WEEKLY GUIDED MEDITATION SESSIONS
Join IPO’s Wellness Committee for our second weekly mindfulness meditation session on Thursday, August 7 at 3:00pm ET. This session will be 25-35 minutes long and will be designed to allow members to experience the benefits of a regular meditation practice. These weekly sessions will offer evidence-based Mindfulness-Based Stress Reduction (MBSR) via the Palouse Mindfulness program. This series offers practical tools to reduce stress, enhance focus, and support better decision-making.*
Why mindfulness for IP professionals?
- Reduces stress and emotional reactivity (Goldin & Gross, 2010)
- Improves focus and working memory (Jha et al., 2010)
- Increases cognitive flexibility and creativity (Moore & Malinowski, 2009)
- Strengthens executive brain function (Tang et al., 2015)
Each session includes guided practice, reflection, and insights tailored to high-performance, high-cognition work environments. No experience necessary—just bring an open mind. To RSVP, please contact Wellness Committee Secretary Brian McGuire.
*We are not mental health professionals and cannot provide medical advice. Our goal is to enhance awareness in this area and provide resources for support.