New Mechanism to Cleanse Inequitable Conduct
Yesterday, the USPTO issued a Notice of Proposed Rule Making to outline the procedures for conducting supplemental examination (here). (See the earlier discussion on the related changes to patent reexamination fees provided by this Notice).
As a reminder, the America Invents Act provided supplemental examination (SE) as a mechanism to cure inequitable conduct before the USPTO. Upon submission of SNQs that explain potential issues for supplemental examination, the Office may initiate a type of “re-examination” that follows the procedures for ex parte patent reexamination with some modification. In essence this proceeding was based on a “but for” theory later adopted in Therasense.
In addition to proposing a steep price to initiate SE and conduct the related reexamination proceeding, (roughly $22K) the Office has outlined the rules for conducting supplemental examination.
Read the rest of this entry »
Proposed Rule Package to Significantly Hike Fees
As mentioned on Monday, the proposed rule package for supplemental examination is expected this week; in fact, it will publish tomorrow. In addition to the expected rule package on the new supplemental examination proceeding, the USPTO has included proposed revisions to existing patent reexamination fees.
The existing fee for requesting ex parte patent reexamination is $2520. The Notice proposes to raise this fee, to account for actual agency costs for conducting the proceeding, to a whopping $17,750. The notice also raises the fees for filing a petition (using the same justification) in either ex parte or inter partes patent reexamination to $1932. This new fee will apply to any petition filed under Rules 181,182, or 183. (The petition fee increase excludes extensions of time and some other minor petitions). Current fees are on the order of $200-$400. It may be that the increase in petition fees will help reign in the abusive practices currently plaguing the Office.
Certainly the Office should raise reexamination fees as they are presently quite low, but the jump to the proposed levels, especially as it relates to the hefty request fees, is unlikely to be received very favorably by the public. Read the rest of this entry »
Winter 2012 – New Rules
Early 2012 is shaping up to be an exciting time for patent law, particularly for those focused on post grant patent practice.
USPTO–As to the new rule packages necessary to implement the new post grant mechanisms of the America Invents Act (AIA), it is rumored that the supplemental examination rules will issue this week. Due to an administrative delay with the Office of Management & Budget (OMB), the more extensive IPR and PGR rule packages are expected to publish next week. Earlier this month, some less extensive rules packages issued on patent reissue oath practice and changes to ex part patent reexamination practice.
CAFC– The court has agreed to reconsider Marine Polymer Technologies, Inc. v. HemCon, Inc. (here) en banc. As a reminder, this case considers whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, by Patentee disclaimer. (earlier post here)
The court also has yet to issue a decision in In re Staats, which presents the USPTO theory that continuation filings in a broadening patent reissue must relate to a broadening that was foreseeable as presented in the original oath.
There is much to look forward to in the weeks to come.
Day Long Webcast February 3, 2012
For those looking for CLE in the coming weeks relative to the various post grant provisions of the America Invents Act (AIA), I will once again be chairing PLI’s annual program on post issuance USPTO proceedings. In previous years this program was titled “Reissue & Reexamination Strategies and Tactics Concurrent with Litigation.” This year, while currently available post grant proceedings will certainly be covered, the program will focus on the many changes of the AIA, how these proceedings will impact patent litigation, and the progress of the USPTO rule making and implementation efforts. This year’s program is entitled “Post-Grant Proceedings 2012 – The New Patent Litigation.”
Scheduled Speakers this year include:
-Chief Judge James D. Smith of the Board of Patent Appeals & Interferences (soon to be Patent Trial & Appeal Board (PTAB)). Judge Smith will provide an update on the implementation and rule making efforts necessary to transform the BPAI into the PTAB.
-Director of the Central Reexamination Unit (CRU), Ms. Irem Yucel will also participate in a panel discussion with Judge Smith to provide an update on the efforts of the CRU to adapt to the changes of the AIA and where this unit will fit into the USPTO equation going forward.
-Director of the Office of Patent Legal Administration (OPLA), Brian Hanlon will provide an update on reexamination practice and petition handling, and other aspects of OPLA efforts to implement the post grant aspects of the AIA.
For more information on this program, including how to attend in person (New York) or to register for the webcast, please visit the PLI information page (here)
Willfullness Determination Opens Door to Prejudice
One purpose for introducing evidence of an ongoing patent reexamination in a parallel litigation is to avoid a post filing (i.e., complaint) willfulness determination. The existence of an ongoing patent reexamination may be admitted to demonstrate that the accused infringer was not objectively reckless in its actions irrespective of its prior knowledge of the asserted patent.
Some courts have found that reexamination evidence defeats a finding of willfulness, these courts typically examine the status of the claims in the reexamination proceeding at the time of the willfulness determination, finding that the weight of the reexamination evidence depends on whether the reexamination proceedings are complete and whether the patent claims have undergone substantive changes in reexamination. When seeking introduction of such evidence, depending upon the court, the stage of the parallel litigation (Summary Judgment, JMOL, Pre-Trial Motions) may determine whether or not it is admissible.
In recent years, courts have been reluctant to admit evidence of an ongoing patent reexamiantion at trial. This is because the presumption of validity may be undermined by communicating to the factfinder(s) that the USPTO has changed their mind. This trend is especially prominent in plantiff forums such as Texas. Read the rest of this entry »
Post Grant Practice CLE
Today the AIPLA continues their multi-part web series on the America Invents Act (AIA). In the latest installment, the new post grant mechanisms of the AIA will be explored. The program is entitled Post-Issuance Activities and Enforcement Activities Under the America Invents Act.
Registration info is found (here)
For additional CLE credit in 2012, consider the following programs:
Post Grant Proceedings 2012 — The New Patent Litigation Practicing Law Institute, February 3, 2012 (NYC & Webinar)
Salvaging Patents with New Supplemental Examination Strafford Legal February 14th (Webinar)
USPTO Procedures Under the America Invents Act American Conference Institute March 26-27th (NYC & Webinar)
Troublesome Oath Requirements Revised
As anyone that has ever filed a patent reissue can attest, the inconsistent application of oath requirements can be maddening. In fact, the vast majority of patent reissue applications are delayed due to such informalities —aggravating an already significant problem.
As the America Invents Act has required that the “deceptive intent” component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems while they were under the hood. Last Friday, a Notice of Proposed Rule making entitled “Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act.” (here) Read the rest of this entry »
Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel
The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request for IPR/PGR from the same requester (or privies) on issues that were raised or reasonably could have been raised in the first proceeding, but prevent the filing or maintenance of any other “office proceeding.”
By definition a Post Grant Review (PGR) can only be conducted prior to an IPR. This is because an IPR can only be filed once the 9 month PGR window has ended, or after any ongoing PGR concludes. As such, the primary office proceeding that can be requested, or maintained in this regard (i.e., after IPR/PGR estoppel attaches) is ex parte patent reexamination (EXP).
As pointed out previously, in order to properly estop an ongoing EXP proceeding or filing, the Office must implement a system to track EXP filings with respect to the real party in interest. This tracking is complicated by the fact that many EXP proceedings are filed anonymously. Last Thursday, the USPTO issued their plan. Read the rest of this entry »
New Rules for Ex Parte Practice Effective January 23rd 2012
For those seeking a quick briefing on the new Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. The Practicing Law Institute (PLI) will be offering a one hour webinar next Monday, January 9, 2012.
Topics to be covered include:
- New petition practice to toll Reply Briefing deadlines
- Simplification of brief formatting and required appendices
- New default practices and assumptions
- Guidelines for identifying “new rejections”
- New jurisdictional timing
- Elimination of examiner responsibilities
I will be presenting along with my colleague (former Administrative Patent Judge and USPTO solicitor) Lee Barrett.
Registration details are found (here)
Parallel Litigation Settles, Now What?
With the vast majority of patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of Patentees is “what becomes of the patent reexamination once the litigation settles?”
In the case of ex parte patent reexamination, the answer is simple: the reexamination continues unaffected. Indeed, as demonstrated a few weeks back (In Re Construction Equipment, CAFC (2011)), the ultimate outcome of the ex parte reexamination can even effectively reverse an earlier decision of the CAFC.
On the other hand, if the pending reexamination is an inter partes patent reexamination (IPX), the answer will depend on the nature of the terms of the settlement agreement. In a best case scenario for Patentee, the IPX proceeding may be vacated altogether by operation of estoppel. Of course, to trigger IPX estoppel, the settling defendant/requester must agree to a consent consent judgement in the district court (not effective in the ITC as estoppel does not apply) that they failed to prove invalidity. In most cases, defendants are loathe to publicly admit defeat. Still, unwary Patentes may be walking away from significant opportunity if just swinging for the fences. Read the rest of this entry »
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