By Scott A. McKeown
| July 12, 2016

July Webinar: Overlap Between Administrative Procedure Act (APA) & PTAB AIA Trial Practice


The July edition of the PatentsPostGrant.com free webinar series will be held on Wednesday July 27th @12:30PM (est). The July webinar is entitled: The Tail That Wags the Dog: Leveraging the Administrative Procedure Act (APA) at the PTAB (speakers: Scott McKeown & Greg Gardella). This is the re-scheduling of the March webinar directed to the same APA issues. As the title suggests, the webinar will focus on the controlling APA procedure and standards as applied by the PTAB and CAFC. Register (HERE). (or copy the following link into your web browser: https://oblon.webex.com/oblon/onstage/g.php?MTID=efeaa9da53af3bddeb711a62ec6f25700

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you'll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.

 


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By Scott A. McKeown
| July 11, 2016

USPTO Post-Prosecution Pilot Program

While not directly related to Patent Trial & Appeal Board (PTAB) practice, today, the USPTO announced the launch of the "Post-Prosecution Pilot Program." (here) The program is designed to provide more feedback to applicants by allowing them to participate in a panel discussion with examiners after a final rejection.

The goal of the Pilot is to reduce the number of appeals to the PTAB. Essentially, the program allows for participation in person, or remotely, in a pre-appeal brief style hearing of the prosecution.  

In my view, this type of feedback will be especially valuable to patent applicants (which is why I recommended the same roughly 6 years ago).
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By Scott A. McKeown
| July 5, 2016

Much Maligned PRPS to Phase Out Shortly


In the rush to develop an e-filing system in the months ahead of September 16, 2012, the USPTO deployed a serviceable e-filing system for AIA trial proceedings known as the Patent Review Processing System (PRPS).  While understandable given the time constraints to pull it together, PRPS was a bare bones system that left much to be desired.  Since then, PRPS has done its job, but, the agency has been developing a new, and improved system.  Halleluljah!

That new system is called Patent Trial and Appeal Board End to End (PTAB E2E).  PTAB E2E uses a web browser
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By Scott A. McKeown
| July 1, 2016

IPO Chat Channel Program to Explore Cuozzo Aftermath Next Week


For those seeking some PTAB related CLE credit this month, the IPO Chat Channel will host After Cuozzo: Litigation at the PTAB, U.S. District Court, and the Federal Circuit
Wednesday, July 6th, 3:00pm to 4:00pm ET.  The program will explore:
  • The avenues that remain open for challenging IPR institution decisions, and the pending cert petitions that challenge USPTO post-grant proceedings on constitutional grounds;
  • Whether a Federal Circuit decision on the reviewability of Covered Business Method reviews (CBMs) is inconsistent with Cuozzo;
  • The Federal Circuit decision SAS Institute v. ComplementSoft that gives guidance on procedural safeguards of the Administrative Procedure Act regarding post-grant proceedings;
  • Practical tips for litigators on how to deal with two different claim construction standards going forward and; 
  • What lessons should patent practitioners take from Cuozzo
I hope you are able to join me and my fellow speakers for this important discussion.

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By Scott A. McKeown
| June 28, 2016

Patent Attorney Law Clerks Sought to Handle AIA Proceedings

As announced a few weeks back, the Patent Trial & Appeal Board (PTAB) will be taking on a limited number of law clerks.  The posting on USA Jobs (here) explains that: "[t]he Judicial Law Clerk will be responsible for assisting Administrative Patent Judges in the following: adjudicating inter partes review proceedings, post-grant review proceedings, covered business method review proceedings, and derivation proceedings; addressing appeals from adverse decisions of Examiners regarding patent applications, reissue applications, and reexamination requests; conducting interference proceedings; and other projects critical to the Board's mission."

While USPTO registration does not appear to be required, a technical background necessary to sit for the exam is, as is a state bar membership (prior to start date). This opening will close on July 5th, or when 300 applicants are received, whichever occurs first. Don't delay.
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