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Archive for April 8th, 2014

Senate Struggles to Recalibrate Patent Reform Bill

Posted On: Apr. 8, 2014   By: Scott A. McKeown
Patent reform stalemateStalemate Along Ideological Lines

The Senate Judiciary Committee continues to struggle with S.1720 (Patent Transparency & Improvements Act of 2013). Yet again, the Committee has postponed mark-up of the bill. While mark-up remains possible on Thursday April 10th, given the growing political dissension along party lines on fee shifting, and significant lobby pressure on all sides, it now seems impossible for the Bill to advance in any significant regard before this Friday’s Easter Break. Unless progress is made in the next few weeks the bill is in danger of stalling for the remainder of the year (i.e., after midterm elections conclude).

Patent Reissue as an Alternative to PTAB Amendment Practice

patent reissue ptabStringent PTAB Amendment Process to Drive Patent Reissue Filings

As discussed previously, patent owners continue to struggle with the motion-based amendment requirements of the USPTO’s Patent Trial & Appeal Board (PTAB). In recent months, patentees subject to Inter Partes Review (IPR) and Covered Business Method (CBM) challenges have begun exploring alternative USPTO avenues for presenting amendments. In particular, patentees are following the advice of the PTAB and initiating patent reissue and reexamination proceedings.

Patentees generally find patent reexamination more attractive than patent reissue. This is due to the special dispatch accorded a patent reexamination, the relatively narrow scope of prior art review, and insulation from 112 and 101 issues. However, as made clear recently, patent reissue may be the only escape for patentees struggling at the PTAB.

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