USPTO Fee Structure to Discourage Conduct?
It is expected that the rules to implement post-grant review (PGR), inter partes review (IPR) and transitional business methods post-grant review (TBMP) proceedings will be printed in the Federal Register this coming Tuesday. Included in the new rules will be the filing fees associated with these new proceedings. By statute these filing fees must be set to recover the average actual costs to the USPTO to conduct these proceedings.
As demonstrated in last week’s rule package for supplemental examination, the average aggregate cost can be significantly higher than present fee levels. The proposed rules issued last week set a fee of $ 5,180 to request supplemental examination and another $16,000 for the resulting ex parte reexamination should the supplemental examination request raise a substantial new question of patentability (SNQ). It is expected that Tuesday’s rule package for PGR, IPR and TBMP will set fee levels in excess of $ 40,000. But, such fee levels may have an unfortunate chilling effect on those interested in using these new post grant patent proceedings.
Interestingly, in February 2012, the USPTO will be publishing proposed rules for adjusting all of its fees under its new fee setting authority set forth in the America Invents Act (AIA). Read the rest of this entry »
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.
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)
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)
Top Stories of 2011
2011 was perhaps the most significant year to date in terms of post grant patent practice. The perennial legislative effort generally known as “patent reform” finally bore fruit as the Leahy-Smith America Invents Act (AIA); patent reexamination filings in 2011 reached an all time high; patent reissue practice was explored and clarified by the CAFC; and patent litigation parallel with patent reexamination continues to expand as a well established strategic practice.
As to the America Invents Act, several entirely new post grant patent proceedings have now been enacted into law (effective September 16, 2012). A summary of these proceedings, and discussions of their expected impact are linked below (and throughout the blog).
Post Grant Review
Inter Partes Review
Supplemental Examination
Derivation
Transitional Business Method Patent Challenge
The USPTO is scheduled to Read the rest of this entry »
BPAI Reverses Rejections on CAFC Claim Construction
The seemingly never ending saga of the NTP patent reexaminations took yet another interesting turn yesterday. The BPAI issued revised decisions on remand that reversed the earlier rejections of some of the NTP claims. As a reminder, the reexamination of the NTP patents began during the litigation between NTP v. RIM. The reexaminations continued at the USPTO in parallel with the then ongoing, and now infamous, litigation. However, the co-pending litigation continued on to the settlement, narrowly avoiding a disruption of RIM’s business in the U.S via court imposed injunction.
Now, some 6+ years later, the reexaminations may be close to a conclusion (absent further appeal by NTP).
The revised decisions stem from the CAFC remand on claim construction issues relating to the definitions of “electronic mail” or “electronic mail message.” As a result of the revised construction, NTP has manged to claw back some of their previously rejected claims. Read the rest of this entry »
Prioritized Examination Program Expanded to Include RCE Filings
While not a typical post grant topic, prioritized examination (PE) is another feature of the recent America Invents Act that may be of interest to those with high value applications stalled at the USPTO.
As a reminder, PE under the AIA is essentially a codification of the USPTO’s track 1, Enhanced Examination Timing Control Procedures Initiative. Until passage of the AIA, and the increased funding that came along with the 15% surcharge, the Track 1 program was suspended. Thereafter, the Office began accepting requests for PE.
PE allows, as the name implies, examining certain applications out of turn based on a priority status and be disposed of within 12 months. That is to say, upon payment of a fee of $4800 for large entities, $2400 for qualifying micro entities, “priority” can be purchased. There is a cap of 10,000 such requests for any one fiscal year. Judging by initial filing rates (300 per month) that number is not likely to be exceeded.
Previously, applications undergoing prosecution, such as those at the RCE stage could not participate in this program….which makes sense in that there is no value in jumping to the head of line if already there. Why anyone would feel the need to pay such a hefty fee for a case already being examined is beyond me, yet the USPTO has provided for that eventuality in yesterday’s final rule publication in the Federal Register .
Read the rest of this entry »
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