Patents Post Grant Blog

Guest Post by Philippe Signore

“If I had more time, I would have written less.”  There is some question about who authored this famous quote, but one thing is sure: the folks drafting S515 didn’t do it.   Five years in the making, the pending patent legislation is getting longer and more complex with each iteration.  Last week, the Senate Judiciary committee released its latest version, which adds a number of new twists.  In particular, the damages provision, which takes up 15 lines under current law (35 USC 284), would now be governed by over 100 lines of statute!  Given that any single word of a statute can give rise to decades of interpreting jurisprudence (e.g., “process,” “printed publication,” “on sale” “obvious,” “reasonable royalty”), the entire 21^st century might be dedicated to interpreting the new statute, unless another reform is enacted before that.

So, what does the new version of S515 provide with respect to damages?  Read the rest of this entry »

With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.

European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO).  Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO.  This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest.  As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.

In the EPO proceeding, if there is an ongoing opposition proceeding, Read the rest of this entry »

As first reported here yesterday, changes to S. 515 are underway (the amendment is now available to the public and found here).  In yesterday’s post we outlined proposed changes to S.515 relative to reexamination practice, below we outline the changes to the new Post-Grant Review revocation mechanism.

 A.  Post-Grant Review

Post-Grant Review, is procedurally similar in many respects to Inter Partes Review, but, is not limited to patents and printed publications, but any ground that could be raised under paragraph (2) or (3) of  § 282 (b).  Post Grant Review may be initiated ONLY within Read the rest of this entry »

As reported last week, a revised version of S.515 is expected to be made public in the very near future.  Reliable sources have informed the authors of PatentPostGrant.com of the nature of some possible changes to the version of S. 515 that was passed by the Senate Judiciary Committee in April 2009.  Over the next several days, we will outline the major changes, focusing mainly on the reshaping of the post-grant review landscape.  These changes are believed to be in the “Post Grant Review Proceedings” sections of the revised bill, covering both reexamination changes and introducing a new post grant revocation procedure. The revised bill will, if passed without further amendment, present very significant changes to the existing post-grant landscape of ex parte and inter partes reexamination.

The Post Grant Review Proceedings being considered Read the rest of this entry »

Earlier this month we noted that with the health care legislation seemingly losing steam, that there appeared to be movement on patent reform; yesterday those  suspicions were confirmed.  Senator Patrick Leahy (D –Vt) indicated at an executive business meeting on Thursday that a compromise bill on patent reform would be forthcoming.  The detailed press release, along with a video of the meeting can be found here.

While details of the reported compromise are scant, it appears that USPTO Director Kappos, bar organizations, industry and several prominent senators have worked together to arrive at a new and improved S. 515.  It is expected that the details of the compromise bill will be released in the coming days.  In the meantime, if you want to become familiar with the history of legislation, provisions, and likely areas of compromise, see my colleague Philippe Signore’s paper on the subject here.

Likewise, I will be speaking on this topic along with Philippe this coming Monday at 4^th Annual Patent Law Institute NYC

For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York  this coming Monday (March 1st and 2nd) and one in Chicago (March 11th and 12th).  The editors of patentspostgrant.com are faculty for the Practicing law Institute and will be speaking at each upcoming event, Scott Mckeown will present at the New York PLI program on ”Increased Utilization of Inter Partes Reexamination with Concurrent Litigation” (4th Annual Patent Law institute).   Philippe Signore will be speaking this coming Monday on the proposed patent reform legislation, and Stephen Kunin will be speaking at the Chicago events on Inter Partes Reexamination Mechanics with Todd Baker.  More information on these programs is found below, hope to see you there!

4^th Annual Patent Law Institute NYC

Reissue & Reexamination Strategies and tactics Concurrent with Litigation (Chicago March 11th and 12th)

Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features.  Design patent are defined in scope by the content of the drawings  as opposed to the words of a set of claims. Further, design patents are accorded a patent term of 14 years from issue, as opposed to 20 years from filing.

What Exactly is a Substantial New Question of Patentability Anyway?

As noted in Part I of this two part series, the purpose of a request for patent reexamination is quite simple, to present SNQs relative to some or all of the claims of an issued patent.  Certainly there are numerous grounds to challenge a patent in a Federal District Court.  However, one must realize that an SNQ is a particular subset of the universe of available grounds applied at the USPTO.  The appropriate subset is explicitly identified by the reexamination statutes.  Simply stated, proper SNQs must be based on patents and/or printed publications only.  So, a proper SNQ cannot embrace arguments relating to public use/on sale bar, inequitable conduct, 35 U.S.C §112, or statutory subject matter, for example.

For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial new question of patentability regarding at least one claim, i.e., the teaching of the (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent or in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640

In our last discussion, in addition to the above distinctions, we identified common misconceptions and practitioner errors in preparing reexamination requests.  Yet, assuming you have omitted such materials, and have a proper basis for your SNQ, what are some best practices in presenting SNQs to the Office? Read the rest of this entry »

Guest Posting by Scott McBride of McAndrews Held & Malloy [1] 

Courts have the inherent power to manage their dockets, including the authority to stay patent infringement litigation pending the conclusion of a Patent Office reexamination.  Moreover, the decision to stay litigation is generally discretionary.  Decisions granting stays of patent litigation are typically reviewed under an abuse of discretion standard.  Such decisions can, in certain circumstances, be quite difficult to reverse on appeal.  Although a patent owner has a statutory right under 35 U.S.C. § 318 to seek a stay of patent litigation pending the outcome of an inter partes reexamination proceeding, such requests can be denied if the judge does not believe that a stay would serve the interests of justice. 

Factors generally considered by district court judges when ruling on motions to stay include whether (1) a stay will unduly prejudice, or present a clear tactical disadvantage to, the nonmoving party; (2) a stay will simplify the issues and trial of the case; and (3) discovery is complete and a trial date has been set.  In ITC proceedings, Administrative Law Judges also consider the stage of the reexamination proceedings, efficient use of the Commission’s resources, and alternative remedies available in federal court.

Prejudice

Delay arguably should not be a dispositive issue, Read the rest of this entry »

With the Obama administration seemingly reigning in their health care reform ambitions, it may be that the never ending saga of Patent Reform may once again be percolating in Washington D.C.  President Obama’s recent comments on the value of a strong patent system and outdated USPTO practices, and increased USPTO budget seem to evidence a refocused agenda.  On the heels of the President’s comments, last Tuesday, a group of bipartisan House members issued a letter to the House leadership opposing the reform efforts, labeling the earlier bill passed by the 110th Congress as “misguided.”

The letter from representatives Don Manzullo (R-IL) Read the rest of this entry »