Reexamination Specialist Leaves West Coast Firm, Moves Next Door to USPTO
I take a break from the normal discussions on patentspostgrant.com to briefly announce the addition of my new partner Mr. Greg Gardella to the Oblon Post Grant Practice Group, effective tomorrow. Greg is a preeminent specialist in post grant USPTO proceedings having handled a significant amount of very high profile patent reexamination disputes, such as the reexamination of TiVo’s time warp patent.
Formerly the Director of Irell & Manella’s Patent Reexamination Practice, Greg leaves his friends on the West Coast to continue his successful practice on the USPTO doorsteps. Greg provides significant depth to one of the leading post grant practice groups in the country (if I may say so myself). Welcome Greg!
Halloween Webinar to Discuss AIA Implementation Plans & Progress
Next Monday, the USPTO will host a free public webinar at 1PM to discuss the America Invents Act (AIA). USPTO participants in the webinar will outline the agency’s implementation plans, and answer a selection of questions submitted during the session. Questions should be submitted in advance to aia_townhallquestions@uspto.gov.
Scheduled to speak during the webinar are:
David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO
Teresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
Robert L. Stoll, Commissioner for Patents
Bernard Knight, USPTO General Counsel
James D. Smith, BPAI Chief Administrative Patent Judge
Webcast viewing instructions may be found (here)
Upcoming CLE to Focus on Post Grant Practice & Litigation Impact
I will be speaking in an upcoming live phone/web seminar entitled “USPTO Post-Grant Proceedings After New Patent Reform Law” scheduled for next Wednesday, September 28, 1:00pm-2:30pm EDT.
Today the Leahy-Smith America Invents Act (AIA) becomes law, the most significant revamping of the patent system in decades. This legislation will bring immediate changes to patent practice in the U.S. The AIA will introduce new post-grant mechanisms that provide strategic opportunities for Patentees and third party challengers alike. These changes will be especially dramatic for patent litigants as the legislation aims to transfer patent validity challenges from district courts to the USPTO, automatically stay some disputes, and place time limits on their initiation.
Topics to be discussed include:
- How will current reexamination practices evolve?
- What are the new post grant options, how will they be implemented, and when?
- How do the changes of the AIA alter litigation strategies, and the strategic use of patent reexamination parallel to litigation?
- What are the relevant deadlines and best practices?
Registration remains open.
Changes & Funding Head to USPTO
With the imminent enactment of the Leahy-Smith America Invents Act (AIA) into law, the USPTO is preparing for a much needed infusion of funding. Immediate funding relief comes by way of the 15% surcharge to patent fees included in the legislation. (See H.R. 1249, Sec. 11 Fees for Patent Services) The 15% surcharge will be implemented 10 days after enactment, the increased cash is immediately available to the agency.
Changes you will notice in the weeks ahead:
-Hiring, the USPTO is currently seeking Administrative Patent Judges (APJs) across all technologies.
-Additional patent examiner hires are expected in October.
-Examiner overtime was re-established yesterday (just in time for the end of fiscal year 2011).
-Prioritized examination, and other Office initiatives suspended/postponed back in April are expected to resume.
As to implementation of the AIA, the Office has been hard at work formulating rules for comment. The Office is scheduled to begin publishing the rules for comment in early to mid-December. Currently, the Office is working with the ABA, IPO and AIPLA on issue spotting to enhance the quality of the issued rule sets as there is little time for “town hall” or round table style meetings.
ABA Accepting Best Blog Nominations
Yes, you have seen this post before.
I tend to take it easy on Fridays (at least in the summer when readership falls off by week’s end anyway), just another groveling solicitation reminder to vote!
The American Bar Association (ABA) is now accepting nominations for the 100 best legal blogs. If you have found anything posted here in the past year even remotely helpful to your practice/research interests I would appreciate the support. Historically, the ABA rankings tend to be dominated by general interest blogs that are not as geared toward actual practitioners as this one.
Thanks for your support. (Nominate this blog here)
Inter Partes Patent Reexamination Filings Pose Challenge to Lodsys
Late Friday, Google announced that it had filed inter partes patent reexamination requests against two of the now infamous Lodsys patents, 7,222,078, and 7,620,565. Over the past few months, Lodsys has been contacting iOS and Android application developers seeking license fees, and has begun suing others to enforce their patent rights (the patents are purportedly directed to application transactions among providers and users). An infringement suit was filed against 11 defendants in Texas, including EA, Take-Two Interactive, Atari and Rovio (of Angry Birds fame).
As a licensee, Apple has attempted to intervene in the ongoing litigation arguing that app developers are covered under the terms of their license. Google, perhaps unencumbered by the contractual obligations of Apple with respect to challenging validity, has opened up a new battle front for Lodsys at the the USPTO.
As explained this past Saturday at Wired.com, Google announced the filing stating that:
We’ve asked the US Patent Office to reexamine two Lodsys patents that we believe should never have been issued. . …Developers play a critical part in the Android ecosystem and Google will continue to support them. [quote attributed to Google Senior Vice President and General Counsel, Kent Walker]
So, now what? Read the rest of this entry »
Enactment of Patent Reform to Trigger Monumental Rule Making Effort
With so much of the current focus on Congress being centered around the debt ceiling debate, it is easy to forget about other legislative initiatives in the queue. Still, once the current crisis is resolved (or the can kicked down the road as the case may be) the Senate will turn to other issues of interest to the voting masses, like patent reform no-cost job bills.
With many expecting the Leahy-Smith America Invents Act to be fast tracked to enactment, the USPTO has been busy organizing their forces in anticipation. With Patent Reform bringing the most significant changes to patent law in generations, the USPTO will be tasked with drafting an unprecedented number of rule packages (19 or more) to implement the legislative changes within a very tight deadline.
Yesterday, the USPTO announced the establishment of a website to expedite the submission of public feedback. The site is explained as providing: ”information to our stakeholders and the public on the legislation and USPTO’s actions to implement the provisions of the AIA, and to seek your preliminary input and comments. We will provide updates on this site throughout the implementation process. While any comments you provide on the site are informal and not treated as part of a formal request for comments or a rulemaking, we intend to review and consider comments provided on the site.”
The site may be found (here). 19 rule making areas are identified (here)
Goings on and Rumored Changes at the USPTO (Summer 2011)
As discussed last week, the USPTO is anticipating the passage of patent reform in the near term. Upon enactment, the agency would have access to the additional fees of the one track program (expedited patent application examination), and the 15% surcharge. Based on this influx of funding, it is expected that current restrictions on operations will be lifted, such as the freeze on examiner overtime. Hiring is also expected to begin again, with the goal of bringing in additional examiners as well as a significant number of Administrative Patent Judges (APJs). A detailed financial snapshot of USPTO operations and budgeting was presented at last week’s PPAC meeting. Preparations are underway to begin the hiring process in a matter of weeks. (CFO presentation here)
Of perhaps greater interest to practitioners, back in May, the Office issued a statement noting that the Therasense decision was being studied. It is rumored that the USPTO will issue a Notice of Proposed Rule-making as early as tomorrow to adjust Rule 56 practice in light of Therasense.
Check back tomorrow for an update.
Presumption of Validity Affirmed by Supreme Court
Today, the Supreme Court issued a unanimous decision in the closely watched case of Microsoft v. i4i . As discussed at length previously, Microsoft sought Supreme Court review of the following issue:
Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence.
Today the Supreme Court affirmed the CAFC’s earlier decision upholding the clear and convincing standard, much to the relief of stakeholders everywhere. (save Microsoft of course)
The holding (here) explained that although 35 U.S.C. § 282 does not provide for a specific standard of proof, the statute’s use of the terminology “presumed valid” connotes such a meaning based on Read the rest of this entry »
Meeting Materials & Webcast Replay Provided
As mentioned previously, the USPTO has today posted the presentations and papers from the speakers of last week’s meeting. The materials can be found (here) along with a replay of the webcast (to be up later in the week). Earlier this week, I provided an overview of my slides.
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