Patents Post Grant Blog

Yesterday, the USPTO announced that it will hold a workshop on promoting innovation.  The workshop will explore the affect of U.S patent policy and competition policy on innovation.

The morning session will include a panel of academics discussing PTO pendency issues. Other sessions will address injunction practice post Ebay, and the impact of standard setting on patent policy and innovation. Director Kappos as well as other high ranking officials will be in attendance and are scheduled to speak on various topics.

The workshop presents a rather eclectic mix of topics and speakers.  Although there is nothing on the agenda relating to post grant issues, perhaps reexamination will be touched upon during the injunction discussion (see our earlier post on this topic).

With the Senate momentum on Patent Reform Bill S.515 seemingly leading to a vote before Memorial Day, House members seeking a voice in the final bill have focused opposition efforts on the PTO funding/fee diversion aspect of the bill.

Wednesday, in an exchange with USPTO Director David Kappos during an oversight hearing with the House Judiciary Committee, Chair John Conyers (D-Mich.) and Rep. Lamar Smith (R-Texas) probed the USPTO on whether or not the PTO funding should be severed from S.515 as a stand-alone bill.

As one of the drivers behind moving the bill forward is clearly the urgency of the PTO funding issue, the sniping from the House appears to be more of a tactic to force compromise rather than a genuine interest in a separate bill. Certainly, taking the wind out of the Senate sails by removing fee diversion could provide an opportunity to bog down S.515 in further debate.

During the hearing Conyers, stated that efforts to reach a deal with the Senate on S.515 are not progressing noting that the cooperative efforts seem “to be stalled somewhere between House and Senate.” Whether this statement is an accurate depiction of the true situation or simply the grandstanding of those on the sideline remains to be seen. Discussions between the House and Senate on S.515 remain ongoing.

Director Kappos stood firm, indicating that the Patent Reform legislation was needed, and that USPTO funding should remain an aspect of the broader bill. Of course, the political maneuvering is likely to continue as the bill winds it’s way through Congress.

Guest Post by Brad Pedersen

With the recent announcement from the Obama administration supporting the Manager’s Amendment to Senate Bill S. 515 and with the possibility that the Bill could soon get to the Senate floor for a vote prior to Memorial Day, it is time to take seriously some of the details about transitioning from (i) the current interference/reexamination scheme to a new derivation/review scheme and (ii) the current inter partes reexamination proceedings handled by the Central Reexamination Unit (CRU) to post grant/inter partes reviews handled by the new Patent Trials and Appeals Board (PTAB). 

This post is the first of a two part series and addresses the transition provisions for interferences.

Interference to Derivation – Because S.515 will change the U.S. patent system from a first-to-invent (FTI) system to a first-inventor-to-file with grace period (FTFG) system, as was discussed in an earlier post, interferences will be replaced by a new “derivation proceeding” to determine whether the second applicant for a patent was in fact the first inventor to file for a patent.  Although, the Manager’s Amendment is a marked improvement Read the rest of this entry »

The March 4, 2010 Manager’s Amendment to S. 515, known as the Patent Reform Act of 2010 may be substituted for the Senate Judiciary Committee-passed version of S. 515, and then be considered by the Senate as a whole prior to Memorial Day. It is expected that Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to the “hotline” procedure which will substitute the Manager’s Amendment for the passed version of S. 515, and permit the bill to pass the Senate without debate. The hotline bill is then recorded in the Congressional Record as a being agreed to by unanimous consent.

Furthermore, hotlines can include amendments, but limit debate and discussion. A key to passage of the bill is that it does not require individual votes on the amendment or the underlying bill. However, any Senator can throw a “monkey wrench” into the process by putting a hold on the bill, if he or she objects to its provisions. To counter this action, the Administration has thrown its support behind the legislation and urges that the bill be passed this year. Such action may ensure that Democratic Senators line up in support of the hotline and that Republican Senators can be persuaded to not put a hold on the bill. A hotline request is expected to be sent from Republican Minority Leader Mitch McConnell (R-KY) to Republican Senators.

For a more detailed discussion see the IPWatchdog post of earlier this week.

Senate Judiciary Chairman Patrick Leahy (D-Vt.) is pushing Senate leaders to bring the Patent Reform Act of 2010 (S. 515), as amended March 4, 2010, to the Senate floor before the Memorial Day recess. Internet reports have Senate Majority Whip Richard Durbin (D-Ill.) stating that Leahy would like Senate leaders to vote on S.515 after the Senate completes work on financial regulatory and food safety legislation.

Senator Leahy was quoted last Thursday as stating  “We need to get to issues that concern the American people, including Wall Street reform and patent reform.”

It is quite possible that in order for S. 515 to pass the Senate quickly, it may have to be included in an Omnibus Appropriations Bill needed to fund federal agencies for FY 2010.

This post has been corrected. An earlier version indicated an inaccurate filing rate that was based on calendar year rather than fiscal year . 

Yesterday, the USPTO released ex parte and inter partes reexamination statistics for the 1st Qtr of 2010. 2010 results to date show 126 inter partes reexamination filings, this number is equivalent to the total of all such requests filed in 2007.  

The operational statistics show the USPTO maintaining or exceeding the 2009 timing with respect to processing durations, with some commendable improvements in several categories.

With roughly 70% of inter partes reexamination filings identified as relating to a concurrent litigation (as compared to 30% for ex parte), for those entities taking advantage of an early filed inter partes reexamination, Congress and the USPTO have seemingly delivered on providing a viable alternative to patent litigation. Of course the CRU will need to continue to effeciently handle the growth in demand. Likewise, the Office may soon have the rug being pulled out from under them should patent reform come to pass, effectively transferring inter partes proceedings to the Board.

Yesterday, the Dept of Commerce released their position paper on certain aspects of the proposed patent reform legislation. The paper outlines economic justifications for post grant review, citing the well known inefficiencies and cost of patent litigation. Interestingly, the paper points out that post grant review is expected to be 50-100 times cheaper than patent litigation.

Previously I discussed the potential of patent reform legislation to supplant traditional patent litigation. There is significant question in my mind on how the USPTO, based on current resources, can quickly and effectively transform from the current examiner based reexamination model to a system managed by the newly labeled Patent Trial and Appeal Board.

With the expanded role of discovery practices provided by the post grant proposals, statutory time line (12-18 months), and oral hearings it seems to me that the legislative proposals cannot plausibly Read the rest of this entry »

… or is it?  Rumors of the demise of interferences via patent reform have been greatly exaggerated for years.  Whether S.515 will have a different fate than other recent patent reform bills is uncertain at best.  In any event, we continue our review of S.515 provisions related to post grant matters.  On March 4^th and 5^th, we outlined the provisions in S.515 which would change reexamination and implement a new Post-Grant Review revocation mechanism, respectively.  Today, we discuss what little of substantive interference practice[1] will remain if S.515 is enacted — namely, derivation proceedings.[2] 

Currently, derivation cases are a species or type of interference decided by the Board of Patent Appeals and Interferences (“BPAI”).  In an interference proceeding at the BPAI, derivation is proven by establishing prior conception of the interfering subject matter and communication of the conception to the opposing party. 

Examiners rarely, if ever, suggest an interference sua sponte.   Consequently, in the vast majority of cases, an applicant wishing to initiate a derivation proceeding is required to suggest an interference pursuant to 37 C.F.R. § 41.202.  The suggestion of an interference is initially considered by an examiner, who is instructed by the MPEP not to even consider the suggestion of interference until after he or she has decided that the targeting applicant’s claims are in condition for allowance, but for the existence of the targeted application or patent.  Therein, lies the rub.  As stated in MPEP Read the rest of this entry »

Last Friday the USPTO issued a Notice of Intent to Issue a Reexamination Certificate (NIRC) for U.S. Patent 4,847,265, directed to the well known blood thinner Plavix.®  The Plavix Patent was challenged by Apotex Inc, a Canadian manufacturer of a generic version of the drug.  

Apotex was unsuccessful in their challenge of the patent in district court, resulting in a court injunction against Apotex’s sale of a generic Plavix until after the patent expires. The reexamination was an attempt to dislodge the injunction prior to expiration of the patent. As a result of the successfully concluded reexamination, it appears Apotex will just have to wait for expiration (2012).

–Pick a Winner–

The revised version of S. 515 has introduced provisions that will serve to preclude the instituting or maintaining of an inter partes review or post-grant review proceeding under certain circumstances. These circumstances are set forth in proposed changes to §§ 315 and 325 in title 35 of the United States Code.

§§ 315 and 325 provide that an inter partes review or post-grant review may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent.  In other words, you cannot file a Declaratory Judgment and seek to prove invalidity at the USPTO at the same time. Moreover, an inter partes review or post-grant review may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent.  Thus, you cannot answer a complaint for infringement and then seek to prove invalidity at the USPTO at the same time; you must file at the earliest possible time before answering. Thus, the new post grant provisions are really designed to be alternatives to litigation, not after thoughts Read the rest of this entry »