Group 2 Rule Making Effort in Final Stages
Since the enactment of the Leahy-Smith America Invents Act (AIA), and even before, the USPTO has been busy fashioning new rules to implement the various provisions of the legislation. The USPTO has been aggressively seeking public comment prior to publishing the proposed new rule notices due to the significant amount of changes introduced by the legislation and the short time time frame.
The Office has grouped the various rule packages. Group 1 related to rules that needed to be provided immediately. Group 2 is directed to provisions that will become available 12 months after enactment. These proposed rules are expected to be introduced in late December or early January. Read the rest of this entry »
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)
Failed Inter Partes Patent Reexamination Challenges to be Resurrected?
When Congress provided for inter partes patent reexamination (IPX) in the 1999 American Inventors Protection Act, estoppel provisions were fashioned to prevent abuse of the new, post grant mechanism.
The IPX estoppel provisions are codified as 35 U.S.C. § 315 (c) and § 317 (b). Section 315(c) prevents a requester in IPX from pursuing failed arguments in a district court, correspondingly, 317 (b) prevents a requester that has failed to prove invalidity in an IPX, or at the district court from requesting a second IPX on any issue that was raised or could have been raised in the failed proceeding.
Interestingly, 317 (b) precludes a second IPX (outside of very limited circumstances, “newly discovered” art.). Yet, with IPX being replaced by Inter Partes Review (IPR) in less than a year, have failed IPX challengers been given an unexpected reprieve from the estoppel impact of 317(b)? Read the rest of this entry »
PGR Window Anomaly to Encourage Early Litigation?
Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA). Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.
As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).
When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR, becomes available for all patents next September 16, 2012.
So, for newly issued patents that will not be eligible for PGR over the next few years, do requesters still have to wait 9 months before filing a request for IPR? Read the rest of this entry »
Filing Fees to Increase Substantially
From start to finish, the cost of an inter partes patent reexamination (IPX) proceeding is estimated to be $278K by the 2011 AIPLA Economic Survey. This figure includes all expenses from the time of filing the request to a decision of the Board of Patent Appeals & Interferences (BPAI). The government filing fee for requesting inter partes patent reexamination is $8800.
The America Invents Act (AIA) introduces several new inter partes proceedings for the purposes of challenging the validity of a U.S. Patent. The first, Inter Partes Review (IPR), will be available on September 16, 2012 and will replace IPX. The second, Post Grant Review (PGR) will also be available on September 16, 2012 to challenge certain business method patents. Thereafter, PGR may be used to challenge (within a 9 month window after issuance) a patent filed on or after March 16, 2013.
As discussed yesterday, IPR will provide a significant improvement over IPX with respect to overall pendency delays. PGR will follow the same general timeline. In addition to the improvement in pendency, both IPR and PGR will provide for limited discovery, protective orders, oral hearings, settlement, and the management of the proceedings by a three person Administrative Patent Judge (APJ) panel of the new Patent Trial & Appeal Board (PTAB). But, what is all of this going to cost filers? Read the rest of this entry »
Practical Pendency of IPR to be 18-24 Months
In promulgating the new Inter Partes Review (IPR) proceeding as part of the America Invents Act (AIA) Congress hoped to address a major criticism of inter partes patent reexamination (IPX), namely, the significant length of time necessary to conclude these proceedings.
IPX first includes an examination phase handled by patent examiners of the Central Reexamination Unit. Once the examination phase concludes, an IPX may be appealed to the Board of Patent Appeals and Interferences (BPAI). Thereafter, an IPX may be further appealed to the CAFC. This three-phase process cannot be navigated quickly. That is to say, IPXs fully contested through CAFC appeal remain pending some 6-8 years from the time of the initial request.
Pendency is an important factor for challengers considering alternatives for quickly resolving a patent dispute. Likewise courts will often cite to the significant delay of IPX as justification to deny a request to stay ongoing litigation proceedings pending a parallel IPX.
To address this problem, Congress mandated that IPR be concluded at the USPTO with in 12 months, extendable to 18 months if the Director is able to show cause for extension (§ 316 (11)). Yet, is it realistic to expect a 12 month duration? Read the rest of this entry »
Inter Partes Review Estoppel Applies to Ex Parte Patent Reexamination
Last week, I explained the current estoppel provisions of inter partes patent reexamination and the new Inter Partes Review estoppel relative to parallel litigation proceedings. I pointed out that the Inter Partes Review (IPR) estoppel provisions are similar in some respects to the current inter partes patent reexamination (IPX) provisions, but differ in important aspects of timing and scope. As a result of these improvements, it is expected that the filing of an IPR will be especially effective to stay a district court litigation pending the outcome of the IPR. (Note: The ITC may take a dimmer view of these speedier proceedings in view of their mandate).
Another interesting consideration is how the new estoppel provisions will impact the USPTO. That is to say, the estoppel provisions of Inter Partes Review will not only have an impact on court proceedings, but also other USPTO proceedings, including ex parte patent reexamination. Read the rest of this entry »
Estoppel Provisions Disfavor Parallel Proceedings
During yesterday’s webinar on post grant USPTO proceedings, I compared the current estoppel provisions of inter partes patent reexamination to that of Inter Partes Review. The Inter Partes Review (IPR) estoppel provisions are similar in some respects to the current inter partes patent reexamination (IPX) provisions, but differ in significant respects.
In some ways, the new estoppel provisions are designed to address shortcomings of the existing IPX estoppel provisions. For example, while IPX estoppel does not apply to ITC proceedings, the IPR provisions extend estoppel to ITC proceedings. Additionally, while the IPX provisions use the terminology “raised or could have raised,” the new IPR provisions recite “raised or reasonably could have raised during Inter Partes Review.” Ostensibly, this language softening is designed to provide some slight wiggle room to account for the late found reference in a far away library of Siberia.
Of perhaps much greater interest however is the aspect of IPR estoppel that may compel judges to stay a parallel litigation pending IPR. Read the rest of this entry »
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.
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