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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Patent Reissue Applications Moved Away From Examining Corps to CRU

Posted On: Jul. 9, 2014   By: Scott A. McKeown
Topics: Reissue
patent reissue applicationsCentral Reexamination Unit (CRU) Takes on Patent Reissue Workload

Yesterday, the USPTO issued an internal memo to the Examining Corps informing them that the Central Reexamination Unit (CRU) would be taking responsibility for patent reissue applications going forward. (Memo here) This move was first considered some years back under Director Kappos to remedy the excessive pendencies of patent reissue proceedings. However, that effort was shelved as a result of political headwinds (primarily examiner union complications).

Since that time, the workload of the CRU has lessened thanks to the elimination of inter partes patent reexamination, and to a lesser extent, the lack of interest in supplemental examination. Yet, patent reissue has remained a pendency quagmire due to examiners unfamiliarity and lack of consistent exposure to some of the quirky issues common in reissues (recapture, oaths, correctable defects, etc).

Moving these unique, but important post grant proceedings to a dedicated unit of examination specialists is LONG overdue — and welcome news for patentees.

First 24 Months of IPR Brings More Filings Than Entire History of Inter Partes Patent Reexamination

Posted On: Jul. 8, 2014   By: Scott A. McKeown
PTAB-workloadFiling Rate to Strain PTAB Bandwidth?

In the entire 13 year history of inter partes patent reexamination, 1919 such reexamination requests were filed. Granted, only patents that stemmed from post 11/29/99 patent applications were eligible. But still, even in 2012 (the high water mark for such filings) the USPTO received only 530 in total.

Since passage of the America Invents Act (AIA), Inter Partes Review (IPR) and Covered Business Method challenges continue to break records with each passing month. In June alone the Patent Trial & Appeal Board (PTAB) received over 190 IPR and CBM petitions. By September 16 2014, the PTAB will have seen 2000+ petition filings in 24 months.

Can the PTAB keep up with this unprecedented surge in demand? Read the rest of this entry »

July CLE Program

Posted On: Jun. 27, 2014   By: Scott A. McKeown
Topics: Upcoming CLE
postgrantCLEJuly Post-Grant Patent CLE

For those in the Virginia area this July, consider the upcoming day-long Patent Resources group (PRG) program. The program covers post-grant patent practice. (6 Hours of CLE)

July 8, 2014 (Tuesday)
Post-Grant Patent Practice: Review Proceedings
Instructors:  Kevin Laurence and Matthew Phillips
Standard Tuition:  $895

Special pricing for friends of PatentsPostgrant.com $495 (register here)

PTAB Requests Feedback to Optimize AIA Post-Grant Patent Challenges

Posted On: Jun. 26, 2014   By: Scott A. McKeown
PTAB rulesFederal Register Notice to Issue Tomorrow

As promised, even a bit early, the USPTO will issue a Request for Information in tomorrow’s Federal Register. The Notice, entitled,
Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, will pose the following 17 questions:

Claim Construction Standard:

1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?

Motion to Amend:
2. What modifications, if any, should be made to the Board’s practice regarding motions to amend?

Patent Owner Preliminary Response:
3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all
parties?

Obviousness:
4. Under what circumstances should the Board permit discovery of evidence of nonobviousness held by the petitioner, for example, evidence of commercial success for a product of the petitioner? What limits should be placed on such discovery to ensure that the trial is completed by the statutory deadline?

Real Party in Interest:
5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?

Additional Discovery:
6. Are the factors enumerated in the Board’s decision in Garmin v. Cuozzo, IPR2012-00001, appropriate to consider in deciding whether to grant a request for additional discovery? What additional factors, if any, should be considered?

Multiple Proceedings:
7. How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding.

8. What factors should be considered in deciding whether to stay, transfer, consolidate, or terminate an additional proceeding involving the same patent after a petition for AIA trial has been filed?

9. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be stayed in favor of an AIA trial? If a stay is entered, under what circumstances should the stay be lifted?

10. Under what circumstances, if any, should an AIA trial be stayed in favor of a copending reexamination proceeding or reissue proceeding? If a stay is entered, under what circumstances should the stay be lifted?

11. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be consolidated with an AIA trial?

12. How should consolidated proceedings be handled before the USPTO? Consolidated proceedings include, for example: (i) consolidated AIA trials; (ii) an AIA trial consolidated with a reexamination proceeding; or (iii) an AIA trial consolidated with a reissue proceeding.

13. Under what circumstances, if any, should a petition for an AIA trial be rejected because the same or substantially the same prior art or arguments previously were presented to the USPTO in a different petition for an AIA trial, in a reexamination proceeding or in a
reissue proceeding?

Extension of 1 Year Period to Issue Final Determination:
14. What circumstances should constitute a finding of good cause to extend the 1-year period for the Board to issue a final determination in an AIA trial?

Oral Hearing:
15. Under what circumstances, if any, should live testimony be permitted at the oral hearing?

16. What changes, if any, should be made to the format of the oral hearing?

General:
17. What other changes can and should be made in AIA trial proceedings? For example, should changes be made to the Board’s approach to instituting petitions, page limits, or request for rehearing practice?

Comments are due to the agency September 16, 2014.  The Notice also address some of the feedback provided to the PTAB during round-table programs of the last few months. An advanced copy of the notice is found (here).

USPTO Issues Preliminary 101 Guidelines After CLS Bank

Posted On: Jun. 25, 2014   By: Scott A. McKeown
USPTO_LogoUSPTO Reacts Quickly to Landmark 101 Ruling

Although a few minutes late for today’s PatentsPostGrant.com webinar on the topic, the USPTO has now issued Preliminary Examination Instructions on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., No 13-298 (June 19, 2014). Any member of the public may submit written comments by July 31, 2014. In the meantime, the USPTO will use these preliminary instructions when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas in view of CLS Bank.

Will CLS Bank Impact CBM Filings?

Posted On: Jun. 25, 2014   By: Scott A. McKeown
CLS-101Landmark 101 Ruling to Affect CBM Filing Strategies?

This time last year, I considered whether a negative outcome in CLS Bank v. Alice Corp might serve as a catalyst for 101 challenges at the USPTO’s Patent Trial & Appeal Board (PTAB). That is, with most Covered Business Method (CBM) challenges including 101 grounds, and some only including such grounds for fast-tracking purposes, whether the Decision might encourage a flood of such filings with the PTAB.

Since that time, the CAFC issued an unsatisfying divided opinion, and then last week, the Supreme Court of the United States finally decided the issue. Where does that leave us, and what has changed?

Please join me today, along with my authoritative panel for this special edition of the PatentsPostGrant.com webinar series. Together with my colleagues Michael Kiklis, author of the recently released treatise, “The Supreme Court on Patent Law,” and Stephen Kunin, former Deputy Commissioner for Patent Examination Policy at the USPTO, we will endeavor to explore the impact of this important ruling.

Click HERE to Register.

Oblon Post Grant Group Expands Life Sciences Depth

Posted On: Jun. 20, 2014   By: Scott A. McKeown
Dianna-DevoreDr. Dianna DeVore Joins Oblon Post Grant Team

I interrupt my regularly scheduled ramblings for a bit of Oblon firm news on this Friday. I am pleased to announce that Dianna DeVore, Ph.D. has joined the firm’s the Post-Grant Patent practice group as Special Counsel.

For the past three and a half years, Dr. DeVore has been Senior Vice President of Intellectual Property and Legal Affairs at Ariosa Diagnostics, Inc. where she developed a coordinated intellectual property strategy including post-grant challenges, litigation, and related patent prosecution. Dianna brings over 18 years’ experience in intellectual property and transactional law, including providing product protection strategies and coordinating adversarial proceedings for companies ranging from emerging technology companies to large pharmaceutical companies.

Welcome Dianna!

The Impact of CLS Bank: Webinar 6/25

Posted On: Jun. 20, 2014   By: Scott A. McKeown
post grant webinarFree Webinar, Wednesday 6/25

Yesterday, the Supreme Court issued its long-awaited decision in CLS Bank v. Alice Corp. on patent eligibility standards for computer implemented inventions. This decision will impact current 101 challenges in CBM proceedings, and shape patent procurement/claiming strategies for software related methodologies going forward.

Please join me and my authoritative panel for this special edition of the PatentsPostGrant.com webinar series. Together with my colleagues Michael Kiklis, author of the recently released treatise, “The Supreme Court on Patent Law,” and Stephen Kunin, former Deputy Commissioner for Patent Examination Policy at the USPTO, we will endeavor to explore this important ruling.

Click here to Register: http://event.on24.com/r.htm?e=794534&s=1&k=53B7CFD63569A11431583A5913CAEED3

75% Success Rate for IPR Driven Stays

Posted On: Jun. 19, 2014   By: Scott A. McKeown
District Court Stays on the Rise Thanks to PTABIPR-stay

Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of patent reexamination proceedings at the USPTO. For this reason, motions to stay a litigation pending patent reexamination were often denied based upon the perceived prejudice of a 5-6 year delay (typical of reexaminations through appeal). The patent challenge proceedings of the AIA (IPR, CBM and PGR) were specifically designed, at least in part, to remedy the pendency issue.

The new patent challenge proceedings of the AIA are conducted before the USPTO’s Patent Trial & Appeal Board (PTAB) and must conclude, by statute, within 12 months of trial order. Many districts across the country have recognized the improved speed of the PTAB. Not surprisingly, the success rate for staying cases pending USPTO review has significantly improved. Read the rest of this entry »

Unpredictable Arts at the PTAB: Free Webinar Tomorrow

Posted On: Jun. 17, 2014   By: Scott A. McKeown
post grant webinarPatentsPostGrant.com Webinar — June

This month’s edition of the PatentsPostGrant.com free webinar series will be held tomorrow, June 18th @12:30 (est). The June webinar is entitled:

Bio/Pharma Perspectives of the PTAB, Unpredictable Arts & IPR. (Speakers are Scott McKeown, Kevin Laurence and Dianna Devore Ph.D).

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 60 minutes. After the presentation there will be a 30 min Q&A period. To attend the webinar please sign up by clicking (here). You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided for some jurisdictions.

We look forward to speaking with you during the webinar.