Patents Post Grant Blog

For those looking to add CLE in the coming months, or to just keep abreast of the changing post grant landscape, registration has now opened for PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. The program is offered in San Francisco January 10, 2011 and in New York  February 11, 2011. The webcast is available January 10th.
I will co-chair both events and speak on the topic of Pre-Trial and Post-Trial Reexamination Strategies Concurrent with Litigation. The Hon. Paul J. Luckern of the International Trade Commission will comment on judicial perspectives of patent reexamination, and my partner Todd Baker will discuss reexamination and reissue practices. A USPTO representative (OPLA invited) will discuss inter partes reexamination petition practice, and other practitioners and corporate speakers round out a very compelling program.

More information and registration information is found in the linked text above.

The recently published Volume 2, Issue 2 of the journal Medical Innovation & Business focused entirely on patent reform’s potential impact on medical innovation.  Special guest editors Renee Kaswan, David Boundy, and Ron Katznelson express particular concern that patent reform will weaken the investment incentive for innovations with high development costs and low production costs, notably including medical innovations.  Numerous articles in this issue discuss the effects that proposed post-grant review might have on the value of smaller companies’ patents and therefore on the incentives to invest in such companies.

The articles in this patent reform issue of Medical Innovation & Business that are relevant to post-grant procedures for assessing validity fall roughly into three categories based on three different perspectives: venture capitalists’ perspective, the perspective of attorneys in private practice, and judicial perspective. Across these categories, post-grant discussions repeatedly highlight several sources of uncertainty that may apply to small companies relying on their intellectual property investments.

We provide the following review of the articles in this issue that pertain to post-grant review.
Read the rest of this entry »

If you are one of the foolish people out there under the impression that the U.S. banking and real estate crash has led to the current economic state, heightened unemployment, etc, you would be wrong. Turns out, the 18 month publication of patent applications, and 35 USC  § 102(e) have ruined the U.S economy….who knew?

On July 29, 2010 H.R. 5980 was introduced by Congressman Frank Wolf (R-VA) as the “Bring Jobs Back to America: Strategic Manufacturing & Job Repatriation Act.” How can anyone vote against that noble cause!?

Unfortunately, once past the flowery title, the substance of the bill, at least with respect to the proposed patent law changes is simply a collection of oddball provisions that would neither achieve any meaningful reform nor job repatriation. Read the rest of this entry »

Every year is getting shorter never seem to find the time.
Plans that either come to naught or half a page of scribbled lines……

An interesting note appeared on one of the forums of Politico.com yesterday.

POLITICAL INTEL: PATENT BILL READY FOR PRIME TIME – Aides on the Senate Judiciary Committee say they are confident their bipartisan patent reform bill could clear the full upper chamber this year, if only it was scheduled for a vote. In fact, the sources say that’s the primary reason the legislation has lingered – it’s too big for a UC agreement (unanimous consent), but would require enough floor time that Dems haven’t had a chance to fit it on the calendar amid a torrent of debate over jobs and taxes.

As evidence, the aides point to the fact a copyright fix bill cleared the Senate just before recess on a voice vote, with the help of bipartisan committee support. They also say most of the Republicans on the Senate Judiciary Committee – including ranking member Pete Sessions – support the patent compromise Leahy and other Dems have labored over for years. Put simply, they say it’s doable, and perhaps sooner rather than later.

That’s right folks, any day now….any day.

* Readers have pointed out that the ranking member is actually “Jeff Sessions,” Pete Sessions being a member of the House.  Nevertheless I leave the text as is since I am quoting another source.

With Congress on summer hiatus, and significant election uncertainty coming in the Fall, Patent Reform efforts are seemingly on hold (again). Still, last week, the USPTO was able to secure an additional $139 million in funding. H.R. 5874  permits the USPTO to retain $139 million in fees collected from patent applications and patent maintenance fees for fiscal year 2010 “salaries and expenses.” 

Senator Leahy, a backer of S.515, in passing the new PTO funding bill took the opportunity to emphasize the importance of the this perenially pending legislation, noting that more needs to be done to modernize and improve our patent system, which is a crucial component of our economic recovery… This bill [the S. 515 manager's amendment] will provide the legal structure we need to allow our inventors to flourish. It will improve our economy and create jobs without adding a penny to the deficit.

The concept of patent reform is increasingly popping up in the news media as of late, perhaps as a sign of the White House PR machine attempting to sell the reform legislation as an economic stimulus that does not raise taxes.

The CBS video below implies an economic impact to the PTO pendency issue. CBS Video on USPTO Pendency

Also, see the New York Times article of last week selling changes to the patent system as a form of economic stimulus (here)

A bit of self promotion on this otherwise uneventful Monday….

Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. is proud to announce that Lee E. Barrett has joined the firm as Of Counsel. Mr. Barrett served in several roles during his distinguished 32-year career with the U.S. Patent and Trademark Office (USPTO), most recently as an Administrative Patent Judge (APJ) with the Board of Patent Appeals and Interferences. For 16 years, he was responsible for hearing and deciding appeals from decisions of examiners in applications for patents, for reissue of patents, and in ex parte and inter partes reexamination proceedings.

Of the many notable reported decisions for which Mr. Barrett authored the Board opinion, some of the more high-profile ones were: Ex parte Bilski, Appeal 2002 2257, Application 08/833,892 (BPAI 2006) (affirming a rejection under 35 U.S.C. § 101 of a business method of hedging), aff’d, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff’d, Bilski v. Kappos, 561 U.S., 130 S. Ct. 3218 (2010); Ex parte Translogic Tech., Inc., Appeal 2005-1050, Reexamination Control Nos. 90/006,392 et al. (BPAI 2005) (affirming obviousness rejection to serial multiplexer in reexamination after district court jury trial holding the patent valid and infringed), aff’d, In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007); and Ex parte Reiffin, Appeal 2007-2127, Reexamination Control No. 90/006,621 (BPAI 2007) (affirming rejection in reexamination based on lack of written description for “multithreading” and rejections based on anticipation and obviousness), aff’d, In re Reiffin, 340 Fed. Appx. 651 (Fed. Cir. 2009) (nonprecedential).

Lee Barrett will serve as an appeal specialist for the Oblon Spivak Reexamination & Reissue Practice Group.

During an interview with ABC news this past Sunday, “This Week” Senior White House Advisor David Axelrod fielded questions on the administration’s plan for economic growth. With the deficit growing, and the Obama White House being assailed for over spending, Mr. Axelrod mentioned several initiatives that will not require further spending, but are expected to benefit the economy.

He described everyone’s favorite multi-year, multi-administration, never ending legislative initiative as follows:

…we’re going to keep launching initiatives, and they don’t all involve spending.

Things like patent reform are things that — is something that we want to pursue so that small businesses and start-up businesses with a good idea can — can — can move without the kind of bureaucratic obstacles that the current patent system provides.

With health care and banking reform seemingly complete, and the Obama administration looking for a cause to rally around that does not involve spending….maybe…oh never mind.

With patent reform seemingly on the back burner yet again, Senator Leahy stands on the In re Bilski soap box to rally supporters Monday, noting:

In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected.  The Court’s opinion, joined by only five of the Justices, however, needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation.

Since the debate over comprehensive patent reform began many years ago, the Supreme Court has demonstrated an increased interest in patent law cases.  The Court’s decisions have moved in the direction of improving patent quality.  While today’s decision will take time to analyze and may not have advanced the law and created the stability and certainty that it could have, it appears to continue this trend, which is consistent with the goal of patent reform legislation pending in Congress.  The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.

Still, with summer recess approaching, it is unlikely that we will see much in the way of progress on S.515 until the fall.

With Memorial Day now behind us, so much for the vote on S.515 before the holiday. Since Congressman Conyers floated the separate USPTO funding bill there does not appear to be much movement on the substantive issues of S.515.

Still, there will be a discussion of the policies at play in these legislative proposals next week (6/15) in DC (Georgetown).  The Program is described as:

Hear the perspectives of leading experts on the need for reform and the current legislative landscape, the pros and cons of bills under consideration, and the future implications for research, licensing, and litigation:

• The Honorable Paul Michel, Federal Circuit Chief Judge (retired)
• Congressman Dana Rohrabacher, US House of Representatives
• Joe Matal, Republican General Counsel, Senate Judiciary Committee Read the rest of this entry »

Part II of a Guest Post by Brad Pederson

This is the second post addressing transition provisions outlined in the Manager’s Amendment to S. 515.  The first post addressed the transition provisions for interferences.  This post comments on the transition provisions for inter partes review.

Inter Partes Reexamination to Post Grant/Inter Partes Review – the transition provisions for switching over from 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) contemplates a graduated ramp up with limits on the number of reviews that can be declared under regulations to be promulgated by the Director.  Sections 5(c)(2)(C) and 5(f)(2) of the Manager’s Amendment to S. 515 permit the Director to impose “a limit on the number of [reviews] that may be instituted during each of the first 4 years” following the cutover over date to FTFG.  While such a graduated transition would certainly be beneficial for the Office and the PTAB to learn how to handle these new review proceedings, the glaring question left open by these transition provisions is what happens to those requests for review that are above the cutoff Read the rest of this entry »