Patents Post Grant Blog

Transitional Program for Covered Business Method Patents (TPCBMP)

The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the USPTO on September 16, 2012. The new post grant option essentially provides that any “covered business method patent” may be challenged under the same procedures and standards applied in Post Grant Review (PGR) proceedings. The TPCBMP will sunset 8 years from implementation, hence the “transitional” label.

The major differences between PGR and TPCBMP relate to patent eligibility and estoppel.

With respect to estoppel, PGR estoppel attaches to any ground that the petitioner raised, or reasonably could have raised during the PGR. On the other hand, TPCBMP estoppel is only limited to issues actually raised during the proceeding.

The legislation defines a “covered business method patent” in general terms, as follows:

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

As can be appreciated, the definition of “covered business method patent” is of great interest to some of the leading U.S. innovators. Recently, the Senator (Schumer D-NY) that introduced the TPCBMP to the patent reform legislation urged the USPTO to adopt a very liberal definition of “covered business method patent.” Read the rest of this entry »

Tax Strategy Patent Reexamination Continues Despite AIA Provision

Back in January of 2011, the Director of the USPTO initiated reexamination of U.S. Patent 6,567,790 (here), which claims a method of minimizing transfer tax liability. In 2007, the ‘790 Patent was asserted against a corporate officer of Aetna Inc, the case was settled for an undisclosed amount. The Director initiation of the ’790 Patent reexamination was noteworthy (i.e., independent of a Patentee or Third Party request) as such an agency driven action had not occurred since the 2004 time frame.

Thereafter, the America Invents Act (AIA) was passed into law on September 16, 2011.

The AIA includes Section 14, entitled “Tax Strategies Deemed Within the Prior Art.” This section unequivocally states, as a matter of law, that patent claims directed to a strategy for reducing, avoiding or deferring tax liability are deemed to be within the prior art. This statute applies to all applications existing before or after the date of enactment (9/16/11), but only applies to those patents issued on or after the date of enactment. (USPTO Memo of September 20, 2011 providing guidance to the Examining Corps here). The ‘790 Patent was issued in 2003.

As a reminder, patent reexaminatons are not applications for patents.

While the ‘790 Patent would almost certainly be subject to challenge under the Transitional Program for Covered Business Method Patents (TPCBMP) on September 16, 2012, currently, the USPTO reexamination result appears to have saved the investment banking community some money. (Final action here)

PTAB To Exercise Discretion Relative to Non-registered Practitioners

The new post grant patent proceedings of the America Invents Act (AIA) are adjudicative in nature. That is to say, Derivation, Inter Partes Review (IPR) and Post Grant Review (PGR) will be conducted as trials before the Patent Trial & Appeal Board (PTAB). Patent examiners will no longer referee inter partes disputes at the USPTO (outside of legacy inter partes reexamination proceedings)

While IPR and PGR will include many litigation style mechanisms, such as limited discovery, protective orders, motions, etc, these proceedings will also embrace traditional functions of patent application prosecution. (e.g., claim amending and engineering/scientific analysis). As noted previously, non-registered practitioners can, in limited circumstances, be permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The PTAB will adopt this practice. Rule 42.10(c)

Recently, Chief Judge Smith explained the standard that will be applied to applications of non-registered practitioners by the PTAB. Read the rest of this entry »

Numerous Comments Received in Response to Rule Making Effort

With the window for submitting comments on the USPTO post  grant rule sets now closed, the agency has published the complete public comment set.

With respect to the post grant rule sets, a total of 251 comments were received. Data from the USPTO America Invents Act (AIA) micosite break down the submissions as follows:

Not surprisingly, the vast majority of comments appear directed to:

1. Page Limits (and here)
2. Fee Structure
3. Patentee Estoppel
4. Supplemental Information

Final Rules are expected to issue in the August time frame (setting an internal deadline of August 16, 2012). The Office has also publicly stated that comments may be solicited in the Fall on possible further refinements.

ITC Mandate Provides Safe Haven for Troll Abuse?

With injunctions harder to come by, and some district courts staying proceedings upon the mere filing of a patent reexamination, it is not surprising that non-practicing entities (NPEs) have been heading to the ITC (and, in the process testing the domestic industry requirement). To date, the ITC mandate to expeditiously adjudicate 337 actions has led to relatively few stays pending reexamination. In some cases, stays have been entered and later reversed by the full Commission. (See Tessera Decision here). This is a further benefit for NPEs.

Recently, a motion to stay an ITC proceeding pending patent reexamination was again considered by the agency in Certain Blue Ray Disc Players. Read the rest of this entry »

Can Declaration Evidence be Considered “Written Comments”

Since the advent of inter partes patent reexamination (IPX), both Requesters and Patentees alike have relied upon declaration evidence to bolster their respective positions. Practically speaking, the lack of RCE practice in patent reexamination creates a limited prosecution window relative to the prosecution of patent applications. For this reason, submission of declaration evidence by Patentees under 37 CFR § 1.131 and/or 37 CFR § 1.132 is fairly routine in patent reexamination proceedings.

For Requesters, it is critical to respond to the declaration evidence of the Patentee in kind, especially as the Requester will be estopped from advancing failed arguments of the IPX in a district court or subsequent USPTO proceeding.

Despite this well established, declaration practice in IPX, a recent reexamination dispute before the CAFC questions the statutory propriety of Requester declaration submissions. Read the rest of this entry »

Upcoming CLE

For those looking for some CLE credit this week, I, along with Mr. Andrei Iancu, Irell & Manella; and Mr. John Scott, QUALCOMM, Inc., will be presenting on the IPO Chat Channel (Wednesday, April 18th) Intervening Rights in Patent Litigation.

The program will look at the Marine Polymer case as well as other recent cases in which parallel proceedings before the USPTO have factored into concurrent litigation strategy.

Additional information, and registration information may be found (here)

Discovery Practice in Post Grant Patent Proceedings

In patent litigation before the federal district courts and the International Trade Commission (ITC), parties are obligated to preserve and prevent the destruction of potentially relevant information. This duty often commences as soon as litigation is reasonably foreseeable. Many courts also extend the duty to counsel for the litigants and require that counsel take affirmative steps to ensure that their clients are aware of, and take steps to comply with, the duty to preserve documents. As a result, counsel typically consult with their clients regarding this duty and provide their clients with a “litigation hold” letter that explains the measures the client should undertake to preserve potentially relevant information.

The new post grant review (PGR) and inter partes review (IPR) procedures created by the America Invents Act are adversarial proceedings in which the parties may take limited discovery from one another. The question arises: are the parties to PGR and IPR proceedings under a duty to preserve potentially relevant information? Read the rest of this entry »

Major Bar Organizations Comment on USPTO Proposals

The public comment period for the “umbrella rule set” proposed by the USPTO to implement the patent trial proceedings of the America Invents Act (AIA) closed this past Monday (April 9th). Under the AIA, the Patent Trial & Appeal Board will conduct validity trials beginning September 16, 2012. The trials may be conducted as part of an Inter Partes Review (IPR) proceeding, or Transitional Program For Covered Business Method Patents (TPCBMP). Pure Post Grant Review (PGR) challenges, which are only available for patents issuing from applications filed on or after March 16, 2013, will occur once these applications begin to issue as patents some years thereafter. Comments on the specific rule packages (IPR, PGR, TPCBMP) were due to the office on Tuesday (April 10th).

As with the initial request for comments on implementation, the AIPLA and IPO have joined forces with the ABA to submit a single comment.

ABA/AIPLA/IPO comments (here)

One of the more interesting positions of the joint comments question Read the rest of this entry »

SNQ Analysis Not Explicit in New Post Grant Standards

As discussed earlier in the week, a petitioner must demonstrate  a reasonable likelihood of prevailing (RLP) in order to successfully initiate an inter partes review. As of September 16, 2011, this standard has also been applied in assessing requests for inter partes patent reexamination. In arriving at a new standard, Congress hoped to address criticisms that the previously applied substantial new question of patentability (SNQ) standard was too low, and fostered harassment of Patentees.

Patently-O has reported a recent petition decision that comments on the new RLP test, and whether or not the new threshold would necessarily exclude requests for IPX that would fail the old SNQ test. Read the rest of this entry »