Patent Prosecution
By Scott A. McKeown
| November 23, 2016
Related Applications & PTAB Trials: Post-Grant Pilot Results

Patent Examiners Leverage AIA Trial Data


Back in April, the USPTO launched the Post Grant Outcomes Pilot, which focused on pending patent applications that are related to patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). The agency now reports that the Post Grant Outcomes Pilot has succeeded in making examiners aware of trials related to applications they are examining, and in turn has facilitated the timely and effective examination of applications.

The idea behind the program is that AIA trial proceedings contain prior art and arguments that might be highly relevant to the patentability determination of related applications currently under examination. This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability.

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By Scott A. McKeown
| November 2, 2016
USPTO Issues 101 Guidance Update after Bascom

New 101 Guidance Addresses Recent CAFC Decisions


Today, the USPTO issued a memorandum entitled "Recent Subject Matter Eligibility Decisions." (here).  The memo  provides a discussion of two recent CAFC decisions identifying eligible subject matter, namely McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).

With respect to McRO, the memo emphasizes the value of the specification in interpreting claims under 101, specifically where a problem is identified in the art, and the solution presented in the claims. As to Bascom, the memo emphasizes that conventional elements may nonetheless be arranged in unconventional manners (again emphasizing the value of the specification in explaining such).

The Office promises more updates in the future, including addressing yesterday's decision in  Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016), which found distributed computing to be an unconventional technological solution. 

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By Scott A. McKeown
| October 28, 2016
USPTO to Adjust Duty of Disclosure to Align With Therasense

USPTO Revisits 2011 Rule Proposal (Rules 56(a) &555(a))

In the wake of the Federal Circuit's 2011 decision in Therasense Inc. v. Becton Dickinson and Co., the USPTO quickly moved to revise the Duty of Disclosure to align with the Court's new, but-for materiality standard—perhaps too quickly.  The 2011 proposal sought to update the relevant rules (1.56 and 1.555) by explicitly adding a short hand, reference to the Therasense case itself. The earlier proposal also intertwined the the "egregious conduct" exception of the Therasense holding (Duty of Candor & Good Faith) with the Duty of Disclosure.

At the time, I questioned whether it was unnecessarily confusing to mix together concepts of conduct and disclosure given the agency's historical segregation of such. Others found it odd that the rule would reference the name of the case as opposed to spelling out the "but-for" materiality standard of its holding.

Today, the USPTO has revisited this earlier proposal, and issued a new proposal.  

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By Scott A. McKeown
| July 11, 2016
New Panel Hearing Option for After Final Patent Practice

USPTO Post-Prosecution Pilot Program

While not directly related to Patent Trial & Appeal Board (PTAB) practice, today, the USPTO announced the launch of the "Post-Prosecution Pilot Program." (here) The program is designed to provide more feedback to applicants by allowing them to participate in a panel discussion with examiners after a final rejection.

The goal of the Pilot is to reduce the number of appeals to the PTAB. Essentially, the program allows for participation in person, or remotely, in a pre-appeal brief style hearing of the prosecution.  

In my view, this type of feedback will be especially valuable to patent applicants (which is why I recommended the same roughly 6 years ago).
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By Scott A. McKeown
| July 16, 2014
PatentsPostGrant.com Webinar July

Free Webinar Series - July


This month's edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, July 23rd @12:30 (est). The July webinar is entitled:

Post-Grant Proofing Your Patent Portfolio: Prosecuting for the New Patent Assertion Landscape. (Speakers are Scott McKeown, Dianna Devore Ph.D, and Chris Bullard).

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. VA CLE credit will be provided.

We look forward to speaking with you during the webinar.

(For those seeking PTAB strategy CLE this month, please join my colleague Todd Baker tomorrow on AIPLA's webinar enitled PTAB: Tactics for Launching a Patent Attack and for Surviving One)
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By Scott A. McKeown
| June 25, 2014
USPTO Issues Preliminary 101 Guidelines After CLS Bank

USPTO 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.
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By Scott A. McKeown
| June 20, 2014
The Impact of CLS Bank: Webinar 6/25

Free 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
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By Scott A. McKeown
| January 27, 2014
USPTO Seeks Comments on New Ownership Reporting Proposal

USPTO Proposes Attributable Owner Requirements


Last week, the USPTO released a Notice of Proposed Rulemaking (NPRM) entitled Changes to Require Identification of Attributable Owner. The proposals would heap significant new administrative requirements on patent owners in the name of thwarting abusive patent suits. The agency explains the new reporting requirements will, in part, reduce risk of abusive patent litigation by helping the public defend itself against such abusive assertions by providing more information about all the parties that have an interest in patents or patent applications.


The proposal is unlikely to cause any kind of meaningful relief for companies targeted by patent trolls. Unfortunately, this effort is being driven from the White House. The PTO is fully expecting the firestorm that is coming to push back on this misguided mandate....unleash the fury.



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By Scott A. McKeown
| January 14, 2014
AIA patent prosecution
PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm

As Bob Dylan once warned, you better start swimmin' or you'll sink like a stone....the times they are a changin.' While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).


I'm not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the "infringement first" philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.


The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.



Until recently, infringement was still the primary driver behind most patent prosecution philosophies because patent invalidity can be exceedingly costly and difficult to prove in a district court. For example, an overly broad claim has obvious benefits for proving infringement. This same claim is less of an invalidity concern given: (1) the presumption of validity accorded issued patents; (2) clear and convincing evidence necessary to invalidate; and (3) necessary time and legal fees. As such, securing a claim that was overreaching relative to the closest prior art was a calculated risk most patentees were happy to take. While it is true that such patents were susceptible to patent reexamination challenge at the USPTO, reexamination was too slow to matter in all but the most lenghty of litigation timelines.


Post-AIA, IPR, PGR and CBM are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, all such challenges must conclude, by statute, within 12 months of institution. This turnaround is a dramatic improvement over the 3-5 year pendencies that plagued patent reexamination. For this reason, the PTAB has been a major disruption to the business of patent licensing and assertion in the U.S; especially to that of the dreaded “patent troll.


Almost every patent litigation is now accompanied by an IPR or CBM. The patentability determinations in these cases will occur prior to trial in all but the fastest district court venues. Since these Patent Trial & Appeal Board (PTAB) determinations, assess patentability and not invalidity, patentees cannot seek refuge in a presumption of validity or clear and convincing evidentiary standard. Simply stated, you DO NOT want to defend an overreaching claim at the PTAB. In fact, depending upon how such a claim is defended, an entire portfolio of patents and continuation filings could be surrendered in one fell swoop.


For this reason, patent applications must now be prosecuted with an eye toward patentability, not invalidity.



On February 13, 2104 I will be speaking on this important topic along with my partner Chris Bullard in a program entitled Proactive Patent Procurement and Prosecution Strategies: Minimizing the Threat of Post-Grant Challenges. This program will explain the new patent procurement landscape and best practices for procuring patents and developing formidable portfolios in the post-AIA world.

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By Scott A. McKeown
| September 25, 2013
USPTO Increases Examiner Credits to Address RCE Backlog

USPTO Adjusts Examiner Count System to Address Growing RCE Backlog


Some notable pre-grant news this week. A Request for Continued Examination (RCE) is largely a procedural creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of RCE filings has increased significantly. This is largely the result of the Office switching the priority of such filings on examiner dockets while reducing examiner credit for processing RCEs. This priority switch was designed to reduce the backlog of unexamined patent applications. Not surprisingly, as the unexamined application inventory went down, RCE inventory went up as illustrated in the above chart.


Starting on October 1st, the USPTO will recalibrate the Count System Initiative (CSI) to incentivize work on the RCE backlog. (Under the previous version of CSI, 1.75 credits were available for the first RCE, and 1.5 for the second and subsequent)


On October 1, 2013 examiners will receive a total of 2.0 counts for the 4th and all subsequent RCEs in which a first office action is done in the first quarter of the fiscal year, and 2.o counts for the 5th and all subsequent RCEs in which a first office action is done in each of the second, third, and fourth quarters of the fiscal year.  


Also, examiners with higher RCE inventories will have more limited inventories of regular new applications available for action until their RCE inventories are reduced below predetermined thresholds.  


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