Today the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. As expected by many following the case, the Court decided that being “first” matters in double patenting scenarios—at least when the subject and reference patent claim a common priority. (here)
Allergan answers one question, but others remain.
Continue Reading Allergan “First” Exception To Cellect OTDP Scenarios
Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.
In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.
Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue.
Continue Reading CAFC Backs Patent Owner Estoppel – PTAB Should Stop Suggesting Otherwise
Tomorrow, Thursday, July 18, from noon to PM (EST), the USPTO will offer another episode of its “Boardside Chat” webinar series. This month, the webinar will focus on motions practice in America Invents Act (AIA) proceedings before the PTAB. The presentation will include a discussion of various motions that are available to parties during an AIA proceeding, the procedural requirements for filing each motion, and some common mistakes made during motions practice. PTAB judges will also share practical tips and discuss strategies that may be effective in seeking motions before the board.
The panel features:
• Administrative Patent Judge Brian McNamara
• Administrative Patent Judge Grace Obermann
A Q&A session will follow the presentation. Questions may be sent in advance or during the webinar to PTABBoardsideChat@USPTO.gov. Register (here)
For those patent professionals living under a rock the past few months, the USPTO issued a notice of proposed rulemaking (NPRM) back in May that seeks to add a new stipulation requirement for terminal disclaimers filed to overcome non-statutory double patenting (here). Under the proposal, to overcome an obviousness-type double patenting rejection, the Applicant would need to stipulate that the entire patent subject to the terminal disclaimer will be enforceable only to the extent that the conflicting claims of the reference patent remain valid and enforceable. In other words, if conflicting claims of a reference patent fail, so too would all claims of the subject patent, including any patentably distinct claims.
The NPRM comment period closed yesterday and hundreds of public comments have been collected (here). Now what?
Continue Reading Public Comment Period on Controversial Terminal Disclaimer Proposal Now Closed
For those seeking CLE, or just the latest updates and practice changes, consider joining me and my colleague Libbie DiMarco for the upcoming Mid-Year Litigation & PTAB Review. The webinar will be offered twice on Wednesday, June 26th. First for U.S. attendees (12-1PM EST), and again for Asian based attendees (9-10PM EST). CLE is offered for NY only.
The program will cover:
Register for either time (here)
Yesterday the PTAB announced an update to its Standard Operating Procedure (SOP 1). The update explains how judges are paneled, recused, and staffed on a given case. This latest revision aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures. In other words, this SOP is just memorializing how the Board has been internally managed. (Such transparency has become increasingly important over the years given the cottage industry of PTAB conspiracy theorists, which is certainly not lost on the agency)
The SOP update (here), explains in relevant part:
This Thursday May 16th, from noon to 1 p.m. ET, the USPTO will conduct its latest “Boardside Chat.” This week’s program will provide an overview of two recently published notices of proposed rulemaking impacting the the PTAB.
Register (here)
As always, a question-and-answer session will follow the presentation. Questions may be sent in advance or during the webinar to PTABBoardsideChat@USPTO.gov.
An inventor may obtain claims in a second U.S. patent that vary in only minor (patentably indistinct) ways from claims the same inventor obtained in a first patent. But the USPTO will typically reject the claims in the second application under the doctrine of “obviousness-type double patenting.” Inventors can overcome such rejections during prosecution to obtain the second patent (and many more thereafter if desired) by filing a terminal disclaimer. The language of the terminal disclaimer prevents the timewise extension of patent term through multiple filings and prevents the indistinct claims from being separately assigned. In this way, terminal disclaimers are designed to strike a balance between incentivizing innovation while providing more certainty and protection to the public.
Over the years, the terminal disclaimer has worked exactly as designed. However, the usual bad actors have driven the USPTO to propose its first change in decades.
Continue Reading Terminal Disclaimer Proposal Driven By Rerun Lawsuits
PTAB 314(a) discretionary practices have followed the so-called “Fintiv factors” for years now. Under former Director Iancu (Republican appointee) Fintiv denials were so commonplace that overall institution rates dropped almost 10%. Current Director Vidal (Democrat appointee) recalibrated PTAB Fintiv practice via memo, and, as a result, Fintiv denials are relatively uncommon today. As Director Vidal’s memo is not committed to regulation, the next Director is free to swing the pendulum back.
It may seem that the likelihood of any such change is dependent on the outcome of the election given the tug-of-war of Trump/Biden appointees. But, it seems increasingly likely that that such a swing is inevitable regardless of election outcome.
Continue Reading Will PTAB Fintiv Practices Be Reinvigorated Under the Next Director?
The wait is finally over! (no not Taylor Swift’s new album…think nerdier….like way nerdier)
Last Friday the USPTO finally released its Notice of Proposed Rulemaking (NPRM) directed to Patent Trial & Appeal Board Practices (here) a year after its overly-ambitious Advanced NPRM (ANPRM) was released. While readers of this blog already knew what was going to be in the NPRM, the release of the NPRM at least confirms that the agency still intends to move something forward in the waning months of the Vidal administration. Whether the agency will get anything over the finish line in time is far from clear.
The NPRM is most noteworthy for what it does not include — every underdeveloped/legislative idea of the ANPRM. But that was entirely predictable. Perhaps more concerning is the absence of a codification of current Fintiv 314(a) practices. Such discretionary denial practices exploded under the previous Director only to be reined in under Director Vidal via a guidance memo. This ping-pong action will continue across administrations unless and until regulations are issued. The next Director will almost certainly reinvigorate Fintiv practices regardless of election outcome (more on that later this week)
As to the content of the NPRM itself, some marginal value and an oddly misguided option that hurts Patent Owners and risks derailing the entire proposal.
Continue Reading Limited PTAB Rule Proposal Marred by Ill Conceived Briefing Changes