Examination Quality vs Speed

The USPTO has had an accelerated examination program known as “Track-1” since 2011. The program allows patent applicants to advance a patent application out-of-turn such that a determination can be made within 12 moths of filing. That is, like a Lightning Lane of sorts (for you Disney fans) to skip the typical wait times for patent examination. In this way the program is said to be designed to foster “faster innovation.”

In theory, it is a great idea. If you are a start-up, for example, and need to get your claims allowed quickly for business reasons. Paying a fee for the expedited attention, agreeing not to extend filing dates of responses, and limiting the number of claims, is a fair compromise.

But, if patent examiners are rushed to judgement to meet internal deadlines, and do so without the most relevant information, the USPTO is doing the public a disservice. Recent trends also suggest that examiners may be moving these cases to allowance to get time-sensitive work off of their dockets.

Continue Reading The PTO Has a Track-One Filing Problem

Fall CLE

In a few days, the most comprehensive and informative of the big-room, CLE events returns — IPWatchdog Live 2022. On September 11-13, Live returns to Dallas for its second annual event.

Bringing together the intellectual property community—from politicos, to business executives, to attorneys, and inventors, Live is unique among the usual slate of fall bar organization meetings. With three days of programming, and roundtable discussion from industry insiders, judges, and business people, a multitude of topics will be explored from monetization, PTAB, ITC, legislation, funding, venue, and any more. (full agenda here)

The following week, the IPO holds its Annual Meeting in Los Angeles September 18-20, and later in October (27-29th), AIPLA returns to DC for its own Annual Meeting. Interestingly, AIPLA has booked the band Blues Traveler for its Friday night Gala….evidently. if you haven’t been out to a live CLE since the pandemic, “the hook will bring you back.”

I hope to see you at one of these upcoming events.

Thursday Boardside Chat

Last month, the USPTO) published a Federal Register Notice requesting public input on Director Review, Precedential Opinion Panel review, and internal circulation and review of Patent Trial and Appeal Board (PTAB) Decisions. This Thursday @1PM (EST) the PTAB will host its next Boardside Chat webinar. Vice Chief Administrative Patent Judges Melissa Haapala and Kalyan Deshpande will discuss the request for public comment. Webinar link (here)

A question-and-answer session will follow the presentation. Questions may be emailed in advance or during the webinar to PTABBoardsideChat@USPTO.gov.

Long Battle Ahead for Patentable Subject Matter Clarity

Remember the good ole days when every bar meeting had that Alice panel that said the same thing over and over? (i.e., “your guess is as good as mine”) And by good ole days, I mean the days when you skipped that panel and caught up on your emails back in your room. 🙂

Well, here we go again.

With American Axle failing to tempt the SCOTUS, the message has become clear….”Congress, this is your mess to fix.” So, we now embark on yet another adventure on sorting out the patent world’s biggest hairball – and that’s saying something!

Continue Reading Tillis Bill’s Shot Across the Bow on 101

Judicial Conference & Congressional Attention Stir Change

This time last year, the Western District of Texas (WDTX) was getting a lot of attention from Washington DC policymakers. That is, a plaintiff’s ability to guarantee that its case would be heard by Judge Albright simply by filing in his Waco court was seen as “unseemly” and, coupled with the fact that his court had close to 30% of the nation’s patent docket, improper. Likewise, to many, the twenty or so successful mandamus filings reversing the Judge on issues of venue only amplified the urgency for legislative and/or judicial intervention.

Whether you agree with the above sentiment or not, it was clear as far back as last summer that these practices were plainly living on borrowed time. Back then, it was clear within DC policy circles that if the Judicial Conference did not step in and put an end to Judge Albright’s perceived monopoly on patent cases, that the legislators were prepared to take action.

Yesterday, the Chief Judge of the WDTX took action.

Continue Reading WDTX Scatters Patent Docket – Now What?

Summer Focus on Politics & Policies

As we move into the slower months of the summer in Washington D.C., here is a quick run-down of a number of hot-button IP legislative and policy matters.

  • 101American Axle presented the best hope for 101 reform coming from SCOTUS. The back of the hand provided by the Court (despite the gov’t recommendation) is exceedingly rare for a patent case. What this should tell you is that the Court is giving up, and leaving this matter to the legislative branch. As to that option, there was a Herculean effort to get something done a few years back that was ruined by extreme viewpoints (as is the way of DC these days). I have little hope anything will be done on the legislative front soon. With midterms on the immediate horizon, and the PTAB Reform Act on deck, look to 2023 or beyond for any legislative effort. That said, I wouldn’t hold my breath.
  • PTAB Reform Act – With Director Vidal providing a clear pathway to avoid discretionary denials, I would not expect to see more than a handful of such denials going forward. For example, where a petitioner refuses to file the full Sotera stipulation. As such, the bill simply would prevent the next Director from reinvigorating this practice. The other proposed changes in the bill, are simply not very impactful. There were some hearings on the Hill a few weeks back designed to show that the sides of the issue could be extreme, and that the Bill was a fair compromise. The invited speakers did their job in that regard. I expect the Bill to reach a floor vote in the fall session. I wouldn’t expect too much push-back given the limited set of changes. This is Leahy’s IP swan song, and the Bill has traction.
  • PTAB Abuse – As I predicted a few months back, the new Director Vidal has turned her attention to the OpenSky debacle. The Director has now sought amicus input, which is more about optics than anything else. I suspect that agency knows where it is going, but, the public input will help insulate it from critiques on making agency policy through adjudication that is independent of public input. A new test will seemingly be established as to when the PTAB is being abused. I proposed my ideas well in advance. I expect some kind of factor-based test along the lines that I outlined, OpenSky to be sanctioned with termination (and probably more), and the PQA IPRs to be allowed to continue. (By not staying these proceedings, that writing seems already on the wall. Don’t count that money yet VLSI!)
  • Notice of Proposed Rules – The USPTO has promised some Notice-and-Comment Rulemaking on the Director Review process post-Arthrex, which should be relatively straight forward. The agency has also recently proposed some adjustments to the calculation of PTA in light of certain IDS filings. I don’t see anything else on the immediate horizon.

Should make for an interesting fall, just in time for IPWatchdog live 2022 in Dallas.

In-Person Hearing are Back

This Thursday (Noon – 1PM(EST)), the next Patent Trial and Appeal Board (PTAB) Boardside Chat webinar will be conducted to discuss plans to re-establish in-person PTAB hearings and tips from judges for successfully arguing in different environments (connect here)

Topics and speakers for this event include:

  • In-person options for PTAB hearings starting in mid-July – Lead Administrative Patent Judge Christopher Kaiser and PTAB Chief Clerk Erica Swift
  • Tips for successful hearings in remote and in-person environments – Administrative Patent Judges Grace Obermann, Scott Daniels, and Garth Baer

A question-and-answer session will follow the presentation. Please send questions in advance or during the webinar to PTABBoardsideChat@USPTO.gov

PTAB Reform Act of 2022

Back in September of 2021, the “Restoring the America Invents Act” was released by Senators Leahy (D-VT) and Cornyn (R-TX). The bill sought to reverse virtually every PTAB development of the Iancu administration. At the time, I outlined my thoughts on the various provisions, and predicted the most controversial—from a bio/pharma perspective— would serve as cannon fodder.

Last week, a revised bill reemerged entitled the “PTAB Reform Act of 2022.” The new bill, includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.

Continue Reading Proposed PTAB Reforms Adjusted for Bio/Pharma

Memo Responds to CAFC Refinement

At the close of former USPTO Director Iancu’s tenure, he issued a memo explaining that Applicant Admitted Prior Art (AAPA) should not be used as a basis of an AIA trial ground.

Today, new Director Vidal issued a revised memo to “provide more certainty and predictability in proceedings before the Patent Trial and Appeal Board (PTAB). This guidance supersedes the guidance previously issued by former Director Iancu.

Specifically, the updated guidance clarifies that AAPA does not improperly form the “basis” of an IPR under § 311 when the IPR petition relies on AAPA in combination with one or more patents or printed publications, and is consistent with the recent decision of the Court of Appeals for the Federal Circuit in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022). That is, as long as the AAPA is not an explicitly named component of a trial ground, it may still be used as an evidentiary basis underlying the ground.

You can find the full memo (here)