November 2012

AIA Creates Dilemna for USPTO on Patent Ownership

This past Monday, the USPTO issued a Notice in the Federal Register entitled Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term (here).

In a nutshell, the agency is currently struggling to promulgate regulations to unravel the complex business relationships behind many patent assignments (i.e., real-party-in-interest). For example, some large patent aggregators may create subsidiaries or exclusive licensee arrangements that are not captured in current assignment records of the USPTO. Yet, the new prior art defintions of the AIA demand transparency in this regard.…

Continue Reading USPTO Seeks Insight Into Business of Patent Ownership

Director Announces January 2013 Departure

In an email to USPTO staff Director Kappos announced he will depart the agency in January. Director Kappos’ tenure is widely recognized as the “golden age” of USPTO leadership having successfull implemented the massive changes brought about by the America Invents Act, as well as modernizing and updating agency practices.…

Early 2013 CLE Programs Announced

With 2013 on the horizon, it is time to look forward to a fresh crop of CLE programs directed to the new post grant proceedings of the Patent Trial & Appeal Board (PTAB).

Starting off in January is the 8th Annual Patent Law Institute at the USPTO Alexandria campus. The…

Tepid Demand for New Proceeding

Supplemental Examination (SE) is a new mechanism of the AIA designed to effectively cure inequitable conduct via a new post grant proceeding of the USPTO. The new mechanism went into effect on September 16, 2012 along with the other major post grant provisions.

As reported by Patently-O last week, only a handfulof SE filings have been submitted to date, far fewer than expected by some.

In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may render the patent invalid under an inequitable conduct theory. Upon submission of Substantial New Questions of Patentability (SNQs) detailing such potential defects, the Office will reconsider the information; that is to say the Office will perform a “supplemental examination.” Once such issues are considered and dispatched by an SE certificate, the subject patent would be free of inequitable conduct charges based on the issues considered in the SE. On the other hand, should the materials presented raise an SNQ, a form of patent reexamination is conducted (differing from typical practices in that it is not be limited to patents and printed publications).

Sounds like a great idea….and it was, prior to Therasense.…

Continue Reading Supplemental Examination….Who Needs It?

AIA technical amendment

Congress Returns to Action

With the election season now concluded, Congress will shift their focus back to more traditional duties, like playing chicken with the world economy as we teeter on the “fiscal cliff.” The pessimist in me would find it hard to believe that the much discussed technical amendments to the AIA are anywhere near the top of the legislative agenda, but, hope springs eternal ….and there are quite a few tweaks that are in order on the post grant side of the equation.

Perhaps the most pronounced “error” of the AIA, whether deemed truly “technical” or not, is the all encompassing estoppel provision of Post Grant Review (PGR).
Continue Reading Congress to Tackle Potential AIA Fixes?

PTAB Issues Decision Denying Appearance of Non-registered Practitioner

Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c). Last week, I pointed out the expanded panel order of the PTAB in IPR2013-00010 (order here), which outlined the…

Reexamination Filing Surge Dismissed as Speculative

Back in September, I explained that the USPTO received an unprecedented number of reexamination filings in the closing days before the September 16th. This surge was a result of several factors: First, the fee for ex parte patent examination was jumping from $2520 to $17,500 as of the 16th;  and, as a result of the one year anniversary of enactment of the America Invents Act (AIA) on the 16th, September 15th was the last day to file a request for inter partes patent reexamination.

Currently, the Central Reexamination Unit (CRU) is working through the bolus of filings, still trying to get them all docketed and reviewed within the 90 day statutory period. Seizing upon this influx of work, a Patentee recently argued against staying their district court proceeding pending inter partes patent reexamination — arguing that the USPTO process would now be much slower.

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Continue Reading CRU Workload Extending Patent Reexamination Pendency?

CAFC Denies En Banc Review of In Re Baxter Decision

Earlier this year, the CAFC decided In re Baxter International Inc. (here). As a reminder, in Baxter, the CAFC considered an appeal from the Board of Patent Appeals & Interferences (BPAI) that found certain claims of U.S. Patent 5,247,434 unpatentable in an ex parte patent reexamination.

The request for patent reexamination was filed by Fresenius USA Inc. in 2007 during a patent infringement litigation with Baxter. Interestingly, the Court first considered the validity of the ‘434 patent on appeal from that litigation. In that first appeal, based on some of the very same art applied in the reexamination, the Court found the patent not invalid in 2009. In the second appeal, decided in May of 2012, the same art was presented to the Court. Viewing the same art in 2012, on appeal from the BPAI, the Court affirmed the determination of the BPAI that the claims were obvious over the applied prior art.

Judge Newman issued a strong dissent to the second outcome, explaining that “[t]he validity of the Baxter patent was resolved upon litigation in the district court and on appeal to the Federal Circuit. This judgment cannot be “revised, overturned or refused full faith and credit by another Department of Government. . . .. Nonetheless, the court again departs from this principle, trivializes our prior final judgment, and simply defers to the conflicting agency ruling. This is improper.”

Not surprisingly, Baxter petitioned for rehearing and en banc review of the earlier decision.
Continue Reading CAFC Refuses En Banc Review of “Do-Over” Patent Reexamination