USPTO_LogoIn a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner accepting a non-compliant brief only to have the Board kick it back to applicant months or even years later for a previously overlooked informality. Likewise, some complained of examiners abusing the non-compliance notice as a way to avoid answering appeal briefs. The notice of March outlined a new mechanism by which the Chief Judge would be solely responsible for determining brief compliance prior to Examiner review. At the end of this notice, the USPTO pointed out that ex parte and inter partes patent reexamination appeals were not subject to the new mechanism, but the Office was considering such treatment in the future.

Back on May 26, 2010, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. Yesterday a notice was provided in the Federal Register adding inter partes reexamination to the BPAI review mechanism. These improvements should help avoid some of the more aggravating delays experienced in reexamination appeals to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.

USPTO_LogoIn a March Federal Register Notice, the USPTO outlined a new procedure for eliminating redundant appeal processing in patent applications. The redundancy was the result of both the examiner and BPAI performing the same review as to whether or not an Appeal Brief was compliant with the rules. Often times this led to the examiner accepting a non-compliant brief only to have the Board kick it back to applicant months or even years later for a previously overlooked informality. Likewise, some complained of examiners abusing the non-compliance notice as a way to avoid answering appeal briefs. The notice of March outlined a new mechanism by which the Chief Judge would be solely responsible for determining brief compliance prior to Examiner review. At the end of this notice, the USPTO pointed out that ex parte and inter partes patent reexamination appeals were not subject to the new mechanism, but the Office was considering such treatment in the future.

Yesterday, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. A notice relative to inter partes is expected in the near future. These improvements should help avoid some of the more aggravating delays experienced on appeal to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.

Proposal to Thwart Rerun Patent Assertions

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
USPTO Issues NPRM to Codify Amendment Pilot Permanent

While awaiting the overdue Notice of Proposed Rulemaking (NPRM) on the hodgepodge of proposals from last year, the agency has issued a few NPRMs over the past week. First was a proposal to streamline the pro hac vice practice (non-event). Late last week a slightly more interesting NPRM was issued to formalize the provisions of the Motion to Amend (MTA) Pilot Program. (here)

As a reminder, the MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA based on the feedback. Of course, it is rarely a good idea to amend claims at the PTAB regardless of the mechanisms used. This is why the agency reports less than 10% of proceedings include an MTA. Still, for those few patent owners interested in amending, the pilot program offers some incremental procedural value.

The NPRM, aside from seeking to codify existing practices, additionally outlines the exercise of discretion in the wake of the Hunting Titan case. That is, what role does the agency play in raising unpatentability grounds of its own for amended claims — particularly given the presumption of validity accorded issued claims?

Prior to Hunting Titan, the agency took the view that it should be a “rare circumstance” when the PTAB might raise a new ground of unpatentability on its own. The CAFC found that standard inconsistent with the agency’s public policy in protecting the public from improvidently granted patent monopolies.

The NPRM proposes that the Board will exercise its discretion in raising new grounds where a petitioner stops participating, or decides not to challenge the amended claims. In exercising that discretion, the Board may request prior art search support from the examining corps; a rare scenario. But at least the academic debate on how unexamined claims might be accorded a presumption of validity has been put to rest.

Unnecessarily Ambitious

Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.

Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.

Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)

Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly
Non-precedential Decision Faults Long-Standing PTAB Practice

Securing additional IPR discovery at the Patent Trial & Appeal Board is a challenge. This is because, such discovery is not accorded as a matter of right, but in the interests of justice. And, frequently, such requests are speculative attempts to add unnecessary complexity to an otherwise streamlined proceeding.

Often times, the Board simply denies requests to authorize a motion on additional discovery via teleconference. That is, the call to receive authorization to file the motion also functions as a hearing of sorts on the merits of the requested motion.

Earlier this week, the Federal Circuit faulted the Board’s practice of denying motion practice in this manner, holding that parties have a right to file motions. Continue Reading Discovery Motion Practice to Become More Commonplace at PTAB

Issue Joinder Practices Poised to Reset

As previously discussed, the Patent Trial & Appeal Board (PTAB) is now reconsidering its issue joinder practices. These practices were the subject of significant debate internal to the Board a few years back. The inability of the Board to arrive at a majority consensus on whether issue joinder was permitted by the AIA statutes led to the now infamous “panel stacking” decisions. These expanded panel decisions provided a brute force solution to the conflicting positions on the question of issue joinder, a de facto precedent of sorts.

With the new Precedential Opinion Panel, or “POP,” allowing for a more streamlined process for making precedent, the Board seems poised to drive official PTAB precedent on this question — but in a new direction. Continue Reading New PTAB Precedent Panel Conducts First Hearing

Senator Hatch Proposes PTAB Exception for Orange & Purple Book Patents

As explained earlier this week in a study by my partner Filko Prugo, Orange & Purple Book patents fare no worse at the PTAB than in the courts. That said, some believe that the ability to challenge such patents in a faster, cheaper expert forum upsets the balance of power in the existing drug innovator landscape.

Today, Senator Orrin Hatch (R-UT), the Chairman of the Senate Republican High-Tech Task Force and co-author of the Hatch-Waxman Act, filed an amendment in the Senate Judiciary Committee to in his words “restore the careful balance the Hatch-Waxman Act struck to incentivize generic drug development.” Senator Hatch’s amendment, the Hatch-Waxman Integrity Act of 2018, is argued to  prevent alternative procedures for challenging drug patents from tilting the playing field contrary to Hatch-Waxman’s design. It is also argued to ensure that brand-name and generic manufacturers alike have the proper incentives to develop life-saving medications. Continue Reading Senate Moves to Exclude Orange & Purple Book Patents from PTAB

SAS Weighs in Favor of Stay Pre-Institution

At the time SAS Institute first raised its challenge to the partial institution practices of the Patent Trial & Appeal Board (PTAB), I explained that should this argument ultimately prevail that it would be bad news for Patent Owners. Patent Owners facing a motion to stay pending PTAB review frequently leveraged partial institutions to defeat the stay. Such motions were denied because one of the factors considered in the motion analysis is the potential for “simplification of issues for trial.”  And where a trial would eventually be conducted regardless of PTAB outcome — the case when there was a partial institution — this factor weighed strongly in favor of Patent Owners continuing the district court litigation .

Post-SAS, this argument is now gone. The impact of SAS on common stay scenarios is already being felt by Patent Owners. Continue Reading New SAS Reality Impacts Motion to Stay Analysis

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.
During the pilot, the USPTO notified examiners via email of assigned applications relating to an AIA trial. The pilot program streamlined access to the contents of the trial by pinpointing for examiners the most relevant documents. The USPTO then surveyed the examiners to gain detailed feedback.

The survey results (here) showed that examiners found the PTAB information—especially the initial petition (including the prior art citations), the PTAB’s institution decision, and any expert declarations—to be highly useful.  The PTO also found that 46% of the examiners referred to at least one reference cited in the AIA trial petition during the examination of their own case, either by citing it in a rejection or as pertinent prior art. If an examiner did not use or cite the prior art from the trial, it was most likely because the claims were different between the “parent” and the “child” case, the examiner disagreed with the AIA petitioner’s analysis of the prior art and/or claims, or the examiner was able to find better art.

To further facilitate the process, in August 2016 the USPTO deployed an upgrade to examiners’ desktop application viewers which allows automated access to the contents of related AIA trials, including access to the entire file, and any cited prior art.  Now that the results of the pilot are available, the  next objective is to identify examination best practices or deficiencies that can be addressed through additional examiner training.