Scott McKeown

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No Role For POP Post-Arthrex

As of Monday July 24th, the USPTO has discontinued the use of its Precedential-Opinion-Panel (POP) in favor of the interim Director Review (DR). This move was not unexpected as the POP panel (an early attempt to cure the Arthrex infirmity with partial Director oversight) was effectively replaced by the SCOTUS decision in Arthrex (Director Only).

In relying only on the DR moving forward, the PTAB has also decided to expand it to AIA institution decisions.Continue Reading PTAB Drops POP Panel Review Option

Preliminary Guidance More Hinderance Than Help

Patent Owner’s rarely seek to amend claims during PTAB trials. This is because, as most such patents are being simultaneously litigated, amendment introduces a host of complications — not the least of which is creating an intervening rights defense for the patent challenger. This is why amendments are historically seen in about 5-7% of PTAB trials.

For the rare Patent Owner that is inclined to amend, the PTAB offers an Amendment Pilot Program. The Pilot is designed to help Patent Owner refine their amendment positions with two opportunities to amend (non-pilot route permits one amendment submission). Under the Pilot, the Patent Owner can also request the panel’s preliminary assessment (i.e., Preliminary Guidance) of its initial amendment to assist in refining the final amendment submission.

But, practically speaking, Preliminary Guidance is a significant gamble for Patent Owners that is rarely worth taking. And as the Federal Circuit pointed out earlier this week, even when seemingly helpful, it may still prove ultimately unhelpful.Continue Reading PTAB Amendment Pilot – Guidance or Hinderance?

Prosecutor’s Tool Box 2017

Patent prosecutors navigate complex USPTO rules and seemingly esoteric examinational requirements to procure patent rights. In doing so, it is easy to lose sight of the fact that the Manual of Patent Examining Procedure (MPEP) does not have the full force and effect of law. Nevertheless, patent examiners (rarely trained lawyers) adhere to their interpretation of the Manual requirements. To budge examiners off of entrenched, legal positions, savvy prosecutors will keep a trained eye on the Federal Circuit for help.

2017 provided several decisions of immediate value to patent prosecutors.
Continue Reading 2017 CAFC Guidance for Patent Prosecutors

Chief to Discuss Current PTAB Developments

The USPTO’s Patent Trial & Appeal Board (PTAB) is holding a “Chat with the Chief” webinar tomorrow, Tuesday, Dec. 19 from noon to 1 p.m. ET.  The free webinar will explore recent developments in PTAB practice.  Chief Judge David Ruschke will discuss recent agency guidance such as Aqua Product…

AIPLA Webinar Today 12:30-2PM (EST)

For those needing those pesky CLE ethics credits before year end, consider today’s AIPLA webinar Ethics Issues in PTAB Proceedings. (register here)  – 1.5 Ethics credits are offered.

Course Description: AIA trial proceedings present heightened risks for practitioners unaccustomed to participating in a live, patent prosecution history. Unlike…

The Tension Between Judicial Independence & Agency Consistency

As I have pointed out previously, the Board struggles to issue precedential decisions. This is because the Board (now approaching 300 judges) must reach a “sufficient majority” consensus on an issue before designating it precedential. As a practical matter, this outdated process excludes all but the most straight forward questions of law from receiving enough “yes” votes to be designated precedential.

To be sure, such disparity in opinion across a large number of judges is not surprising on close questions of law. Reasonable minds differ. Which is why it is somewhat surprising that 98% of PTAB merit-based decisions are unanimous.
Continue Reading Judicial Independence & The PTAB

I love to create bokeh from colorful things. This was taken from some colorful glasses.
Shabu Anower, Unsplash

Best Practices for Presenting Prior Art

Join the PTAB for the final Boardside Chat webinar of 2017 today, Dec. 7 from noon-1 p.m. ET. The chat will discuss “Best Practices for Presenting Prior Art References and Proving a Document is a Printed Publication.”

PTAB Judges Lora Green and Brian McNamara will present and…

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Functional Claiming & PTAB Ethics in December

For those seeking some CLE before the holiday break, there are some interesting webinars on the immediate horizon.

Today, on the IPO Chat Channel, Functional Claiming After Mastermine Software v. Microsoft.  Functional claiming and definiteness standards will be analyzed in view of recent Federal Circuit decisions. (register…

High Court Poised to Endorse PTAB & Partial Institution Practices

While I will discuss my more detailed impressions during tomorrow’s webinar, a few quick thoughts.

Oil States

-Article III review of the PTAB, and more particularly de novo review of legal issues, was key to a majority of Justices.

-Trying to distinguish reexamination and…