Request for Continued Examination (RCE) filings are largely a creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of RCE filings has increased significantly. This is largely the result of the Office switching the priority of
As discussed earlier this week the House is currently considering H.R. 6621, which proposes some technical corrections to the America Invents Act. One of the stated goals of the technical bill is to eliminate the 9 month dead zone that now applies to newly issued, first to invent patents relative to the availability of Inter Partes Review (IPR). This technical change is proposed in Section 1(d)(1) of the bill.
As a reminder, patents issuing today are not eligible for IPR until 9 months has elapsed from the time of issuance. This is because the first 9 month window after patent issuance is reserved for Post Grant Review (PGR) challenges; yet PGR is not a possibility for such first-to-invent patents. (first-inventor-to-file applications, which are eligible for PGR, will not even be accepted by the PTO until March 16, 2013)
The bill also proposes, in Section 1(d)(2) to address another perceived dead zone that is particular to reissued patents. But, correction of this perceived dead zone, in the manner proposed, may have unintended consequences.
Continue Reading Congress Proposes Second Post Grant Window for Patent Reissue?
As discussed last month, Congress will be considering a technical amendment to the AIA before Christmas. Congressman Lamar Smith (R-Tx) proposed this bill (H.R. 6621 here) to the House last Friday, passage of which seems very likely in the near term.
The proposed technical changes relating to post grant patent practice are as follows:
Continue Reading Draft Bill Proposes Fixes To America Invents Act
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
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.
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
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.
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?
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
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.
Continue Reading CRU Workload Extending Patent Reexamination Pendency?