Scott McKeown

Subscribe to Scott McKeown's Posts
Contact:Read more about Scott McKeown

Patentees Faced with a New Game on September 16th

For those litigious patentees that have not paid much attention to the passage of the America Invents Act (AIA), or more particularly, the details of the new post grant validity trials of the Patent Trial & Appeal Board (PTAB), a rude wake up call may be headed in your direction. Starting this Sunday, petitions for Inter Partes Review (IPR) and the Transitional Program for Covered Business Method Patents (TPCBMP) will begin to be accepted by the USPTO.

IPR is available for all existing patents (but note the dead zone for very recently issued patents). This is a big change from the previous inter partes patent reexamination model which could not reach patents that stemmed from applications filed before November 29, 1999. TPCBMP will permit the presentation of invalidity arguments that are not based on patents and printed publications. Presentation of non-documentary evidence was not permitted under the old reexamination based system.

There are some standing requirements for petitioners, however, that may prevent some from filing a petition for IPR/TPCBMP. In IPR. standing considerations are primarily based upon certain parallel litigation factors. Namely, a petitioner that has filed a previous declaratory judgment of invalidity against a patent cannot later challenge the patent in IPR, nor can a petitioner that has been served with a complaint for infringement at least 12 months prior. As to TPCBMP, only those petitioners that have been sued or charged with infringement of a qualifying “business method” patent have the necessary standing.

Both IPR and TPCBMP proceedings will provide for limited discovery, be conducted exclusively by Administrative Patent Judges (APJs) of the PTAB, and completed within 12-18 months, by statute.

With the expanded scope and benefits of the PTAB trial proceedings, patentees that previously were unaffected by patent reexamination may find themselves on unfamiliar ground in a few days. So, if your patent becomes the subject of a petition for IPR or TPCBMP, now what?

…
Continue Reading Your Patent Has Been Challenged at the PTAB….Now What?

USPTO Webinar Scheduled Today, FAQ Published

As a reminder, the USPTO will conduct a training session from 10 am – noon, in the North Auditorium of the Madison Building at the Alexandria Campus of the USPTO. The training session will be directed to the new Patent Review Processing System (PRPS) of the Patent Trial & Appeal Board (PTAB). The session will be broadcast via WebEx and available for replay thereafter. Information to connect to the training session via WebEx is provided below.

WebEx participants will be able to submit questions through the WebEx chat session.

The USPTO has also issued a brief FAQ on the PRPS system:…

Continue Reading New E-filing Portal for Post Grant Patent Trials Unveiled Today

Proposal Apportions Post Grant Patent Trial Fees Into Petition & Trial Phases

As I predicted in early August, the USPTO has announced a proposal to apportion the filing fees for the new post grant proceedings of the Patent Trial & Appeal Board (PTAB) across petition and trial phases; primarily as a mechanism to facilitate refunds. A portion of the proposed fees would correspond to the cost of considering the petition filing, the second portion would correspond to the cost of conducting the trial. This proposed fee structure is set pursuant to Section 10 of the America Invents Act (AIA), and provides revised fees not only for the new post grant patent proceedings, but also for ex parte application prosecution as well. The Notice of Proposed Rulemaking (NPRM) will be published in the Federal Register on Thursday. (advanced reading room copy here)

Aside from the post grant fee apportionment (discussed in detail below, which actually provides a slight fee reduction), notable fee increases include a change to the RCE filing fee for ex parte prosecution. The RCE fee based upon the number of previously filed RCEs. For example, the cost of an RCE moves from the current $930 for large entitites to $1200 for the first RCE, and $1700 for the second and subsequent RCEs. You may recall that initially the USPTO was seeking a change to $1700 for all such filings. The Office has now recognized that since 70% of applicants file at least one RCE, it seems some modest additional time is required to resolve most issues, hence the difference in pricing between the first and second RCE filing.

As to fee decreases, the following are noteworthy:…

Continue Reading USPTO Proposes Revising Fees for Post Grant Patent Proceedings

AIA Changes Only Days Away

Back to school everyone…..the USPTO will kick off its AIA roadshow series in Minneapolis on September 10th and finish up in New York City on September 28th. The roadshow program will explain the final rules and answer audience questions. The agency also will discuss proposed rules for the first-inventor-to-file provision. …

September 15 Deadline Fast Approaching

Yesterday, the USPTO issued a notice entitled September 15, 2012 Deadline to File Requests for Inter Partes Reexamination Proceedings and Modification of Notice of Failure to Comply Form (here) The notice is essentially a warning to practitioners that although September 15th is the official filing deadline for inter partes patent reexamination filings, the practical filing deadline is likely the week of September 4th.
Continue Reading USPTO Warns on Late Inter Partes Patent Reexamination Filings

Record Verdict Demonstrates Fallibility of Jury Trials

There has been a ton of armchair quarterbacking since last Friday’s one billion dollar damage verdict in the Apple/Samsung patent war. While Apple is generally regarded as a high-tech innovator, many commentators take issue with the mechanism by which Apple has asserted their rights. Many uninformed commentators are quick to decry the verdict as an exploitation of a patent system in need of reform. Yet, it is important to note that the U.S. patent system was reformed not even a year ago. The vast majority of legislative changes to U.S. patent laws will only begin to go into effect this September 16th.

Nowhere is the potential for the current AIA reform more clearly pronounced than in the public statements of the Apple/Samsung Jury Foreman.…

Continue Reading Apple Jury Confuses Obviousness Analysis in Arriving at Record Damage Verdict?

Inventor Alleges AIA Unconstitutional

Back during the drafting of the America Invents Act (AIA), some questioned whether the switch to a “first-inventor-to-file” system was constitutional. The argument was that the Intellectual Property Clause of the U.S. Constitution (Article I. Sec. 8) guaranteed the exclusive rights of inventions to “inventors,” and that this term could not…

Initiating a USPTO Business Method Patent Challenge After Seeking Declaratory Judgement?

One of the more interesting provisions of the America Invents Act (AIA) is the “transitional program” existing for the next 8 years for so-called business method patents. As described in Section 18 of the AIA, this proceeding will use the standards and procedures of post grant review (PGR). However, unlike PGR, the Transitional Program for Covered Business Method Patents (TPCBMP) will be available for qualifying business method patents on September 16th.

In addition to the requirement that the patent qualify as a “business method” patent, there are other threshold considerations to satisfy in order to properly pursue this proceeding before the USPTO’s Patent Trial & Appeal Board (PTAB). The standing necessary to pursue a TPCBMP of a qualifying patent requires that the petitioner be “charged with infringement,” or previously sued for infringement.

Left with implementing this requirement for proper TPCBMP standing, the USPTO has determined the meaning of “charged with infringement” consistent with the statute Sec. 18(a)(1)(B). In the final TPCBMP rule package issued this past August the USPTO provided Rule 42.302(a), which defines the terminology “charged with infringement”  as ‘‘a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court.’’

Of course when such an imminent threat of patent litigation exists, rather than await the inevitable lawsuit/dreaded Eastern District of Texas venue, a potential defendant may pursue a declaratory judgement to secure a preferred venue and/or establish a lack of liability.

Interestingly, both Inter Partes Review (IPR) and (PGR) are unavailable to a petitioner that has previously filed for declaratory judgment to challenge validity. The reason for this IPR/PGR standing control is to prevent those that have chosen district court in the first instance from burdening the USPTO with a later IPR/PGR challenge.  Since TPCBMP follows the “standards and procedures” for PGR, it may be surprising to some that the USPTO rules for TPCBMP exclude the DJ control.
Continue Reading Declaratory Judgment & USPTO Business Method Patent Challenges

Satisfying the Electronic Filing Requirements of PRPS

As discussed earlier this week, the Patent Trial & Appeal Board (PTAB) of the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the America invents Act. Unless otherwise authorized by the Board, all PTAB filings must be submitted electronically 37 C.F.R § 42.6(a)(3). The system will be known as the Patent Review Processing System (PRPS). Currently, the USPTO is testing the prototype system, and soliciting public input on its general format and operation. PRPS will be rolled out in the coming weeks, and be up and running by Septemeber 16th. Practitioners will need to preregister with PRPS prior to their first filing.

While PRPS is still a work in progress, there are some practice tips emerging from the prototype testing sessions. (some preliminary screenshots of the system here)

Especially in the short term, obtaining a filing date will be a big deal for petitioners seeking Inter Partes Review (IPR) subject to a parallel litigation. This is because such petitioners only have 1 year (by statute) to petition for IPR from the date of service of the litigation complaint, and there are petitioners that were sued 10-11 months prior to September 16th. These filers must be especially careful not to miss their 1 year deadline by running afoul of PRPS requirements.

…
Continue Reading Obtaining an Electronic Filing Date at the PTAB