Scott McKeown

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Examination Guidelines & Reexamination Determination Issued

Last week, the USPTO issued examination guidelines in light of the ruling in Mayo v. Prometheus this past March. The guidelines are entitled “2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature. ” (here) The notice explains that the new guidelines will primarily apply to Art Unit 1600, and supersede the initial memo issued by the USPTO to the Examining Corps. on March 21, 2012.

As a reminder, this notice is directed to patent examination, not reexamination. Patentable subject matter issues may not serve as a basis for patent reexamination. There is currently no vehicle (at least until September 16, 2012) for a patent challenger to pursue 101 arguments before the USPTO. This is because patent reexamination is initially limited to patents and printed publications only. As discussed this past May, submitting such challenges in patent reexamination is often litigation inspired, but not without risk of collateral damage to other arguments. …

Continue Reading USPTO Provides Feedback on Prometheus Issues

Final Satellite Locations Selected

Yesterday, the USPTO announced the final locations of the satellite offices it is required to open by September 14, 2014. In addition to the Detroit office opening this month (July 13, 2012), the USPTO will maintain three regional offices in Denver, Dallas and Silicon Valley.

In yesterday’s announcement (here…

Reduction in Incoming Requests & Inter Partes Workload to Free Up Resources

Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last fall. Starting in September of 2012, these new patentability trials (Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP) and Inter Partes Review (IPR)) will become available, and must conclude by statute within 12-18 months of initiation. The pendency of the new trial proceedings is a significant improvement relative to existing patent reexamination and is expected to be a significant driver behind filings concurrent with litigation.

As a result of the new options for contested proceedings, the law eliminates inter partes patent reexamination. So, going forward, the Central Reexamination Unit (CRU) will lose a significant, resource intensive stream of work. While it is true that the CRU will remain responsible for legacy inter partes reexamination filings, the 100+ examiners will necessarily have extra time on their hands post-AIA.

Absent a replacement stream of work, the remaining stream, ex parte patent reexamination filings, may benefit from the newly available bandwidth.…
Continue Reading Enhanced Patent Reexamination Speed Coming Soon?

Discussion of AIA Legislative History

For those that may have missed the Patently-O post on the topic last week, Mr. Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, recently published a comprehensive guide to the legislative history of the AIA in the Federal Circuit Bar Journal. Since the AIA was the result of years…

USPTO Clarifies Stance on BRI Application to Post Grant Proceedings

During yesterday’s hearing of the Senate Judiciary Committee, Director Kappos explained the various initiatives ongoing at the USPTO with respect to AIA implementation, efforts to address drafting errors in the AIA, and backlog reduction efforts.

Toward the end of the hearing, Director Kappos was asked to justify the use of the broadest reasonable interpretation (BRI) in the new post grant proceedings. This same comment was earlier submitted to the USPTO by the major bar associations (for reasoning that has long escaped me). Director Kappos explained that the AIA requires the USPTO to assess patentability, not validity. In this way, the Agency is simply following the mandate of the legislation. 

Shortly thereafter, the Director issued an expanded rationale on his blog. The Director correctly explained that:…

Continue Reading USPTO to Apply BRI Claim Standard in Post Grant Proceedings

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Senate Hearing Wednesday June 20th

Following on the heels of the House Judiciary Committee hearing last month, today, the Senate Judiciary Committee will hold a hearing on the implementation of the America Invents Act beginning at 10AM. The hearing will be webcast (here) and is entitled Oversight of the United States Patent and…

preliminary injunction-post grant

AIA Post Grant Trial Mechanisms: Game Changers

Currently, Patentees anticipating a motion to stay a parallel litigation pending patent reexamination will often pursue a preliminary injunction (PI) to bolster their argument that a stay would be prejudicial as between competitors. That is to say, the relatively long, multi-year pendency rates of patent reexamination coupled with a perceived deterioration in market share (not compensable by money damages), was often times enough potential prejudice to influence a judge to deny a stay of the proceeding. …or at least delay any decision to stay until after a decision on the merits of the request for injunctive relief.

Later, when addressing the merits of the PI request, courts would weigh the reexamination evidence against the “likelihood of success on the merits” factor of the well known PI analysis. In some instances, courts would look dis-favorably upon the mere grant of a patent reexamination request. This is because, historically, the grant rate for patent reexamination requests hovered around 93% under the SNQ standard. Likewise, courts would disregard interim rejections of the patent reexamination proceeding as subject to years of further prosecution/appeals.

Yet, these criticisms may no longer apply after September 2012, the effective date of the new contested proceedings of the America Invents Act (AIA).

Starting on September 16 2012, the pendency of the new contested patentability challenges (Inter Partes Review (IPR), Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBM) will be 12-18 months by statute; a far cry from the 5-7 years for inter partes patent reexamination. At the same time, the standards for initiating the new proceedings have been raised relative to the old SNQ standard to reduce the overall grant rate.
Continue Reading Preliminary Injunctions an Even Tougher Sell Post AIA?

Egregious Misconduct Claim Shot Down by District Court

As most patent reexaminations are conducted in parallel to a related litigation, it is important that the USPTO be informed of the progress of a parallel litigation. For this reason, MPEP 2282; 2686 permit the filing of litigation notices by any party to the proceeding, or even a member of the public. The simple failure to inform the USPTO of a parallel court proceeding had, prior to Therasense, been held to be per se material under the former “reasonable examiner” standard. Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1234 (Fed. Cir. 2007)

But what about an arbitration proceeding, does the same duty apply? …and, does the heightened Therasense standard disturb the earlier Nilssen ruling?…

Continue Reading Arbitration Materials Witheld From USPTO Reexamination