Scott McKeown

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Key Facts & Dates for all Post Grant USPTO Proceedings

While the America Invents Act (AIA) provides many new post grant proceedings, it also introduces changes to existing proceedings. While I have written about these changes previously, it would seem helpful to condense the important facts all in one place. Thanks to Paul Morgan for his suggestion for this post, and contributions to the content.

1. Ex Parte Patent Reexamination (existing proceeding) — The AIA precludes appeals by Patentees to the District Court in ex parte patent reexaminations. (to the extent that right ever existed, previous post (here). That is to say 35 U.S.C § 306 was amended to reference 144 instead of 145. H.R. 1249 at page 29.

Effective Date: Enactment

Side Notes: The SNQ standard, which is no longer used in inter partes patent reexamination is still used in ex parte patent reexamination. Ex parte patent reexamination practice remains largely unchanged by the AIA.

2. Inter Partes Patent Reexamination (existing proceeding, to be replaced) — The AIA replaces the SNQ standard with a new standard, namely a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. H.R. 1249 at page 22.

Effective Date: Enactment

Side Notes: Inter Partes patent reexamination is to be replaced…
Continue Reading USPTO Post Grant Cheat Sheet

Pre-1999 Patent Filings No longer Immune to Inter Partes Challenge

Back in August, I explained the import of various effective date provisions of the Leahy-Smith America Invents Act (AIA) as they relate to current and future post grant USPTO challenges.

The AIA changes the USPTO standard for initiating inter partes patent reexamination; this change will take effect upon enactment, tomorrow.

A second important date provision is the one year anniversary of enactment as it may foreclose inter partes options altogether for defendants currently involved in suits pertaining to newer patents (i.e., patents that matured from applications filed on or after November 29, 1999). For such litigants, if an inter partes proceeding is desired, action must be taken before the anniversary.

Interestingly, for those defendants that will become involved in suits pertaining to older patents (i.e., pre- ’99 filings) after enactment, but before the anniversary, options at the USPTO will actually expand upon the one year anniversary. That is to say, defendants may choose to wait for new inter partes opportunities to challenge patents never before eligible for such scrutiny.…

Continue Reading Older Patents Soon Subject to USPTO Inter Partes Review

Leahy-Smith America Invents Act To Be Signed Into Law Friday

Today, White House Press Secretary Jay Carney announced that the Leahy-Smith America Invents Act (AIA) will be signed by President Obama on Friday, September 16th.

Announcing the signing aboard Air Force One today, Carney stated, “The America Invents Act passed with the president’s strong leadership after a decade of effort to reform our outdated patent laws.”

Carney also announced to reporters that, at the signing event Friday, President Obama will announce new steps that the White House is taking to “convert ideas of American Universities and research labs into new products to expand our economy and create jobs.” It is not clear if this announcement is related to intellectual property protection, or some other government initiative.

What does this mean for you, right now?
Continue Reading America Invents Act To Be Enacted September 16th

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Changes & Funding Head to USPTO

With the imminent enactment of the Leahy-Smith America Invents Act (AIA) into law, the USPTO is preparing for a much needed  infusion of funding. Immediate funding relief comes by way of the 15% surcharge to patent fees included in the legislation. (See H.R. 1249, Sec. 11 Fees for Patent…

In re Staats Argued at CAFC

Last week, an important question relating to broadening patent reissue practice was argued before the CAFC. (In re Staats).

At issue in Staats is a third reissue patent application of Apple Computer Patent 5,940,600. The third reissue patent application was a continuation that claimed priority back to the original reissue application. (the original reissue application being properly filed within two years of issuance of the ‘600 Patent). During prosecution of the third continuation the examiner rejected the claims under 35 U.S.C. 251 as presenting broadening claims outside of the two year window for broadening reissue. The examiner reasoned that the error in the original reissue filing was allegedly unrelated to the error presented for correction in the third filing.

An expanded panel of the BPAI affirmed the rejection (Ex Parte Staats) characterizing the issue in dispute as:

This is a case of first impression. Resolution of the case hinges on one fundamental question: Can a continuing reissue application broaden patented claims beyond the statutory two-year period in a manner unrelated to the broadening aspect that was identified within the two-year period? Put another way, is it enough under the law to merely present an intent to broaden that is limited to a particular aspect (e.g., a particular embodiment of the invention) within the two-year period, yet broaden in unforeseeable ways (e.g., pertaining to other embodiments) outside the two-year period?

In last year’s BPAI decision, the Board analyzed the statute based upon their understanding of the equitable principles underlying the two-year limitation provided by the statute. In doing so, the BPAI relied heavily on…
Continue Reading USPTO Patent Reissue Laches Theory Tested at CAFC

Senate Sends Patent Reform Bill to the White House

It only took 6 years, roughly the same time it takes many patent filers to navigate the USPTO. Nevertheless, a new chapter in U.S Patent law begins in a matter of days

Yesterday the Senate overwhelming endorsed the House version of the patent reform legislation known as the “Leahy-Smith America Invents Act” by a vote of 89-9. As discussed previously, while there were last minute amendment efforts, the Senate voted down all efforts to modify the legislation. Shortly thereafter President Obama addressed the nation identifying the passage of the legislation as “action we need.”

So, now what?  …
Continue Reading Patent Reform Finally a Reality

Six Year Patent Reform Effort Heads to Final Vote

Today is the opening day of the 2011 American Football season. A few months back it seemed that the 2011 season may be lost altogether or significantly delayed due to legal wrangling and disputes over revenue allocation. Then suddenly, the parties came to an agreement, and in a matter of days an agreement was forged and signed. The games were set and ready to begin…tonight is the culmination of those hard fought efforts as a new season begins.

It is only fitting that today is also the day that the U.S. Senate, after years of legal wrangling and disputes over USPTO fee diversion, will also set aside their differences and kick off a new era in U.S. Patent Law.

Senate Majority Leader Harry Reid (D-Nev.) announced yesterday that the Senate will hold a vote on final passage of H.R. 1249 (Leahy-Smith America Invents Act) at 4PM today. While there has been a discussion of amending the bill, …
Continue Reading At Long Last, Kickoff Thursday

Leahy-Smith America Invents Act Heads to Finish Line

As expected, the Senate voted to invoke cloture in overwhelming fashion yesterday evening, 93-5. With this procedural hurdle now behind the Senate, the House bill will be forced to a limited debate on the merits (including unlikely amendment) and a final vote. Debate is expected to begin…

Congress to Pass Point of No Return Today?

Past the point of no return
No backward glances
Our games of make-believe are at an end.
(Past the Point of No Return, Phantom of the Opera)

Today, Congress returns from summer recess to begin the Fall term. The first order of legislative business for the Senate will be to vote on a cloture motion to preclude further debate (beyond a limited and fixed schedule) of the Leahy-Smith America Invents Act. The vote is scheduled for later this evening and can be viewed on C-span.

As explained in early August, while there are differences with H.R. 1249 and S.23, most notably concerns over fee diversion, the Senate intends to simply adopt the House bill. The adoption of the House bill will prevent further back-and-forth between the Senate and House on legislation that is far too esoteric for the average voter. On the heels of last week’s dismal job report, and with elections upcoming, Congress is eager to pass something—anything –that they can sell to the masses as a job’s stimulus. With the Leahy-Smith America Invents Act being the only bill…
Continue Reading Patent Reform: Final Countdown