With so much of the current focus on Congress being centered around the debt ceiling debate, it is easy to forget about other legislative initiatives in the queue. Still, once the current crisis is resolved (or the can kicked down the road as the case
As discussed yesterday, the USPTO has proposed to modify asepcts of Rule 1.56(b) and Rule 1.555(b) to comport to the materiality standard of the recent Therasense decision of the CAFC. In doing so, the Office has proposed a definition of “but for-plus” materiality standard defined by acts of omission (duty of disclosure) together with affirmative acts relating to willful false statements and misrepresentations (duty of candor and good faith).
Rule 56 is an ethical guidepost that pertains only to Patent Applicants. As such, aside from a rare protest under Rule 1.291 or 1.99, third parties do not submit prior art materials to the USPTO under this Rule (of course patent reform will provide more opportunities for pre-grant submissions). Instead, Rule 56 compliance is litigated as an element of an inequitable conduct defense to patent infringement. Charges of inequitable conduct are not substantively considered in patent reexamination as the Office is a less than ideal arbiter of questions of “intent.”
Currently, the USPTO is proposing to define, by Rule, a materiality standard in terms of “bad acts.” Consequently, has the USPTO now undermined established practice (MPEP) by encouraging new 1.555(b)(2) submissions for consideration of such information in patent reexamination?
Continue Reading SNQ Plus – A New Game for Patent Reexamination
Last week, the USPTO published proposed changes to the materiality standard of 37 CFR §§ 1.56 and 1.555 in response to the Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co.
Impressively, the USPTO has managed to publish the proposed changes in just under two months (since the issuance of the Therasense decision). The initiative to craft such meaningful proposals in such a short time period, as well as the intention to help alleviate the significant duty of disclosure obligations is certainly greatly appreciated by all stakeholders.
In distilling the essence of Therasense down to succinct language for rule making purposes, the USPTO has promulgated a “but for-plus” test.
Is this test appropriate as currently presented, or does it require a bit more seasoning?
Continue Reading Mixing the Duty of Candor with the Duty of Disclosure
As mentioned yesterday, the USPTO has now issued a Notice of Proposed Rule Change in the Federal Register on Rule 56 and Rule 555. The proposal is for the Office to adopt the materiality decision of the recent Therasense decision of the CAFC. (Proposal here)
I will have
As discussed last week, the USPTO is anticipating the passage of patent reform in the near term. Upon enactment, the agency would have access to the additional fees of the one track program (expedited patent application examination), and the 15% surcharge. Based on this influx
Supplemental Examination, as currently proposed in the patent reform legislation, would enable Patentees to effectively cure inequitable conduct for all but the most offensive conduct. This reform provision was designed to combat the plague of inequitable conduct charges that existed prior to the Therasense decision.
Supplemental examination would enable the Patentee to have the USPTO consider, reconsider, or correct information believed to be relevant to its patent if the information presented a substantial new question of patentability (SNQ). If an SNQ is found to exist, the supplemental examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices). Once Supplemental Examination concludes, the issues brought before the Office in the second examination cannot serve as a basis for an inequitable conduct defense.
The legislative proposal hoped to provide a post grant opportunity to cure such issues as it was well established by the courts that patent reexamination and patent reissue could not cure such defects…..that is, until Therasense.
Continue Reading The Impact of Therasense on Patent Reform
As discussed here in significant detail over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. Back in April, the USPTO published a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public
In considering whether or not to stay a parallel litigation in view of a pending patent reexamination the court will consider several factors. One of the more hotly contested factors is whether the stay will unduly prejudice, or present a clear tactical disadvantage to, the non-moving party.
While delay is common to all stayed cases, the degree of delay caused by patent reexamination can be considered prejudicial. For example, it has been argued, successfully at times, that a delay that is not merely lengthy, but potentially indefinite is prejudicial to the non-moving party. For this reason, especially when it comes to inter partes patent reexamination, the average length of the proceeding can be instructive to the Court.
Hoping to convince the Court of a prejudicial delay, Patentees will argue that inter partes patent reexamination takes on the order of 5-7 years to complete through appeal. Defendants, on the other hand, will cite to published USPTO statistics that indicate inter partes patent reexamination pendency to be an average of 36 months, including appeal.
So, which party is manipulating the truth?
Continue Reading The Historical Skew of Inter Partes Patent Reexamination Pendency Statistics
Yesterday, USPTO Director Kappos participated in a Q&A session with the public on the pending patent reform legislation and its anticipated impact on the USPTO. A replay of the webcast may be found at Managing Intellectual Property here (free, but registration required).
Using a football analogy, Director Kappos explained that the current legislation was on the “one inch line,” and that he expected enactment in the next month or two. As to the current disparity between the House and Senate bills on fee diversion, Kappos explained that the USPTO could live with the House version of the bill as it was a step forward, but was hoping for further assurances from the Senate that funding would be allocated in full (similar to that made on the floor of the House).
The Director also explained that upon enactment, the agency would have access to the additional fees of the one track program (expedited patent application examination), and the 15% surcharge. Based on this influx of funding, it was expected that current restrictions on operations could be lifted, such as examiner overtime.
As to plans for preparing for the new proposed post grant proceedings, the USPTO will be hiring…a lot.
USPTO Director Dave Kappos will answer questions on the pending patent reform legislation and its anticipated impact on the USPTO today. Registration for this event is free (here).
Also, as a reminder, I will be presenting Patent Reissue: Benefits, Limitations & Strategies today. The program will