IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!
The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents. Topics will explore political and legislative developments impacting the agency in
Well, the wait was not that long after all. Senator Leahy -VT (D) (with co-sponsor Senator Cornyn – Tx (R)) has today released the draft bill entitled “Restoring the America Invents Act.” The bill includes most of what I expected, with a handful of additional tweaks.
Below is a brief overview of all of the proposed changes.
Continue Reading Restoring the America Invents Act – What You Need to Know
In the words of princess Elsa…for the first time in forever.…there are a number of in-person IP conferences slated for this fall. (I’ve been cooped up with kids, I make Frozen references now)
First up is IPWatchdog Live 2021 September 12-14 in Dallas, Texas. The multi-day IPWatchdog
This Thursday the Patent Trial & Appeal Board (PTAB) will offer its first Boardside Chat of 2021, from noon to 1 p.m. (EST).
Several administrative patent judges of the PTAB will cover:
Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings. After Director Iancu came on board, that Intervenor Brief was withdrawn.
Today, the PTO formally announced (via memorandum) that the Nautilus standard applies to AIA trials – settling an open question….at least for the time being.
Continue Reading PTAB Applies Nautilus 112 Standard to AIA Trials…For Now
With an increasing number of issued patents eligible for Post Grant Review (PGR), patent challengers find themselves assessing whether PGR is worth the added estoppel risk. That is, where a first-inventor-to-file patent is still within 9-months of issuance (PGR window), should a challenger opt for PGR, or await the availability of IPR after the 9th month?
As with many legal questions, the answer is —”it depends.”
Continue Reading PGR May Be The Place For Your 112 Case
The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review. This is because the IPR statutes only authorize trial grounds based on patents and printed publications. The same has been true of patent reexamination for decades.
Last week, in Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., the Federal Circuit considered whether the Board may cancel claims under 112 when such issues arise during trial. The Court held that the PTAB may not cancel claims under 112, but instead, might, for certain types of claims, proceed to decide the prior art grounds.
Continue Reading Should the PTAB Determine Patentability of Unsupported Means-Plus-Function Claims?
Today, the USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 (here). The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (here). The documents will be published in the Federal Register on Monday, January