325(d)

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Missed Opportunity & Further Patent Owner Headaches

The wait is finally over! (no not Taylor Swift’s new album…think nerdier….like way nerdier)

Last Friday the USPTO finally released its Notice of Proposed Rulemaking (NPRM) directed to Patent Trial & Appeal Board Practices (here) a year after its overly-ambitious Advanced NPRM (ANPRM) was released. While readers of this blog already knew what was going to be in the NPRM, the release of the NPRM at least confirms that the agency still intends to move something forward in the waning months of the Vidal administration. Whether the agency will get anything over the finish line in time is far from clear.

The NPRM is most noteworthy for what it does not include — every underdeveloped/legislative idea of the ANPRM. But that was entirely predictable. Perhaps more concerning is the absence of a codification of current Fintiv 314(a) practices. Such discretionary denial practices exploded under the previous Director only to be reined in under Director Vidal via a guidance memo. This ping-pong action will continue across administrations unless and until regulations are issued. The next Director will almost certainly reinvigorate Fintiv practices regardless of election outcome (more on that later this week)

As to the content of the NPRM itself, some marginal value and an oddly misguided option that hurts Patent Owners and risks derailing the entire proposal.Continue Reading Limited PTAB Rule Proposal Marred by Ill Conceived Briefing Changes

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ANPRM an Unnecessary Slog to a Small Rule Package

It has been almost a year since the Patent Trial & Appeal Board (PTAB) released its Advanced Notice of Proposed Rulemaking (ANPRM) on AIA trial practices. As a reminder, the ANPRM was a sprawling collection of rule proposals and requests for public feedback. I previously pointed out that the proposal was unnecessarily ambitious and was destined to be bogged down for proposing to exceed the agency’s regulatory jurisdiction.

Well, the wait is almost over. Continue Reading Where are the New PTAB Rules?

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Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023. 

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.Continue Reading New PTAB Bill to Drive 101 Compromise?

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The ANPRM Proposals That Should Drop Out of the Process

Yesterday I highlighted the ANPRM proposals that are likely to make it into the NPRM this coming fall. Today, I’ll walk through the ones that I expect to be dropped, or at least heavily revised.

The vast majority of these “misfires” suffer from the same fatal deficiency — only Congress can provide for such modifications to the AIA. While the agency has substantive rule-making authority to implement the AIA, it does not have authority to implement regulations that effectively rewrite the AIA statutes themselves.

Given the push back from Congress on the apparent overreach of many of the ANPRM proposals, it is highly unlikely that the agency will carry such proposals forward to the NPRM. Continue Reading PTAB ANPRM – Misfires & Overextensions

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ANPRNM Comments Due Today

Today is the comment deadline on the USPTO’s recent Advanced Notice of Proposed Rulemaking (ANPRM). To date some 10,000 comments have been submitted.

At first blush the volume may seem impressive. Turns out, however, that the overwhelming majority of comments appear to be from random individuals spamming the agency with automated form submissions. These submissions do not even address the specific proposals of the ANPRM and offer little background, insight, or analysis other than a paragraph or two of “PTAB bad.” Others in the same spam bucket offer an identical rule proposal — to make the PTAB an opt-in system. Of course, the agency has no power to overrule a statute with a conflicting regulation to allow for opt-in.

Once the agency navigates through less than helpful dross, we can expect an NPRM in the fall responding to the actual ANPRM comments. My guess would be after the close of FY 2023 in early/mid October.

But, what will the actual NPRM look like? Certainly nothing like the ANPRM.Continue Reading PTAB ANPRM Comments & Spoilers

CLE Provided

This coming Thursday at 12PM (EST), IPWatchdog will host the free webinar entitled: PTAB Rules: The Good, The Bad & The Ugly. The webinar will cover the recent Advanced Notice of Proposed Rulemaking (ANPRM), preview stakeholder reactions, Congressional concerns, and discuss the most likely outcomes. Register (here)

With comments due from…

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Unnecessarily Ambitious

Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.

Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.

Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly

Virtual CLE Program January 24 – 27th

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…

Abusive Reexam Relief

Late last month, in In re Vivint, Inc., the Federal Circuit tackled the question of whether a post-issuance review proceeding (in this case, ex parte reexamination (“EPR”)) was available to a challenger that repeatedly filed another post-issuance review proceeding (in this case, inter partes review (“IPR”)) to forward the very same argument. The court held that, while the EPR request had shown substantial new questions of patentability, “the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d).” As such the court vacated the decision and remanded to the Patent Office (“PTO”) with instructions to dismiss.

But, don’t expect this decision to be much more than a corner case.
Continue Reading Reexam After Failed IPR?

October Webinar to Debrief on Leahy Bill

Senator Patrick Leahy (D) VT and Senator John Cornyn (R) TX have jointly drafted a new bill entitled the “Restoring the America Invents Act.” The Bill proposes to roll-back recent directives and policies of former USPTO Director Iancu, most notably discretionary denials of AIA trial proceedings in view…