While awaiting the overdue Notice of Proposed Rulemaking (NPRM) on the hodgepodge of proposals from last year, the agency has issued a few NPRMs over the past week. First was a proposal to streamline the pro hac vice practice (non-event). Late last week a slightly more
Patent Owner’s rarely seek to amend claims during PTAB trials. This is because, as most such patents are being simultaneously litigated, amendment introduces a host of complications — not the least of which is creating an intervening rights defense for the patent challenger. This is why amendments are historically seen in about 5-7% of PTAB trials.
For the rare Patent Owner that is inclined to amend, the PTAB offers an Amendment Pilot Program. The Pilot is designed to help Patent Owner refine their amendment positions with two opportunities to amend (non-pilot route permits one amendment submission). Under the Pilot, the Patent Owner can also request the panel’s preliminary assessment (i.e., Preliminary Guidance) of its initial amendment to assist in refining the final amendment submission.
But, practically speaking, Preliminary Guidance is a significant gamble for Patent Owners that is rarely worth taking. And as the Federal Circuit pointed out earlier this week, even when seemingly helpful, it may still prove ultimately unhelpful.Continue Reading PTAB Amendment Pilot – Guidance or Hinderance?
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?
The CAFC has held that claims may not be amended by argument during IPR.
Continue Reading Amendment by Argument at the PTAB?
In Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The PTAB’s POP panel reviewed the denial of a Motion to Amend based upon a panel’s sua sponte modification of a petitioner’s proposed ground (here). In reversing that determination, the POP found that such a sua sponte action should be a “rare circumstance.” For example, where there is a readily identifiable patentability concern apparent in the record.
At the time, I pointed out that when a petitioner presents a 103 ground that in reality is a 102 ground, I could not imagine how such a circumstance was not readily identifiable, and rare. While seemingly agreeing with me, the Federal Circuit nonetheless affirmed the POP panel.
Continue Reading No PTAB Duty to Separately Examine Amended Claims
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
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
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
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:
Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology. Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field related to the patents at issue.
Many prosecution bars are now written to cover PTAB proceedings, such as IPRs (since amendment is possible). However, whether district court litigators will be permitted to participate in PTAB proceedings may depend on the particular district where the subject patent is being litigated.
Continue Reading Prosecution Bars & The PTAB – An Evolving District Court View