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PRPS System Provided for Receiving Post Grant Patent Trial Requests

As previously discussed, the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the Patent Trial & Appeal Board (PTAB). The system will be known as the Patent Review Processing System (PRPS). Over the next 2-3 days the USPTO will be testing and receiving feedback from the public on features of the PRPS.

A link to PRPS will be available on the USPTO web page in the coming weeks, but what will the portal receive on September 16th?…

Continue Reading Electronic Filing of USPTO Post Grant Trial Requests

Final Rule Codifies Existing BPAI Practice

As a reminder, non-registered practitioners have, in limited circumstances, been permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The USPTO proposed adopting this practice for the new post grant patent trial proceedings of the Patent Trial & Appeal Board (PTAB) 37 C.F.R § 42.10(c). The final rule, which issued last week, maintains the pro hac vice provision but adds a bit of a twist.

In the earlier discussion on this topic, I relayed the explanation of Chief Judge Smith as provided on the USPTO website (America Invents Act (AIA) micro site) relative to the proposed pro hac vice rule. In essence, Judge Smith outlined the types of conditions that were contemplated by proposed rule 42.10(c).

The final rule more concretely codifies the expectations of the USPTO while ensuring that registered practitioners drive the PTAB proceedings.
Continue Reading Revised Pro Hac Vice Policy of the PTAB

Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term

In one month’s time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent Trial & Appeal Board (PTAB). These changes will drive a significant number of ex parte (EXP) and inter partes reexamination (IPX) requests to be filed over the next few weeks.

The short term impetus caused by the change to the fee structure is fairly straightforward to grasp. Simply stated, the EXP that can be filed today for a $2520 government filing fee, will cost $17,750 on the September 16th.

As to the change to the inter partes trial model, September 15th will be the last day for filing an IPX; this is significant for several reasons.

Continue Reading Patent Reexamination Surge Headed to USPTO

Final Rules Modified to Address Most Common Criticisms

Yesterday’s printing of the final rules to implement the post grant patent proceedings of the AIA is the culmination of well over a years worth of intensive, and tireless effort by the USPTO. The effort throughout 2011 led to the presentation of the proposed rules in February of 2012. Thereafter, the USPTO accepted public comments in April, issuing the final rules yesterday.

As to the public feedback on the proposed rules, it seems the USPTO was listening.…

Continue Reading Notable Changes in the Final Patent Trial & Appeal Board Rules

Final PTAB Rules to Publish in Federal Register Tomorrow

Tomorrow, the final rules to implement the new post grant trial proceedings of the PTAB will publish. A copy of each of the rule packages is linked below, commentary on the changes to follow tomorrow. In addition to the PTAB rule packages, a package will issue…

Will Contesting Parties Embrace the New Post Grant Settlement Provision?

One of the more intriguing provisions of the new post grant patent proceedings of the America Invents Act (AIA) is the ability to settle these patentability disputes by agreement. Unlike existing patent reexamination practices, the USPTO will terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents (TPCBMP) upon joint request of the parties. (cf. terminating an inter partes patent reexamination by operation of estoppel).

Certainly, the USPTO would greatly benefit from the ability to terminate post grant patent proceedings. This is because agency resources could moved away from proceedings that are no longer commercially relevant (as to the present parties) to those newly initiated. In this way, the USPTO would operate in much the same way as a court, no longer being responsible for continuing the patentability proceeding on behalf of the public.

But, will contesting parties embrace the new provision as written?…

Continue Reading Settling Post Grant Patent Proceedings

Contingency Model Undermined by New USPTO Post Grant Proceedings

Non-practicing entities or “patent trolls” are generally those plaintiffs that seek to enforce patent rights against an industry in which they themselves do not compete. Stated another way, an NPE’s only business is patent litigation.

Often times the patents an NPE is enforcing were purchased from a traditional technology company for the sole purpose of exacting royalties from the relevant industry. In the hands of an NPE, which has no technological industry subject to a patent counter suit by their industry targets, the NPE patents become especially powerful weapons of economic coercion.  

Over the last decade, law firms have recognized the efficacy of NPE litigation campaigns and have signed on in great numbers to get a piece of the action. Typically, an NPE will team up with a law firm that will conduct the campaign on their behalf in exchange for a contingent fee arrangement. (i.e., percentage of the collected settlements)

NPEs team up with law firms, at little to no cost, to launch patent assertion campaigns against entire industries. This profiteerring business model has lead to a significant proliferation of patent infringement suits in the last decade. As litigating a patent infringement suit can take years, and cost millions of dollars, a counter-suit for settlement leverage is not possible. Coupled with the fact that some plaintiff friendly jurisdictions like the Eastern District of Texas (EDTX) routinely return damage verdicts in the tens (if not hundreds) of millions of dollars, most defendants will settle relatively quickly for significant sums of money. For this reason, contingency relationships for even a single, seemingly weak patent are almost always worthwhile for law firms. Whether or not the patent is invalidated years down the road by one of a multitude of defendants does not detract from the easy, short term profits.

But the NPE landscape will forever change on September 16, 2012…

Continue Reading USPTO to Break Patent Troll Business Model in September?

Discussion of AIA Legislative History

For those that may have missed the Patently-O post on the topic last week, Mr. Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, recently published a comprehensive guide to the legislative history of the AIA in the Federal Circuit Bar Journal. Since the AIA was the result of years…