Next week, the Patent Trial & Appeal Board (PTAB) will begin to accept petitions for the post grant patent validity trials of the America Invents Act (AIA). For those needing a refresher, or crash course in the new proceedings, next Tuesday September 18th Stafford legal will host a 90-minute
As I predicted in early August, the USPTO has announced a proposal to apportion the filing fees for the new post grant proceedings of the Patent Trial & Appeal Board (PTAB) across petition and trial phases; primarily as a mechanism to facilitate refunds. A portion of the proposed fees would correspond to the cost of considering the petition filing, the second portion would correspond to the cost of conducting the trial. This proposed fee structure is set pursuant to Section 10 of the America Invents Act (AIA), and provides revised fees not only for the new post grant patent proceedings, but also for ex parte application prosecution as well. The Notice of Proposed Rulemaking (NPRM) will be published in the Federal Register on Thursday. (advanced reading room copy here)
Aside from the post grant fee apportionment (discussed in detail below, which actually provides a slight fee reduction), notable fee increases include a change to the RCE filing fee for ex parte prosecution. The RCE fee based upon the number of previously filed RCEs. For example, the cost of an RCE moves from the current $930 for large entitites to $1200 for the first RCE, and $1700 for the second and subsequent RCEs. You may recall that initially the USPTO was seeking a change to $1700 for all such filings. The Office has now recognized that since 70% of applicants file at least one RCE, it seems some modest additional time is required to resolve most issues, hence the difference in pricing between the first and second RCE filing.
As to fee decreases, the following are noteworthy:
Continue Reading USPTO Proposes Revising Fees for Post Grant Patent Proceedings
Back during the drafting of the America Invents Act (AIA), some questioned whether the switch to a “first-inventor-to-file” system was constitutional. The argument was that the Intellectual Property Clause of the U.S. Constitution (Article I. Sec. 8) guaranteed the exclusive rights of inventions to “inventors,” and that this term could not
Further to the discussions this week on the new PRPS system, the USPTO has announced that they will be conducting a training session on the Alexandria USPTO campus (also available by webinar) on September 6th. Information below:
To help potential users of
The final rule packages for the new post grant patent proceedings of the Patent Trial & Appeal Board (PTAB) were expected to issue last week but were obviously delayed. The USPTO informed the Intellectual Property Section of the ABA (at the ABA annual meeting last weekend) that these final rule packages will publish on August 14th. (available in the Federal Register reading room on the 13th). The delay is a result of the time needed for publishing agencies to review such a significant submission. For example, last Friday the USPTO was asked to adjust minor formatting, section headings/numbering, etc to the original submission made in July.
While the agency was tight lipped as to changes in the final rules during their presentations over the weekend, reading between the lines
Continue Reading USPTO Buzz — Rule Packages and PTAB Roll Out
Since the enactment of the America Invents Act (AIA) in September of 2011, the “patent reform” embodied by the AIA has been slowly rolling out. In fact, the bulk of the truly significant changes to patent law are still to come. These changes include the change over to the first inventor to file model in March of 2013, and the kick off of the new post grant patent proceedings next month. With so much change on the immediate horizon it would seem premature to consider further changes to patent law until the last round has had time to take effect.
Evidently at least one Congressman feels that the AIA does not go far enough to combat frivolous “troll” lawsuits. Congressman Defazio of Oregon is sponsoring a bill entitled “Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012.” The bill proposes that the costs (including attorney fees) of patent lawsuits relating to hardware and software should be recoverable from the Patentee should the court find that the Patentee did not have a reasonable likelihood of succeeding on the merits. (bill here)
Interestingly, the bill offers a fairly expansive definition of software as “any process that could be
Continue Reading New House Bill Targets Software Patent Litigation
The August 16 deadline is fast approaching for the USPTO issuance of the final rules to implement the new patent validity trials of the Patent Trial & Appeal Board (PTAB). The good news is that the USPTO is rumored to be ahead of schedule. In fact, the rule packages are expected
Yesterday the USPTO issued the Final Rules for implementing the new pre-issuance submission component of the America Invents Act, entitled: Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act (here). The new pre-issuance provisions will take effect on September 16, 2012 and apply to all applications filed before, on, or after that date.
Minor changes were made to the formal requirements for these submissions as originally proposed, however, the substance of the proposed provisions was not altered in any significant regard with the exception of the applicability to reissue applications. Pre-issuance submissions will not apply to reissue applications as the USPTO has taken the position that patent reissue is a post-issuance proceeding (the same holds true for patent reexamination). Instead, the Protest provisions (37 C.F.R. § 1.291) will provide a similar mechanism for patent reissue.
The timing of the submission must comply with the following conditions:
Continue Reading USPTO Issues Final Rules on Pre-Grant Information Submissions by Third Parties
The America Invents Act (AIA), Section 10 provides fee setting authority to the USPTO. As a result, the Office has been busy preparing new fee proposals that will take effect in early 2013. For example, the new USPTO fee setting authority permits the USPTO to revise the fees set by
Yesterday, the USPTO announced the final locations of the satellite offices it is required to open by September 14, 2014. In addition to the Detroit office opening this month (July 13, 2012), the USPTO will maintain three regional offices in Denver, Dallas and Silicon Valley.
In yesterday’s announcement (here