As discussed last week, the USPTO is anticipating the passage of patent reform in the near term. Upon enactment, the agency would have access to the additional fees of the one track program (expedited patent application examination), and the 15% surcharge. Based on this influx
Today, the Supreme Court issued a unanimous decision in the closely watched case of Microsoft v. i4i . As discussed at length previously, Microsoft sought Supreme Court review of the following issue:
Whether the court of appeals erred in holding that Microsoft’s invalidity defense (which rested on prior art never considered by the USPTO) must be proved by clear and convincing evidence.
Today the Supreme Court affirmed the CAFC’s earlier decision upholding the clear and convincing standard, much to the relief of stakeholders everywhere. (save Microsoft of course)
The holding (here) explained that although 35 U.S.C. § 282 does not provide for a specific standard of proof, the statute’s use of the terminology “presumed valid” connotes such a meaning based on
Continue Reading i4i Defeats Microsoft Challenge to Clear & Convincing Standard
As mentioned previously, the USPTO has today posted the presentations and papers from the speakers of last week’s meeting. The materials can be found (here) along with a replay of the webcast (to be up later in the week). Earlier this week, I provided an overview of
As discussed back in April, the USPTO has proposed a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public commentary, the USPTO will consider implementing/modifying the various proposals via a formal rule-making process, or through internal policy changes.
As discussed here at length, there have been two recent decisions of the CAFC that will impact patent reissue practice before the USPTO, In re Tanaka and In re Mostafazadeh. In Tanaka, the CAFC held that the addition of narrower, dependent claims in patent reissue is an “error”
Today the CAFC decided Therasense Inc. v. Becton Dickinson and Co. In this landmark decision, the CAFC reconsidered the doctrine of inequitable conduct, deciding that:
While honesty at the PTO is essential, low standards for intent and materiality have inadvertently led to many unintended consequences, among them, increased adjudication cost and complexity, reduced likelihood of settlement, burdened courts, strained PTO resources, increased PTO backlog, and impaired patent quality. This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public. (Decision at 24) (full decision here)
As previously discussed, this decision will have an important impact on patent reexamination practice, as well as application prosecution in relation to the duty of disclosure, good faith, and candor. With the tightening of the materiality standard, (described below) monstrous IDS filings may now be a remnant of the past.
Interestingly, the CAFC has now adopted a “but for” standard of materiality, such as employed in a Walker Process claim (antitrust).
Continue Reading What Does the Therasense Decision Mean for Patent Reexamination?
As discussed back in April, the USPTO has proposed a collection of working concepts and initiatives in the Federal Register for the purpose of stramlining patent reexaminaton. Based upon public commentary, the USPTO will consider implementing/modifying the various proposals via a formal rule-making process, or
The strange case of Lockwood v. Sheppard, Mullin, Richter & Hampton continues with a petition to the Supreme Court. In the petition, the plaintiff urges that the effective operation of the USPTO is protected by state law, and that the undermining of the system caused by sham reexamination requests is a matter of national importance.
As a reminder, in this case the plaintiff accused the defendant law firm (Sheppard Mullin), and two of its attorneys, of malicious prosecution relating to an alleged “sham patent reexamination.” The California court determined that the state law cause of action was preempted by federal law (i.e., the USPTO has jurisdiction over practitioner conduct); this holding was appealed to the CAFC. A week after oral arguments the lower court decision was affirmed per curiam. (See earlier posts here and here)
Undeterred, the plaintiff is now seeking Supreme Court review of the dispute. (petition here). The petition presents the issue as follows:
Whether under the implied preemption principles in Buckman, federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceeding before the U.S. Patent and Trademark Office, where “fraud on the agency” is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.
Although dressed in terms of a federal preemption issue, the petition is quite heavy on the facts of the Lockwood dispute. The odds of this petition being granted
Continue Reading Dispute Over Proper Use of Patent Reexamination Pursued to Supreme Court
USPTO Fills Critical VacancyAs discussed back in October of last year, the USPTO has been looking for a new Chief Administrative Patent Judge for the BPAI. Last Friday, the Agency issued a formal announcement naming James Donald Smith as the new Chief Judge.
Like Commissioner Kappos before him, Mr. Smith comes to