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USPTO Webinar Scheduled Today, FAQ Published

As a reminder, the USPTO will conduct a training session from 10 am – noon, in the North Auditorium of the Madison Building at the Alexandria Campus of the USPTO. The training session will be directed to the new Patent Review Processing System (PRPS) of the Patent Trial & Appeal Board (PTAB). The session will be broadcast via WebEx and available for replay thereafter. Information to connect to the training session via WebEx is provided below.

WebEx participants will be able to submit questions through the WebEx chat session.

The USPTO has also issued a brief FAQ on the PRPS system:…

Continue Reading New E-filing Portal for Post Grant Patent Trials Unveiled Today

AIA Changes Only Days Away

Back to school everyone…..the USPTO will kick off its AIA roadshow series in Minneapolis on September 10th and finish up in New York City on September 28th. The roadshow program will explain the final rules and answer audience questions. The agency also will discuss proposed rules for the first-inventor-to-file provision. …

Record Verdict Demonstrates Fallibility of Jury Trials

There has been a ton of armchair quarterbacking since last Friday’s one billion dollar damage verdict in the Apple/Samsung patent war. While Apple is generally regarded as a high-tech innovator, many commentators take issue with the mechanism by which Apple has asserted their rights. Many uninformed commentators are quick to decry the verdict as an exploitation of a patent system in need of reform. Yet, it is important to note that the U.S. patent system was reformed not even a year ago. The vast majority of legislative changes to U.S. patent laws will only begin to go into effect this September 16th.

Nowhere is the potential for the current AIA reform more clearly pronounced than in the public statements of the Apple/Samsung Jury Foreman.…

Continue Reading Apple Jury Confuses Obviousness Analysis in Arriving at Record Damage Verdict?

Satisfying the Electronic Filing Requirements of PRPS

As discussed earlier this week, the Patent Trial & Appeal Board (PTAB) of the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the America invents Act. Unless otherwise authorized by the Board, all PTAB filings must be submitted electronically 37 C.F.R § 42.6(a)(3). The system will be known as the Patent Review Processing System (PRPS). Currently, the USPTO is testing the prototype system, and soliciting public input on its general format and operation. PRPS will be rolled out in the coming weeks, and be up and running by Septemeber 16th. Practitioners will need to preregister with PRPS prior to their first filing.

While PRPS is still a work in progress, there are some practice tips emerging from the prototype testing sessions. (some preliminary screenshots of the system here)

Especially in the short term, obtaining a filing date will be a big deal for petitioners seeking Inter Partes Review (IPR) subject to a parallel litigation. This is because such petitioners only have 1 year (by statute) to petition for IPR from the date of service of the litigation complaint, and there are petitioners that were sued 10-11 months prior to September 16th. These filers must be especially careful not to miss their 1 year deadline by running afoul of PRPS requirements.

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Continue Reading Obtaining an Electronic Filing Date at the PTAB

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