Early 2012 is shaping up to be an exciting time for patent law, particularly for those focused on post grant patent practice.
USPTO–As to the new rule packages necessary to implement the new post grant mechanisms of the America Invents Act (AIA), it is rumored that the supplemental examination
The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request for IPR/PGR from the same requester (or privies) on issues that were raised or reasonably could have been raised in the first proceeding, but prevent the filing or maintenance of any other “office proceeding.”
By definition a Post Grant Review (PGR) can only be conducted prior to an IPR. This is because an IPR can only be filed once the 9 month PGR window has ended, or after any ongoing PGR concludes. As such, the primary office proceeding that can be requested, or maintained in this regard (i.e., after IPR/PGR estoppel attaches) is ex parte patent reexamination (EXP).
As pointed out previously, in order to properly estop an ongoing EXP proceeding or filing, the Office must implement a system to track EXP filings with respect to the real party in interest. This tracking is complicated by the fact that many EXP proceedings are filed anonymously. Last Thursday, the USPTO issued their plan.
Continue Reading USPTO to Revise Ex Parte Patent Reexamination Procedures
2011 was perhaps the most significant year to date in terms of post grant patent practice. The perennial legislative effort generally known as “patent reform” finally bore fruit as the Leahy-Smith America Invents Act (AIA); patent reexamination filings in 2011 reached an all time high; patent reissue practice was explored and clarified by the CAFC; and patent litigation parallel with patent reexamination continues to expand as a well established strategic practice.
As to the America Invents Act, several entirely new post grant patent proceedings have now been enacted into law (effective September 16, 2012). A summary of these proceedings, and discussions of their expected impact are linked below (and throughout the blog).
Transitional Business Method Patent Challenge
The USPTO is scheduled to
Continue Reading 2011 Year in Review — Patent Reform & The New Post Grant Landscape
The Patent Public Advisory Committee (PPAC) convened yesterday at the USPTO for their quarterly meeting. During the meeting, the USPTO presented an update on office operations and AIA implementation status. The update on the Group 2 rule making is found in the presentation materials of Janet
Early last week, the major bar associations submitted comments to the USPTO on the current Group 2 Rule Making effort. As a reminder, Group 2 Rules are a second phase of USPTO rules designed to implement features of the America Invents Act (AIA). The Group 2 Rules include Inter Partes Review (IPR) & Post Grant Review (PGR).
Unlike other organizations that submitted commentary only, the ABA, AIPLA and IPO coordinated their efforts to prepare a set of model rules. Of course, the Office has been working on their own rule sets in parallel. As such, the submitted model rule set (here) is primarily provided to serve as a preliminary gauge of stakeholder expectations.
Some interesting suggestions in the model rules are as follows:
1. Practitioners IPR/PGR: The model rules suggest that lead counsel in any PGR/IPR proceeding must be a registered practitioner. Pro hac vice practice is contemplated, but is suggested to be “rarely granted.” (See proposed rule 41.5)
Continue Reading Patent Trial & Appeal Board Rules Drafted by Major Bar Associations
As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules, which include Inter PartesReview & Post Grant, must be submitted by November 15th.
Last week, Cisco, Google, Verizon and Intuit submitted joint comments (here) directed solely to the implementation of post grant proceedings, namely, Inter PartesReview (IPR) and Post Grant Review (PGR). Not surprisingly, these tech giants (i.e., targets of serial patent infringement suits) are especially supportive of post grant mechanisms as an alternative to traditional litigation. The Group’s comments encourage the Office to adopt liberal standards for initiation of IPR and PGR, limit the potential estoppel affect of a concluded proceeding, and provide procedural flexibility for petitioners.
Continue Reading Tech Giants Weigh in On USPTO Post Grant Rule Making Effort
The USPTO continues to work to fashion rules to implement the new post grant proceedings of the Leahy-Smith America Invents Act (AIA). One can only speculate that the new “trial” like, post grant proceedings of the AIA will be closely modeled on the procedures of existing patent interference practice. This is because the USPTO, aside from patent interference, has limited experience in presiding over the types of contested proceedings contemplated by Inter Partes Review (IPR) and Post Grant Review (PGR).
In patent interferences, the Trial Division of the existing Board of Patent Appeals & Interferences (BPAI) conducts proceedings based upon a Standing Order. Patent interference requires an in depth knowledge of a difficult and relatively obscure aspect of patent law. As such, the attorneys who conduct these proceedings are seldom general litigators, but almost always registered patent attorneys with substantial experience in handling interferences–i.e., members of “the interference bar.” However, such is not required.
Continue Reading General Litigators to Practice Before the New Patent Trial & Appeal Board?
When Congress provided for inter partes patent reexamination (IPX) in the 1999 American Inventors Protection Act, estoppel provisions were fashioned to prevent abuse of the new, post grant mechanism.
The IPX estoppel provisions are codified as 35 U.S.C. § 315 (c) and § 317 (b). Section 315(c) prevents a requester in IPX from pursuing failed arguments in a district court, correspondingly, 317 (b) prevents a requester that has failed to prove invalidity in an IPX, or at the district court from requesting a second IPX on any issue that was raised or could have been raised in the failed proceeding.
Interestingly, 317 (b) precludes a second IPX (outside of very limited circumstances, “newly discovered” art.). Yet, with IPX being replaced by Inter Partes Review (IPR) in less than a year, have failed IPX challengers been given an unexpected reprieve from the estoppel impact of 317(b)?
Continue Reading The Estoppel Disconnect of Inter Partes Review
Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA). Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.
As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).
When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR, becomes available for all patents next September 16, 2012.
So, for newly issued patents that will not be eligible for PGR over the next few years, do requesters still have to wait 9 months before filing a request for IPR?
Continue Reading Post Grant Dead Zone Coming Soon
From start to finish, the cost of an inter partes patent reexamination (IPX) proceeding is estimated to be $278K by the 2011 AIPLA Economic Survey. This figure includes all expenses from the time of filing the request to a decision of the Board of Patent Appeals & Interferences (BPAI). The government filing fee for requesting inter partes patent reexamination is $8800.
The America Invents Act (AIA) introduces several new inter partes proceedings for the purposes of challenging the validity of a U.S. Patent. The first, Inter Partes Review (IPR), will be available on September 16, 2012 and will replace IPX. The second, Post Grant Review (PGR) will also be available on September 16, 2012 to challenge certain business method patents. Thereafter, PGR may be used to challenge (within a 9 month window after issuance) a patent filed on or after March 16, 2013.
As discussed yesterday, IPR will provide a significant improvement over IPX with respect to overall pendency delays. PGR will follow the same general timeline. In addition to the improvement in pendency, both IPR and PGR will provide for limited discovery, protective orders, oral hearings, settlement, and the management of the proceedings by a three person Administrative Patent Judge (APJ) panel of the new Patent Trial & Appeal Board (PTAB). But, what is all of this going to cost filers?
Continue Reading How Much Will Post Grant Proceedings at the USPTO Cost?