ANPRM an Unnecessary Slog to a Small Rule Package

It has been almost a year since the Patent Trial & Appeal Board (PTAB) released its Advanced Notice of Proposed Rulemaking (ANPRM) on AIA trial practices. As a reminder, the ANPRM was a sprawling collection of rule proposals and requests for public feedback. I previously pointed out that the proposal was unnecessarily ambitious and was destined to be bogged down for proposing to exceed the agency’s regulatory jurisdiction.

Well, the wait is almost over. Continue Reading Where are the New PTAB Rules?

Claim Overlap Can be a Landmine for the Uninformed

Earlier this week the Federal Circuit decided In re Cellect, LLC, affirming the PTAB’s cancellation of claims for obviousness-type double patenting (ODP) over reference claims from earlier expiring patents in the same family in which differences in expiration dates were due solely to patent term adjustment (PTA).

For those in the SEP and Bio/pharma spaces, this is a call to action.Continue Reading Building Patent Portfolios – Post Cellect

Critical U.S Industry Depends on the PTAB – Not China

The so-called PREVAIL Act (here) was floated some weeks back to “to ensure the United States does not cede technological supremacy to our foreign competitors and adversaries.” As the accompanying materials insist, fighting China is the rationale behind the bill’s proposed patent reforms. That is, the U.S. Patent system must be made stronger to rival the Chinese threat by weakening the USPTO’s Patent Trial & Appeal Board (PTAB).

If this “stronger patents” argument sounds familiar, it should. Before its reinvention as the Prevail Act, the same “litigation first” ideas were packaged to the American public as the so-called Stronger Patents Act. But, the “Stronger” Bill went absolutely nowhere despite being introduced every year for the past six years (maybe 7, I lost count).

Not surprisingly, increasing patent litigation expense and unnecessary liability for successful U.S companies in the name of “stronger patents” didn’t resonate on the Hill. This is because the America Invents Act (AIA), which created PTAB trial was passed into law a little more than a decade ago for the purpose of reducing wasteful litigation over improvidently issued patents— and is working exactly as intended. Few legislators (aside from sponsors) were interested in a proposal to effectively repeal the AIA. So, after years of failure, this perennially failed effort has been newly-minted as the PREVAIL Act.

While the new spin also argues for stronger patents, it presents the need as a necessary tool to “prevail” against the growing technological threat from communist China. Ironically, the blatant dishonesty of this new spin only serves to highlight the critical importance of the PTAB to U.S. interests.Continue Reading The Prevail Act – Harm U.S. Industry to Fight China?

Empirical Studies Refute Oft Repeated Fallacies

The PTAB released two studies on historical petition filing practices this month. One directed to the frequency of so-called serial/parallel petition filings, and the other pertaining to Orange Book/Biologics patents. As with the agency’s earlier studies on these same topics (2021), the refreshed data again demonstrates that Orange Book patents are very rarely subject to AIA trial proceedings, and that abusive, serial petition filings have been effectively outlawed for years now.

Of course anyone that actually practices before the PTAB is well-aware of these realities. So, these empirical studies are primarily directed to the oft repeated criticisms of moneyed lobbyists and disingenuous critics at a time when both Congress and the agency grapple with wildly conflicting narratives.Continue Reading PTAB Data Belies Outdated Criticisms

Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.Continue Reading New PTAB Bill to Drive 101 Compromise?

Bill to Reset Analysis

Today, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023. You can find the text of the bill (here).

The bill is a slightly refined version of the proposal floated last summer. Most of the changes seem directed to assessing the relevance of a mathematical formula as part of the claim, and making clear that otherwise patent ineligible subject matter cannot be saved by mere computer implementation. Presumably these changes are directed to addressing the concerns of those stakeholders in the predictable arts. (The lobbying force behind the effort has always been Bio/Pharma).

The bill essentially wipes the slate clean on 101 jurisprudence by eliminating all so-called “judicial exceptions.” As well it should. Despite those that would counsel otherwise, there is absolutely no rhyme or reason to the food-fight mess that is 101 jurisprudence.Continue Reading New 101 Bill to Avoid Case Law Morass

The ANPRM Proposals That Should Drop Out of the Process

Yesterday I highlighted the ANPRM proposals that are likely to make it into the NPRM this coming fall. Today, I’ll walk through the ones that I expect to be dropped, or at least heavily revised.

The vast majority of these “misfires” suffer from the same fatal deficiency — only Congress can provide for such modifications to the AIA. While the agency has substantive rule-making authority to implement the AIA, it does not have authority to implement regulations that effectively rewrite the AIA statutes themselves.

Given the push back from Congress on the apparent overreach of many of the ANPRM proposals, it is highly unlikely that the agency will carry such proposals forward to the NPRM. Continue Reading PTAB ANPRM – Misfires & Overextensions

CLE Provided

This coming Thursday at 12PM (EST), IPWatchdog will host the free webinar entitled: PTAB Rules: The Good, The Bad & The Ugly. The webinar will cover the recent Advanced Notice of Proposed Rulemaking (ANPRM), preview stakeholder reactions, Congressional concerns, and discuss the most likely outcomes. Register (here)

With comments due from

Reexamination Deference?

The excessive scope of the PTO’s Advanced Notice of Proposed Rulemaking (ANPRM) on AIA Trial practices is deliberate as it provides favorable optics for the current administration.

Presenting all ideas to the public as opposed to culling out the more (ahem)… “creative,” showcases the open mindedness of the administration—particularly to patent owners. Perhaps a savvy move from a public relations perspective; not so much on the side of demonstrating competence to Congress. As the Director learned a week or so back when testifying before the House Judiciary, public proposals that appear to directly conflict with the AIA statutes, and/or encroach upon the role of the legislature are plainly unwelcome. That said, the warnings of Congress must be reinforced by stakeholder submissions.

The time is now for stakeholders to separate the wheat from the chaff through submitted comments (and in the process provide the agency political cover for the obvious cuts). And an absolute avalanche of comments is coming by the June 20th deadline.

I’ll post thoughts on as many of the proposals as possible here (on an ongoing basis), starting today with the worst of the worst. At the very top of the list of bad ideas is one that has the agency seemingly questioning the PTAB Trial Section’s very purpose. Continue Reading Proposal to Elevate Patent Reexamination Antithetical to AIA Statutes