Patent Law Reform

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Prioritized Examination Program Expanded to Include RCE Filings

While not a typical post grant topic, prioritized examination (PE) is another feature of the recent America Invents Act that may be of interest to those with high value applications stalled at the USPTO.

As a reminder, PE under the AIA is essentially a codification of the USPTO’s track 1, Enhanced Examination Timing Control Procedures Initiative. Until passage of the AIA, and the increased funding that came along with the 15% surcharge, the Track 1 program was suspended. Thereafter, the Office began accepting requests for PE.

PE allows, as the name implies, examining certain applications out of turn based on a priority status and be disposed of within 12 months. That is to say, upon payment of a fee of $4800 for large entities, $2400 for qualifying micro entities, “priority” can be purchased. There is a cap of 10,000 such requests for any one fiscal year. Judging by initial filing rates (300 per month) that number is not likely to be exceeded.

Previously, applications undergoing prosecution, such as those at the RCE stage could not participate in this program….which makes sense in that there is no value in jumping to the head of line if already there. Why anyone would feel the need to pay such a hefty fee for a case already being examined is beyond me, yet the USPTO has provided for that eventuality in yesterday’s final rule publication in the Federal Register .…

Continue Reading USPTO Expands Prioritized Examination Program

Director Kappos to Speak at CLE Webinar Tomorrow

For those requiring some additional CLE for 2011, Director Kappos will be speaking at American University Washington College of Law tomorrow, November 30, 2011. The program is entitled “The America Invents Act: A Patent Law Game Changer in a 21st Century Global Economy.” CLE credit (1.5) is…

business method patent

Business Method Patent Definition Keyed to Claim Scope?

The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the UPSTO on September 16, 2012. The new post grant option essentially provides that any “covered business method patent” is eligible for Post Grant Review (PGR) independent of the standard limitations for initiating PGR (i.e., 9 month window, patent application filing date).

The legislation defines a “covered business method patent” in amorphous terms, as follows:

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

It is left to the USPTO to interpret the practical scope of a “covered business method patent.” Not surprisingly, those that routinely obtain patents in this space, USPTO (Class 705), advocate a narrow interpretation. On the other hand, companies subject to e-commerce patent assertion campaigns hope that the definition will be keyed to claim breadth– embracing patents outside of the banking and financial services industry.
Continue Reading Scope of Business Method Patent Challenge to be Decided by USPTO

Group 2 Rule Making Effort in Final Stages

Since the enactment of the Leahy-Smith America Invents Act (AIA), and even before, the USPTO has been busy fashioning new rules to implement the various provisions of the legislation. The USPTO has been aggressively seeking public comment prior to publishing the proposed new rule notices due to the significant amount of changes introduced by the legislation and the short time time frame.

The Office has grouped the various rule packages. Group 1 related to rules that needed to be provided immediately. Group 2 is directed to provisions that will become available 12 months after enactment. These proposed rules are expected to be introduced in late December or early January.
Continue Reading USPTO Finalizing Post Grant Rule Packages

Halloween Webinar to Discuss AIA Implementation Plans & Progress

Next Monday, the USPTO will host a free public webinar at 1PM to discuss the America Invents Act (AIA). USPTO participants in the webinar will outline the agency’s implementation plans, and answer a selection of questions submitted during the session. Questions should be submitted in …

Key Facts & Dates for all Post Grant USPTO Proceedings

While the America Invents Act (AIA) provides many new post grant proceedings, it also introduces changes to existing proceedings. While I have written about these changes previously, it would seem helpful to condense the important facts all in one place. Thanks to Paul Morgan for his suggestion for this post, and contributions to the content.

1. Ex Parte Patent Reexamination (existing proceeding) — The AIA precludes appeals by Patentees to the District Court in ex parte patent reexaminations. (to the extent that right ever existed, previous post (here). That is to say 35 U.S.C § 306 was amended to reference 144 instead of 145. H.R. 1249 at page 29.

Effective Date: Enactment

Side Notes: The SNQ standard, which is no longer used in inter partes patent reexamination is still used in ex parte patent reexamination. Ex parte patent reexamination practice remains largely unchanged by the AIA.

2. Inter Partes Patent Reexamination (existing proceeding, to be replaced) — The AIA replaces the SNQ standard with a new standard, namely a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. H.R. 1249 at page 22.

Effective Date: Enactment

Side Notes: Inter Partes patent reexamination is to be replaced…
Continue Reading USPTO Post Grant Cheat Sheet

Pre-1999 Patent Filings No longer Immune to Inter Partes Challenge

Back in August, I explained the import of various effective date provisions of the Leahy-Smith America Invents Act (AIA) as they relate to current and future post grant USPTO challenges.

The AIA changes the USPTO standard for initiating inter partes patent reexamination; this change will take effect upon enactment, tomorrow.

A second important date provision is the one year anniversary of enactment as it may foreclose inter partes options altogether for defendants currently involved in suits pertaining to newer patents (i.e., patents that matured from applications filed on or after November 29, 1999). For such litigants, if an inter partes proceeding is desired, action must be taken before the anniversary.

Interestingly, for those defendants that will become involved in suits pertaining to older patents (i.e., pre- ’99 filings) after enactment, but before the anniversary, options at the USPTO will actually expand upon the one year anniversary. That is to say, defendants may choose to wait for new inter partes opportunities to challenge patents never before eligible for such scrutiny.…

Continue Reading Older Patents Soon Subject to USPTO Inter Partes Review

Leahy-Smith America Invents Act To Be Signed Into Law Friday

Today, White House Press Secretary Jay Carney announced that the Leahy-Smith America Invents Act (AIA) will be signed by President Obama on Friday, September 16th.

Announcing the signing aboard Air Force One today, Carney stated, “The America Invents Act passed with the president’s strong leadership after a decade of effort to reform our outdated patent laws.”

Carney also announced to reporters that, at the signing event Friday, President Obama will announce new steps that the White House is taking to “convert ideas of American Universities and research labs into new products to expand our economy and create jobs.” It is not clear if this announcement is related to intellectual property protection, or some other government initiative.

What does this mean for you, right now?
Continue Reading America Invents Act To Be Enacted September 16th