Yesterday, the USPTO announced that it will hold a workshop on promoting innovation. The workshop will explore the affect of U.S patent policy and competition policy on innovation.
The morning session will include a panel of academics discussing PTO pendency issues. Other sessions will address injunction practice post Ebay, and the impact of
With the Senate momentum on Patent Reform Bill S.515 seemingly leading to a vote before Memorial Day, House members seeking a voice in the final bill have focused opposition efforts on the PTO funding/fee diversion aspect of the bill.
Wednesday, in an exchange with USPTO Director David Kappos during an oversight hearing with the
With the recent announcement from the Obama administration supporting the Manager’s Amendment to Senate Bill S. 515 and with the possibility that the Bill could soon get to the Senate floor for a vote prior to Memorial Day, it is time to take seriously some of the details about transitioning from (i) the current interference/reexamination scheme to a new derivation/review scheme and (ii) the current inter partes reexamination proceedings handled by the Central Reexamination Unit (CRU) to post grant/inter partes reviews handled by the new Patent Trials and Appeals Board (PTAB). This post is the first of a two part series and addresses the transition provisions for interferences. Interference to Derivation – Because S.515 will change the U.S. patent system from a first-to-invent (FTI) system to a first-inventor-to-file with grace period (FTFG) system, as was discussed in an earlier post, interferences will be replaced by a new “derivation proceeding” to determine whether the second applicant for a patent was in fact the first inventor to file for a patent. Although, the Manager’s Amendment is a marked improvement
Continue Reading USPTO Patent Reform Implementation, Fine Tuning & Interference (Part I)
The March 4, 2010 Manager’s Amendment to S. 515, known as the Patent Reform Act of 2010 may be substituted for the Senate Judiciary Committee-passed version of S. 515, and then be considered by the Senate as a whole prior to Memorial Day. It is expected that Senate Majority Leader Harry Reid (D-NV) will ask
Senate Judiciary Chairman Patrick Leahy (D-Vt.) is pushing Senate leaders to bring the Patent Reform Act of 2010 (S. 515), as amended March 4, 2010, to the Senate floor before the Memorial Day recess. Internet reports have Senate Majority Whip Richard Durbin (D-Ill.) stating that Leahy would like Senate leaders to vote on S.515 after
Yesterday, the Dept of Commerce released their position paper on certain aspects of the proposed patent reform legislation. The paper outlines economic justifications for post grant review, citing the well known inefficiencies and cost of patent litigation. Interestingly, the paper points out that post grant review is expected to be 50-100 times cheaper than patent litigation.
Previously I discussed the potential of patent reform legislation to supplant traditional patent litigation. There is significant question in my mind on how the USPTO, based on current resources, can quickly and effectively transform from the current examiner based reexamination model to a system managed by the newly labeled Patent Trial and Appeal Board.
With the expanded role of discovery practices provided by the post grant proposals, statutory time line (12-18 months), and oral hearings it seems to me that the legislative proposals cannot plausibly
Continue Reading USPTO Supports Post Grant Aspects of S.515
ass=”alignleft size-full wp-image-1999″ title=”the-end-is-near” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/04/the-end-is-near.jpg” alt=”the-end-is-near” width=”264″ height=”400″ />… or is it? Rumors of the demise of interferences via patent reform have been greatly exaggerated for years. Whether S.515 will have a different fate than other recent patent reform bills is uncertain at best. In any event, we continue our review of S.515 provisions related to post grant matters. On March 4th and 5th, we outlined the provisions in S.515 which would change reexamination and implement a new Post-Grant Review revocation mechanism, respectively. Today, we discuss what little of substantive interference practice[1] will remain if S.515 is enacted — namely, derivation proceedings.[2] Currently, derivation cases are a species or type of interference decided by the Board of Patent Appeals and Interferences (“BPAI”). In an interference proceeding at the BPAI, derivation is proven by establishing prior conception of the interfering subject matter and communication of the conception to the opposing party. Examiners rarely, if ever, suggest an interference sua sponte. Consequently, in the vast majority of cases, an applicant wishing to initiate a derivation proceeding is required to suggest an interference pursuant to 37 C.F.R. § 41.202. The suggestion of an interference is initially considered by an examiner, who is instructed by the MPEP not to even consider the suggestion of interference until after he or she has decided that the targeting applicant’s claims are in condition for allowance, but for the existence of the targeted application or patent. Therein, lies the rub. As stated in MPEP
Continue Reading S.515 Provisions for a Post Interference World
The revised version of S. 515 has introduced provisions that will serve to preclude the instituting or maintaining of an inter partes review or post-grant review proceeding under certain circumstances. These circumstances are set forth in proposed changes to §§ 315 and 325 in title 35 of the United States Code.
§§ 315 and 325 provide that an inter partes review or post-grant review may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent. In other words, you cannot file a Declaratory Judgment and seek to prove invalidity at the USPTO at the same time. Moreover, an inter partes review or post-grant review may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent. Thus, you cannot answer a complaint for infringement and then seek to prove invalidity at the USPTO at the same time; you must file at the earliest possible time before answering. Thus, the new post grant provisions are really designed to be alternatives to litigation, not after thoughts
Continue Reading How will S.515 Impact Patent Litigation?
Section 17 of the March 5, 2010 version of S. 515 (the Patent Reform Act of 2010) makes certain curious changes to Sections 116 (Joint Inventions), 184 (Filing in a Foreign Country), 185 (Foreign Filing Without a License), 251 (Reissue of Defective Patents), and 253 (Disclaimer) that would eliminate the “without deceptive intent” eligibility proscription. The effect of these changes would be to eliminate the prohibition against gaining access to these statutory provisions where the applicant had committed fraud on the Patent Office.
If these so called technical amendments were enacted into law applicants could add or delete named inventors to correct an error in inventorship that was made with deceptive intent. That is, even where the applicants filed the patent application with the deceptive intent to exclude an inventor,
Continue Reading Does Patent Reform Go Too Far in Eliminating Inequitable Conduct?
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One of the crowd pleasers built into the revised S.515 is the ability to effectively cure mistake and/or oversight in original patent prosecution. Such inadvertant issues can currently serve to jeopordize an otherwise valid patent. With the Federal Circuit struggling to get their arms around the never ending saga that is inequitable conduct jurisprudence, Congress appears poised to provide some much needed relief by way of the revised Patent Reform Legislation.
For example, in Section 10 of the Bill, Chapter 25 of title 35, United States Code, would be amended by adding a new section 257 to permit the patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to its patent. The Director would then have 3 month to determine whether the information presents a substantial new question of patentability (SNQ). If an SNQ is found to exist, the supplemenatl examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices). Once the supplemental examination concludes, the issues brought before the Office in the second examination cannot be used to attack the patent
Continue Reading Inoculate Your Patents from Inequitable Conduct Allegations?