ass=”alignleft size-full wp-image-1688″ title=”top5″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/top5.jpg” alt=”top5″ width=”116″ height=”114″ />Although the link to the left side provides a top 5 postings of sorts, the ranking is skewed significantly by spam bot visits (seeking to leave advertising comments on the same few posts over and over). Until we can figure out a way to correct the calculation,
POST-GRANT REVIEW CHANGES TO S.515
ass=”alignleft size-full wp-image-1548″ title=”breakingnews” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/breakingnews.jpg” alt=”breakingnews” width=”162″ height=”123″ />As first reported here yesterday, changes to S. 515 are underway (the amendment is now available to the public and found here). In yesterday’s post we outlined proposed changes to S.515 relative to reexamination practice, below we outline the changes to the new Post-Grant Review revocation mechanism.
A. Post-Grant Review
Post-Grant Review, is procedurally similar in many respects to Inter Partes Review, but, is not limited to patents and printed publications, but any ground that could be raised under paragraph (2) or (3) of § 282 (b). Post Grant Review may be initiated ONLY within
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DETAILS ON RENEWED PATENT REFORM EFFORT ARE REVEALED?
ass=”alignleft size-full wp-image-1538″ title=”DrudgeSiren” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/DrudgeSiren.gif” alt=”DrudgeSiren” width=”50″ height=”69″ />As reported last week, a revised version of S.515 is expected to be made public in the very near future. Reliable sources have informed the authors of PatentPostGrant.com of the nature of some possible changes to the version of S. 515 that was passed by the Senate Judiciary Committee in April 2009. Over the next several days, we will outline the major changes, focusing mainly on the reshaping of the post-grant review landscape. These changes are believed to be in the “Post Grant Review Proceedings” sections of the revised bill, covering both reexamination changes and introducing a new post grant revocation procedure. The revised bill will, if passed without further amendment, present very significant changes to the existing post-grant landscape of ex parte and inter partes reexamination.
The Post Grant Review Proceedings being considered
Continue Reading DETAILS ON RENEWED PATENT REFORM EFFORT ARE REVEALED?
Deal Appears Imminent on Patent Reform Legislation
ass=”alignleft size-full wp-image-1512″ title=”USA-COURT/SOTOMAYOR” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/rtr25o04_comp.jpg” alt=”USA-COURT/SOTOMAYOR” width=”233″ height=”182″ />Earlier this month we noted that with the health care legislation seemingly losing steam, that there appeared to be movement on patent reform; yesterday those suspicions were confirmed. Senator Patrick Leahy (D –Vt) indicated at an executive business meeting on Thursday that a compromise bill on
Upcoming Post Grant CLE Opportunities
ass=”alignleft size-full wp-image-1149″ title=”PLI-Logo” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/PLI-Logo.bmp” alt=”PLI-Logo” width=”229″ height=”132″ />For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are two upcoming programs in March, one offered in New York this coming Monday (March 1st and 2nd) and one in Chicago (March 11th and 12th). The editors
Patent Reform Percolating?
ass=”alignleft size-full wp-image-1166″ title=”1208885597_4795″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/1208885597_4795.jpg” alt=”1208885597_4795″ width=”274″ height=”173″ />With the Obama administration seemingly reigning in their health care reform ambitions, it may be that the never ending saga of Patent Reform may once again be percolating in Washington D.C. President Obama’s recent comments on the value of a strong patent system and outdated USPTO practices, and increased USPTO budget seem to evidence a refocused agenda. On the heels of the President’s comments, last Tuesday, a group of bipartisan House members issued a letter to the House leadership opposing the reform efforts, labeling the earlier bill passed by the 110th Congress as “misguided.”
The letter from representatives Don Manzullo (R-IL)
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USPTO Reexamination of Means Plus Function Claims
g class=”size-medium wp-image-1043 alignleft” title=”goodfellas_painting-small” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/goodfellas_painting-small-241×300.jpg” alt=”goodfellas_painting-small” width=”241″ height=”300″ />–A Tale of Two Statutes —
When explaining the reexamination practices relating to means plus function claims, I am often reminded of my favorite line from the movie Goodfellas. In the movie, Joe Pesci explains a painting (right) on his mother’s dining room wall to his friends, he describes the painting as follows: Oh, I like this one…One dog goes one way, the other dog goes the other way, and this guy’s in the middle is sayin’, “Whadda ya want from me? “
When it comes to reexamination of means-plus-function claims, the USPTO is clearly in the middle, situated between conflicting statutory perspectives.
It is well established that patent reexamination is granted only for substantial new questions of patentability based on patents and printed publications. Outside of limited circumstances relating to intervening art, 35 USC § 112 is not considered in relation to original patent claims of an issued patent in reexamination.[1]
In this regard, MPEP 2258 (II) notes that:
Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. . . (emphasis added)
The above noted prohibition against analyzing original patent claims for 112 compliance in reexamination is wholly inconsistent with
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Moving Toward a More Efficient Inter Partes Reexamination Proceeding
hancing Office efficiency.
“Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?
In an earlier post, we inquired whether patent claims at the PTO are treated like a “nose of wax.” Generally, a claim examined by the PTO is given its broadest reasonable interpretation in light of and consistent with the specification of the application or patent in which it appears. One notable exception to the general rule arises in interferences where an applicant “copies” the claim of a targeted patent or application to provoke the interference. In this case, if a party challenges the patentability of the “copied” claim pursuant to 35 U.S.C. §112, first paragraph, the “copied” claim is interpreted in light of the specification of the targeted patent or application. See Agilent v. Affymetrix, 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009). A request for an en banc rehearing of the Agilent panel decision was denied by the Federal Circuit. In Koninklijke Philips Electronics N.V. (“Philips”) v. Cardiac Science Operating Company (“Cardiac Science”) (Fed. Cir. case No. 2009-1241), a second panel of the Federal Circuit has maintained that, when a party challenges the patentability of a “copied” claim
Continue Reading “Nose of Wax” Revisited and Should 35 USC § 145 be Revised to Apply to Reexaminations?
Patent Reform Derailed Again?
The seemingly never ending political battles relating to the pending patent reform legislation rage on, especially as they relate to the proposed post grant opposition and reexamination provisions.
The current bills, H.R. 1260 and S 515, originated from legislative proposals from as far back as 2005. S. 515 was reported out of the Senate Judiciary Committee on April 2, 2009, a committee report on this bill was issued on May 13, 2009.
Both of the bills include overlapping proposals, with respect to post grant oppositions and expanded inter partes reexamination. Minor differences exist in the proposed bills, such as the availability of public use evidence to the expanded inter partes reexamination proposed, and the application of inter partes estoppel to ITC actions.
Lobbying
In January 2009, the Heritage Foundation released a white paper entitled: Promoting Innovation with Patent Reform: A Memo to President-elect Obama. The paper opposed the legislative proposals regarding the expansion of reexamination and establishment of post-grant opposition.
Continue Reading Patent Reform Derailed Again?