Next Week’s CLE Agenda

For those seeking CLE this month, a number of great programs to consider in the coming weeks.

First up, the freebie 🙂

Next Tuesday, March 15th @ 1pm(EST) Gardella Grace presents the free one-hour webinar entitled In Possession of an Invention? Litigation Insights for Life Sciences Patent Drafting.  Presenters include

Director Vidal 2022

The Senate Judiciary vetted USPTO Director Nominee Kathy Vidal earlier this month.  Not surprisingly, the hearing was fairly uneventful (even for uber-geeks, like myself).  With a confirmation vote looming, some final written materials have been submitted by Ms. Vidal that are similarly generic in espousing any particular viewpoint that could be labeled as “pro-patent” or “anti-patent.”  That said, reading the tea-leaves, there are some PTAB developments that seem inevitable for 2022 given the current landscape.
Continue Reading Expect Slight PTAB Adjustments From the New Director in 2022

The Return of In-Person IP Conferences

In the words of princess Elsa…for the first time in forever.…there are a number of in-person IP conferences slated for this fall. (I’ve been cooped up with kids, I make Frozen references now)

First up is IPWatchdog Live 2021 September 12-14 in Dallas, Texas. The multi-day IPWatchdog

Free Program Spans April 19-22nd

For those seeking some PTAB-related CLE programming this spring, look no further than IPWatchdog.  The inaugural PTAB Masters™ program, will be presented by IPWatchdog® next week, April 19-22nd. Each day the webinar will provide a different PTAB related topic.  Tune in each day for 2-3 hours of interactive content.

Are Continuation Patents Still Viable After a Parent is Cancelled?

Patent families are formed of multiple continuation/divisional filings stemming from the same disclosure. Typically, continuation patents present marginally different claim sets.  An age old prosecution strategy is to keep a continuation pending to adapt claim sets in an iterative fashion to competitor designs. But what is the impact of the PTAB cancellation of a parent patent’s claims on such pending continuations?
Continue Reading Patent Family Viability After a PTAB Loss?

Amicus Briefing May Help Get SCOTUS Attention on Growing 101 Morass

In one of the more closely-watched cases involving patent eligibility, American Axle v. Neapco, Judge Moore recently highlighted how “bitterly divided” the Federal Circuit is on patent eligibility, and predicted with a “reasonable probability” that the Supreme Court will step in and force the Federal Circuit to reverse course on issues of eligibility.

American Axle—involving driveline propeller shafts for automotive engines—highlights the sharp divide in how various Federal Circuit panels apply the Supreme Court’s eligibility guidelines and the resulting uncertainty that inventors, patent owners, and accused infringers face in determining whether inventions are eligible under § 101 as interpreted by the Supreme Court’s ruling in Alice v. CLS Bank.  Indeed, in an earlier decision denying rehearing en banc, a sharply divided Court issued two concurrences justifying the panel’s application of § 101 law and three separate dissents urging the full court to take up the issue.  Understanding the differences in opinion here may help patent practitioners navigate tumultuous § 101 issues until the Supreme Court weighs in again.  American Axle petitioned the Supreme Court for a writ of certiorari on December 20, 2020.  The petition calls for clarity on § 101 and may be taken up in conference shortly.

The Court has shown some interest in the case, soliciting views of the government. Amicus support has also followed, including a brief filed by Senators Tillis and Coons, and former PTO Director David Kappos. Consideration of American Axle is the quickest path to some form of clarity for patent subject matter eligibility disputes.

Continue Reading American Axle Offers A Glimmer of Hope on Potential 101 Reform

New Pilot Will Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants.  And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months.
Continue Reading PTAB Fast-Track…Not So Fast

Patent & Trademark Due Dates Pushed to 6/1

Not surprisingly, the United States Patent and Trademark Office (USPTO) again extended the time to file certain patent and trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27 and May 31, to June 1, 2020.  This is in

New Precedent/Informative Decisions Demonstrate Nexus Considerations

Yesterday, the Patent Trial & Appeal Board (PTAB) designated one new precedential case, and two informative decisions directed to the application of objective indicia to obviousness determinations.  Collectively, the decisions outline the necessary degree of nexus between subject claims and submitted objective indicia.
Continue Reading PTAB Highlights Successful Application of Objective Indicia