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.
As I discussed earlier this week, the USPTO has released a laundry list of proposed practice changes for consideration — some, good, some bad, some ugly. One of the better ideas is allowing petitioners, for a commensurate expanded word count fee, to exceed the standard word count limit for a single petition such that larger claim sets can be addressed in a single filing. This avoids the current practice of splitting a single patent challenge across multiple petition filings.
The fees for the above proposal will be considered at a hearing next month, and are targeted to become effective for FY 2025. Additionally, existing PTAB filing fees are proposed to increase by 25%, justification for which is explained as a reaction to inflation and additional work resulting from Arthrex. And, finally, there is a new fee proposed for seeking Director Review.
Here’s the breakdown of the proposed increases and newly added fees:
Patent Owners are not putting their best foot forward at the PTAB
Continue Reading Why Do Patent Owners Keep Making the Same PTAB Mistakes?
The CAFC has held that claims may not be amended by argument during IPR.
Continue Reading Amendment by Argument at the PTAB?
The USPTO has had an accelerated examination program known as “Track-1” since 2011. The program allows patent applicants to advance a patent application out-of-turn such that a determination can be made within 12 moths of filing. That is, like a Lightning Lane of sorts (for you Disney fans) to skip the typical wait times for patent examination. In this way the program is said to be designed to foster “faster innovation.”
In theory, it is a great idea. If you are a start-up, for example, and need to get your claims allowed quickly for business reasons. Paying a fee for the expedited attention, agreeing not to extend filing dates of responses, and limiting the number of claims, is a fair compromise.
But, if patent examiners are rushed to judgement to meet internal deadlines, and do so without the most relevant information, the USPTO is doing the public a disservice. Recent trends also suggest that examiners may be moving these cases to allowance to get time-sensitive work off of their dockets.
Remember the good ole days when every bar meeting had that Alice panel that said the same thing over and over? (i.e., “your guess is as good as mine”) And by good ole days, I mean the days when you skipped that panel and caught up on your emails back in your room. 🙂
Well, here we go again.
With American Axle failing to tempt the SCOTUS, the message has become clear….”Congress, this is your mess to fix.” So, we now embark on yet another adventure on sorting out the patent world’s biggest hairball – and that’s saying something!
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
This year I posted my top 2021 PTAB developments over at IPWatchdog. You can find it here Patent Trial and Appeal Board Year in Review: The Top Five PTAB Developments of 2021
For a more in depth discussion of these issues, and
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
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