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
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.
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?
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
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
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
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
Yesterday, the Patent Trial & Appeal Board (PTAB) designated one new precedential case, and four informative decisions directed to printed publication analyses.
The four informative decisions stem from AIA trial proceedings, and address common fact patterns in assessing public accessibility of a printed publication. Perhaps of most interest is the precedential decision, which outlines important distinctions between examinational and adjudicatory procedures before the agency.
Continue Reading PTAB Precedent Distinguishes Prima Facie Case from AIA Trial Practices
The United States Patent and Trademark Office (USPTO) today announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27. Today’s announcement is in addition to earlier announced accommodations.
Continue Reading USPTO Offers 30 Day Extensions Under CARES Act
Inequitable conduct before the USPTO is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Thereasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). Given the increasing inventory of Final Written Decisions (FWD) in larger patent portfolios, practitioners are only now beginning to confront issues of inequitable conduct relating to agency based estoppel. That is, if a patent owner advances a position inconsistent with a previous PTAB FWD on a patent/related patent under 37 C.F.R. § 42.73(d)(3), whether such a practice constitutes inequitable conduct. It just might.
But, for the time being, the courts’ lack of experience with the PTAB’s rule-based estoppel is benefiting patent owners.
Continue Reading Patent Prosecution After an Adverse PTAB FWD – Beware