The PTAB will host its next Boardside Chat webinar on Thursday, April 17, noon to 1 p.m. ET, for a discussion of the new interim processes for PTAB workload management. The new processes concern institution of AIA trial proceedings and bifurcation of discretionary considerations from merits and other non-discretionary institution considerations.
As expected, the USPTO has now rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum) issued by Former Director Vidal. The change is the first in many expected recalibrations of the new administration designed to return practices
It’s been an eventful (cough .. understatement.. cough) few months for USPTO judges and patent examiners as the Trump administration has seemingly targeted all federal agencies as wasteful money pits. Stakeholders are also struggling to make sense of USPTO job cuts, the impact of new agency leadership, and practice/workflow expectations going
We are two weeks away from the marquee PTAB practitioner event of 2025 – PTAB Masters! This high-level, interactive, limited enrollment program includes discussions on all aspects of the PTAB practice led by highly experienced practitioners and top thought leaders in the industry (and then there’s me). Topics include best practices for
The USPTO has now issued a final rule package (here) to implement the Director Review process in AIA trial proceedings. The final rules follows the Notice of Proposed Rulemaking (NPRM) of April 16th and responsive public comments.
Based on the comments, the final rule proposal has been
Today the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. As expected by many following the case, the Court decided that being “first” matters in double patenting scenarios—at least when the subject and reference patent claim a common priority. (here)
Allergan answers one question, but others remain. Continue Reading Allergan “First” Exception To Cellect OTDP Scenarios
Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.
In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.
Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue. Continue Reading CAFC Backs Patent Owner Estoppel – PTAB Should Stop Suggesting Otherwise
Tomorrow, Thursday, July 18, from noon to PM (EST), the USPTO will offer another episode of its “Boardside Chat” webinar series. This month, the webinar will focus on motions practice in America Invents Act (AIA) proceedings before the PTAB. The presentation will include a discussion of various motions that are
For those seeking CLE, or just the latest updates and practice changes, consider joining me and my colleague Libbie DiMarco for the upcoming Mid-Year Litigation & PTAB Review. The webinar will be offered twice on Wednesday, June 26th. First for U.S. attendees (12-1PM EST), and again for
Yesterday the PTAB announced an update to its Standard Operating Procedure (SOP 1). The update explains how judges are paneled, recused, and staffed on a given case. This latest revision aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures. In other words, this SOP is just