Patent Trial & Appeal Board

Subscribe to Patent Trial & Appeal Board via RSS

Revised Rule on Anonymous Requests Subject to Practitioner Interpretation

The estoppel provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP) will impact related court proceedings involving the same patent, and USPTO validity proceedings relating to the same patent.

The aspect of the IPR/PGR estoppel that applies to USPTO proceedings is codified below:

315 (e)(1) Estoppel (applies to IPR; 325(e)(1) codifies the same for PGR & TPCBMP)

PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

(emphasis added)

Taking the example of 315(e)(1) estoppel, this estoppel applies not only to a subsequent request for IPR from the same requester (or privies), but to any “office proceeding.” The primary USPTO proceeding that will be impacted by 315(e)(1) will be ex parte patent reexamination (EXP). This is because, by definition, a Post Grant Review (PGR) can only be conducted prior to an IPR. Likewise, inter partes reexamination (IPX) will no longer be an option in a few weeks, ending on September 16th. While theoretically there may still be some IPX proceedings that are being “maintained” by the time the first IPR is concluded, it is more likely that the Patent Trial & Appeal Board (PTAB) would consolidate or stay such parallel Office proceedings. (325(e)(1) will not impact office proceedings for PGR for some years, but will apply in the short term to TPCBMP)

As pointed out previously, in many cases EXP is requested anonymously. (MPEP 2213). To account for this practicality the USPTO issued proposed rules requiring that anonymous filers disclose their identity to the Office so the applicability of estoppel could be assessed relative to EXP filers. In the final rules issued this past Monday the USPTO dropped the identity requirement in favor of a simple practitioner certification; but is the final rule enough to protect Patentees from harassment?…

Continue Reading Anonymity of Patent Reexamination Requests

PTAB Rule Packages to Publish on August 14th

The final rule packages for the new post grant patent proceedings of the Patent Trial & Appeal Board (PTAB) were expected to issue last week but were obviously delayed.  The USPTO informed the Intellectual Property Section of the ABA (at the ABA annual meeting last weekend) that these final rule packages will publish on August 14th. (available in the Federal Register reading room on the 13th). The delay is a result of the time needed for publishing agencies to review such a significant submission. For example, last Friday the USPTO was asked to adjust minor formatting, section headings/numbering, etc to the original submission made in July.

While the agency was tight lipped as to changes in the final rules during their presentations over the weekend, reading between the lines…
Continue Reading USPTO Buzz — Rule Packages and PTAB Roll Out

Reduction in Incoming Requests & Inter Partes Workload to Free Up Resources

Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last fall. Starting in September of 2012, these new patentability trials (Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP) and Inter Partes Review (IPR)) will become available, and must conclude by statute within 12-18 months of initiation. The pendency of the new trial proceedings is a significant improvement relative to existing patent reexamination and is expected to be a significant driver behind filings concurrent with litigation.

As a result of the new options for contested proceedings, the law eliminates inter partes patent reexamination. So, going forward, the Central Reexamination Unit (CRU) will lose a significant, resource intensive stream of work. While it is true that the CRU will remain responsible for legacy inter partes reexamination filings, the 100+ examiners will necessarily have extra time on their hands post-AIA.

Absent a replacement stream of work, the remaining stream, ex parte patent reexamination filings, may benefit from the newly available bandwidth.…
Continue Reading Enhanced Patent Reexamination Speed Coming Soon?

Discussion of AIA Legislative History

For those that may have missed the Patently-O post on the topic last week, Mr. Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, recently published a comprehensive guide to the legislative history of the AIA in the Federal Circuit Bar Journal. Since the AIA was the result of years…

USPTO Clarifies Stance on BRI Application to Post Grant Proceedings

During yesterday’s hearing of the Senate Judiciary Committee, Director Kappos explained the various initiatives ongoing at the USPTO with respect to AIA implementation, efforts to address drafting errors in the AIA, and backlog reduction efforts.

Toward the end of the hearing, Director Kappos was asked to justify the use of the broadest reasonable interpretation (BRI) in the new post grant proceedings. This same comment was earlier submitted to the USPTO by the major bar associations (for reasoning that has long escaped me). Director Kappos explained that the AIA requires the USPTO to assess patentability, not validity. In this way, the Agency is simply following the mandate of the legislation. 

Shortly thereafter, the Director issued an expanded rationale on his blog. The Director correctly explained that:…

Continue Reading USPTO to Apply BRI Claim Standard in Post Grant Proceedings

preliminary injunction-post grant

AIA Post Grant Trial Mechanisms: Game Changers

Currently, Patentees anticipating a motion to stay a parallel litigation pending patent reexamination will often pursue a preliminary injunction (PI) to bolster their argument that a stay would be prejudicial as between competitors. That is to say, the relatively long, multi-year pendency rates of patent reexamination coupled with a perceived deterioration in market share (not compensable by money damages), was often times enough potential prejudice to influence a judge to deny a stay of the proceeding. …or at least delay any decision to stay until after a decision on the merits of the request for injunctive relief.

Later, when addressing the merits of the PI request, courts would weigh the reexamination evidence against the “likelihood of success on the merits” factor of the well known PI analysis. In some instances, courts would look dis-favorably upon the mere grant of a patent reexamination request. This is because, historically, the grant rate for patent reexamination requests hovered around 93% under the SNQ standard. Likewise, courts would disregard interim rejections of the patent reexamination proceeding as subject to years of further prosecution/appeals.

Yet, these criticisms may no longer apply after September 2012, the effective date of the new contested proceedings of the America Invents Act (AIA).

Starting on September 16 2012, the pendency of the new contested patentability challenges (Inter Partes Review (IPR), Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBM) will be 12-18 months by statute; a far cry from the 5-7 years for inter partes patent reexamination. At the same time, the standards for initiating the new proceedings have been raised relative to the old SNQ standard to reduce the overall grant rate.
Continue Reading Preliminary Injunctions an Even Tougher Sell Post AIA?

BPAI Hiring & Rule Efforts

The USPTO is now heading into the home stretch of the America Invents Act (AIA) rule making efforts. The USPTO has committed to publishing the final rules relating to the new post grant mechanisms of the AIA by August 16th, at the latest. It is expected that the agency will complete their work on the final rules in July, but, the review of the Office of Management & Budget (OMB) will delay publication another 2-3 weeks.

The final packages are not expected to vary significantly from the February NPRMs. The USPTO has commented publicly…

Continue Reading Summer Moves at the USPTO

CAFC Standard of Review Driven by Appeal Posture

The appeal of a rejection from the Board of Patent Appeals & Interferences (BPAI) to the Court of Appeals for the Federal Circuit (CAFC) is a relatively uncommon event in the prosecution of patent applications. This is because the cost of such an appeal is rarely advisable in light of the ability to simply request continued prosecution before the Examiner.

On the other hand, post grant proceeding appeals from the BPAI (and soon to be Patent Trial & Appeal Board (PTAB)) to the CAFC are far more commonplace. Unlike application prosecution, where virtually unlimited prosecution is possible via requests for continued examination (RCEs), neither patent reexamination nor the new post grant proceedings of the America Invents Act (AIA) permit such alternatives to appeal. Moreover, amendment of claims during these proceedings is generally disfavored as creating an intervening rights defense, and patents subject to post grant proceedings are almost always high-value assets. Accordingly, as the popularity of post grant proceedings continues to increase, so too do the number of appeals from the USPTO to the CAFC.

When considering decisions of the USPTO, the CAFC employs either a de novo standard of review or substantial evidence standard of review, as appropriate. Not surprisingly, appeals that employ the de novo standard provide a more significant opportunity for reversal than those that do not. For this reason, it is important to understand the Court’s practice in applying one standard over the other.
Continue Reading Legal Conclusions & Fact Finding, Pursuing USPTO Appeals to the CAFC