Patent Trial & Appeal Board

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BPAI Considering Expanding Per Curiam Decision Practices to Combat Backlog

At this week’s AIPLA Spring Meeting, Chief Judge Smith of the Board of Patent Appeals & Interferences (BPAI) provided an update on the Board’s staffing and productivity initiatives. As shown in his slides (here), the backlog of appeals continues to grow toward 30,000 cases. 

BPAIAs a result of the backlog, and the new trial mechanisms of the America Invents Act, the Board has increased hiring. Since hiring alone will not be enough to keep up with the workload, the Board is also contemplating expansion of the per curiam decision practice.…

Continue Reading BPAI Considers Expanding Per Curiam Decision Practice

PTAB To Exercise Discretion Relative to Non-registered Practitioners

The new post grant patent proceedings of the America Invents Act (AIA) are adjudicative in nature. That is to say, Derivation, Inter Partes Review (IPR) and Post Grant Review (PGR) will be conducted as trials before the Patent Trial & Appeal Board (PTAB). Patent examiners will no longer referee inter partes disputes at the USPTO (outside of legacy inter partes reexamination proceedings)

While IPR and PGR will include many litigation style mechanisms, such as limited discovery, protective orders, motions, etc, these proceedings will also embrace traditional functions of patent application prosecution. (e.g., claim amending and engineering/scientific analysis). As noted previously, non-registered practitioners can, in limited circumstances, be permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The PTAB will adopt this practice. Rule 42.10(c)

Recently, Chief Judge Smith explained the standard that will be applied to applications of non-registered practitioners by the PTAB.…

Continue Reading Pro Hac Vice Policy of the New Patent Trial & Appeal Board

Commentary on Notice of Proposed Rules to Implement Post Grant Patent Proceedings Due on Monday

The deadlines for submitting comments to the USPTO on the Group 2 rule making proposals (i.e., post grant patent proceedings) are next Monday and Tuesday, April 9-10th. (depending upon the publication date)

While the USPTO should be applauded for their …

Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel

The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions preclude a subsequent attempt to invalidate the same patent in a district court (at least based upon patents and printed publications).

For the new post grant proceedings of the America Invents Act (AIA) the same basic concept exists for requesters― one bite at the apple. However, the estoppel is triggered substantially earlier. In post grant proceedings under the AIA estoppel under 35 USC 315 attaches upon the issuance of a final written decision, which should occur around a year and a half from the filing of the petition for review in a typical case. In contrast, IPX estoppel attaches only upon issuance of the reexamination certificate, after exhaustion of all appeals to Article III courts.

Perhaps even more significantly, the proposed rules to implement the Post Grant Review and Inter Partes Review proceedings add a new layer of estoppel against Patentees.

The impact of this proposed change would be devastating for large patent filers.…

Continue Reading USPTO Proposal to Destabilize Large Patent Portfolios

PTAB & Post Grant Proceedings Detailed by USPTO

In advance of the printing in the Federal Register later this week, the USPTO has released its proposed rules for the contested case provisions, i.e., inter partes review, post grant review, the transitional program for covered business methods, and derivation. The documents appearing below are not the official Federal Register publications of those proposed rules. The official Federal Register publications will follow later this week on February 9 and 10, 2012. Publication of the proposed rules in the Federal Register will begin the sixty-day public comment period for the proposed rules.

Links to the various rule sets are found below:

Proposed Rules for Trials before the Patent Trial and Appeal Board (aka Proposed Umbrella Rules)

Practice Guide for Proposed Trial Rules

Proposed Rules for Post Grant Review

Proposed Rules for Inter Partes Review

Proposed Rules for the Transitional Program for Covered Business Methods

Proposed Rules for the Definition of Technological Invention

Proposed Rules for Derivation

Quick facts are as follows;…
Continue Reading USPTO Issues Massive Post Grant Rule Package

ABA, AIPLA and IPO Suggest PTAB Model Rules to USPTO

Early last week, the major bar associations submitted comments to the USPTO on the current Group 2 Rule Making effort. As a reminder, Group 2 Rules are a second phase of USPTO rules designed to implement features of the America Invents Act (AIA). The Group 2 Rules include Inter Partes Review (IPR) & Post Grant Review (PGR).

Unlike other organizations that submitted commentary only, the ABA, AIPLA and IPO coordinated their efforts to prepare a set of model rules. Of course, the Office has been working on their own rule sets in parallel. As such, the submitted model rule set (here) is primarily provided to serve as a preliminary gauge of stakeholder expectations.

Some interesting suggestions in the model rules are as follows:

1. Practitioners IPR/PGR: The model rules suggest that lead counsel in any PGR/IPR proceeding must be a registered practitioner. Pro hac vice practice is contemplated, but is suggested to be “rarely granted.” (See proposed rule 41.5)…

Continue Reading Patent Trial & Appeal Board Rules Drafted by Major Bar Associations