Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023.
The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.
Today is the comment deadline on the USPTO’s recent Advanced Notice of Proposed Rulemaking (ANPRM). To date some 10,000 comments have been submitted.
At first blush the volume may seem impressive. Turns out, however, that the overwhelming majority of comments appear to be from random individuals spamming the agency with automated form submissions. These submissions do not even address the specific proposals of the ANPRM and offer little background, insight, or analysis other than a paragraph or two of “PTAB bad.” Others in the same spam bucket offer an identical rule proposal — to make the PTAB an opt-in system. Of course, the agency has no power to overrule a statute with a conflicting regulation to allow for opt-in.
Once the agency navigates through less than helpful dross, we can expect an NPRM in the fall responding to the actual ANPRM comments. My guess would be after the close of FY 2023 in early/mid October.
But, what will the actual NPRM look like? Certainly nothing like the ANPRM.
Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.
Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.
Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)
Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly
IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!
The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents. Topics will explore political and legislative developments impacting the agency in
Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings. After Director Iancu came on board, that Intervenor Brief was withdrawn.
Today, the PTO formally announced (via memorandum) that the Nautilus standard applies to AIA trials – settling an open question….at least for the time being.
Continue Reading PTAB Applies Nautilus 112 Standard to AIA Trials…For Now
The America Invents Act (AIA) placed an expiration date on Covered Business Method (CBM) challenges. That is, CBM review proceedings were designed as a “transitional program” that would sunset 8 years from enactment of the AIA – today is that day.
The legislative rationale behind setting an expiration for CBM was to target specific patents, namely, those business method patents that issued between the State Street Bank, and Bilski decisions. These patents were considered to be largely invalid under 35 U.S.C. § 101 having been issued under the more liberal 101 standard of State Street, and, providing a USPTO option for such 101 challenges was argued by the financial industry as the most efficient and cost effective path to resolution (as compared to the litigation of such issues by non-traditional patent defendants).
But, has the CBM program succeeded in neutralizing this alleged blip of invalid business method patents? If not, what is being done to potentially extend the program?
Continue Reading CBM Sunsets at the PTAB….For Now
This coming Wednesday, September 9th brings the return of Practising Law Institute’s Advanced PTAB Trial Strategies.
This year the program will focus on a half-day of advanced topics beginning at 9AM (EST), but in its usual interactive format. This year’s high-level focus is designed to
With an increasing number of issued patents eligible for Post Grant Review (PGR), patent challengers find themselves assessing whether PGR is worth the added estoppel risk. That is, where a first-inventor-to-file patent is still within 9-months of issuance (PGR window), should a challenger opt for PGR, or await the availability of IPR after the 9th month?
As with many legal questions, the answer is —”it depends.”
Continue Reading PGR May Be The Place For Your 112 Case
The USPTO’s Patent Trial and Appeal Board (PTAB) is in the midst of a historic makeover. New leadership has recently introduced significant changes. These changes are designed to rebalance AIA trial practices to allow patent owners a fighting chance. From new claim construction standards, amendment options,
Efficiency Considerations Determined at the Time of Institution
Since the unraveling of partial institution practices in SAS Institute, stakeholders have speculated that the Patent Trial & Appeal Board may begin denying petitions that present administrative inefficiencies. For example, where a petition attacking 30 claims is assessed as failing to meet the threshold standard for 29 of the 30 claims, the Board may exercise its discretion to deny the petition in the interest of efficiency.
Such a situation was recently presented in Chevron Oronite Company LLC v. Infineum USA L.P. (here).
Continue Reading Leveraging SAS Leftovers to Avoid PTAB Institution