Post-Grant Review

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So Let It Be Written, So Let It Be Done…Your Patent Portfolio That Is

Two weeks back I discussed the “patentee estoppel” impact of Rule 42.73(d)(3)(1). As a reminder, when a patent claim is cancelled or finally refused in a validity trial proceeding of the Patent Trial & Appeal Board (PTAB), the Patentee is thereafter precluded from taking an inconsistent action before the USPTO. This preclusion includes, obtaining in any patent, a claim that is not patentably distinct from the finally refused or cancelled claim.

In the earlier post, I discussed how the final refusal or cancellation of a patent claim could have a devastating impact on active continuation patent application portfolios. This is because when a parent patent has a broad, generic claim cancelled or refused in a post grant trial of the PTAB, the Patentee is estopped from pursuing a continuation (or reissue) application presenting claims of indistinct scope. Absent a proactive strategy, such a result would significantly undermine the investment in continuation application portfolios of large patent filers.

Perhaps even more disturbing, is the infectious nature of this estoppel relative to other, issued patents of an unsuccessful Patentee.
Continue Reading Creeping Death….The Infectious Estoppel Impact of PTAB Validity Trials

First Inter Partes Review & Covered Business Method Filings Headed to the USPTO

The USPTO’s Patent Trial & Appeal Board (PTAB) opens its doors for business this coming Monday. As a reminder, submissions to the PTAB will need to be filed via the Patent Review Processing System (PRPS). The web portal system will go live…

Continuation Applications to be Collateral Damage to PTAB Proceedings?

The new patent validity trials of the Patent Trial & Appeal Board (PTAB), Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), and Inter Partes Review (IPR) introduce a new layer of estoppel for Patentees. This estoppel, once triggered by claim cancellation or refusal by the Patent Trial & Appeal Board (PTAB), could operate to effectively forfeit a Patentee’s continuation application portfolio.

The danger is significant as it is common practice for many Patentees to maintain continuation patent applications long after the issuance of a first patent. The pending continuation applications allow Patentees to adapt/refine their claims to changing products of the marketplace such as when competitors attempts to “design around” the claims of the initially issued patent. In this way, a robust continuation portfolio serves as a further hedge against infringement of the base patent. Indeed, for many large stakeholders, continuation patent application portfolios constitute a major investment.

Once a patent is challenged in a petition for IPR, PGR, or TPCBMP, what can a patentee do to protect their investment in continuation patent applications?

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Continue Reading Post Grant Patent Challenges To Threaten Continuation Portfolios

Stafford Legal Webinar on PTAB Practice

Next week, the Patent Trial & Appeal Board (PTAB) will begin to accept petitions for the post grant patent validity trials of the America Invents Act (AIA). For those needing a refresher, or crash course in the new proceedings, next Tuesday September 18th Stafford legal will host a 90-minute…

USPTO Webinar Scheduled Today, FAQ Published

As a reminder, the USPTO will conduct a training session from 10 am – noon, in the North Auditorium of the Madison Building at the Alexandria Campus of the USPTO. The training session will be directed to the new Patent Review Processing System (PRPS) of the Patent Trial & Appeal Board (PTAB). The session will be broadcast via WebEx and available for replay thereafter. Information to connect to the training session via WebEx is provided below.

WebEx participants will be able to submit questions through the WebEx chat session.

The USPTO has also issued a brief FAQ on the PRPS system:…

Continue Reading New E-filing Portal for Post Grant Patent Trials Unveiled Today

AIA Changes Only Days Away

Back to school everyone…..the USPTO will kick off its AIA roadshow series in Minneapolis on September 10th and finish up in New York City on September 28th. The roadshow program will explain the final rules and answer audience questions. The agency also will discuss proposed rules for the first-inventor-to-file provision. …

Satisfying the Electronic Filing Requirements of PRPS

As discussed earlier this week, the Patent Trial & Appeal Board (PTAB) of the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the America invents Act. Unless otherwise authorized by the Board, all PTAB filings must be submitted electronically 37 C.F.R § 42.6(a)(3). The system will be known as the Patent Review Processing System (PRPS). Currently, the USPTO is testing the prototype system, and soliciting public input on its general format and operation. PRPS will be rolled out in the coming weeks, and be up and running by Septemeber 16th. Practitioners will need to preregister with PRPS prior to their first filing.

While PRPS is still a work in progress, there are some practice tips emerging from the prototype testing sessions. (some preliminary screenshots of the system here)

Especially in the short term, obtaining a filing date will be a big deal for petitioners seeking Inter Partes Review (IPR) subject to a parallel litigation. This is because such petitioners only have 1 year (by statute) to petition for IPR from the date of service of the litigation complaint, and there are petitioners that were sued 10-11 months prior to September 16th. These filers must be especially careful not to miss their 1 year deadline by running afoul of PRPS requirements.

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Continue Reading Obtaining an Electronic Filing Date at the PTAB

PRPS System Provided for Receiving Post Grant Patent Trial Requests

As previously discussed, the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the Patent Trial & Appeal Board (PTAB). The system will be known as the Patent Review Processing System (PRPS). Over the next 2-3 days the USPTO will be testing and receiving feedback from the public on features of the PRPS.

A link to PRPS will be available on the USPTO web page in the coming weeks, but what will the portal receive on September 16th?…

Continue Reading Electronic Filing of USPTO Post Grant Trial Requests

Final Rule Codifies Existing BPAI Practice

As a reminder, non-registered practitioners have, in limited circumstances, been permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The USPTO proposed adopting this practice for the new post grant patent trial proceedings of the Patent Trial & Appeal Board (PTAB) 37 C.F.R § 42.10(c). The final rule, which issued last week, maintains the pro hac vice provision but adds a bit of a twist.

In the earlier discussion on this topic, I relayed the explanation of Chief Judge Smith as provided on the USPTO website (America Invents Act (AIA) micro site) relative to the proposed pro hac vice rule. In essence, Judge Smith outlined the types of conditions that were contemplated by proposed rule 42.10(c).

The final rule more concretely codifies the expectations of the USPTO while ensuring that registered practitioners drive the PTAB proceedings.
Continue Reading Revised Pro Hac Vice Policy of the PTAB