Post-Grant Review

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Top Stories of 2011

2011 was perhaps the most significant year to date in terms of post grant patent practice. The perennial legislative effort generally known as “patent reform” finally bore fruit as the Leahy-Smith America Invents Act (AIA); patent reexamination filings in 2011 reached an all time high; patent reissue practice was explored and clarified by the CAFC; and patent litigation parallel with patent reexamination continues to expand as a well established strategic practice.

As to the America Invents Act, several entirely new post grant patent proceedings have now been enacted into law (effective September 16, 2012).  A summary of these proceedings, and discussions of their expected impact are linked below (and throughout the blog).

Post Grant Review

Inter Partes Review

Supplemental Examination

Derivation

Transitional Business Method Patent Challenge

The USPTO is scheduled to…
Continue Reading 2011 Year in Review — Patent Reform & The New Post Grant Landscape

Group 2 Rules to be Published in January

The Patent Public Advisory Committee (PPAC) convened yesterday at the USPTO for their quarterly meeting. During the meeting, the USPTO presented an update on office operations and AIA implementation status. The update on the Group 2 rule making is found in the presentation materials of Janet…

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

business method patent

Business Method Patent Definition Keyed to Claim Scope?

The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the UPSTO on September 16, 2012. The new post grant option essentially provides that any “covered business method patent” is eligible for Post Grant Review (PGR) independent of the standard limitations for initiating PGR (i.e., 9 month window, patent application filing date).

The legislation defines a “covered business method patent” in amorphous terms, as follows:

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

It is left to the USPTO to interpret the practical scope of a “covered business method patent.” Not surprisingly, those that routinely obtain patents in this space, USPTO (Class 705), advocate a narrow interpretation. On the other hand, companies subject to e-commerce patent assertion campaigns hope that the definition will be keyed to claim breadth– embracing patents outside of the banking and financial services industry.
Continue Reading Scope of Business Method Patent Challenge to be Decided by USPTO

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow

As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules, which include Inter PartesReview & Post Grant, must be submitted by November 15th.

Last week, Cisco, Google, Verizon and Intuit submitted joint comments (here) directed solely to the implementation of post grant proceedings, namely, Inter PartesReview (IPR) and Post Grant Review (PGR). Not surprisingly, these tech giants (i.e., targets of serial patent infringement suits) are especially supportive of post grant mechanisms as an alternative to traditional litigation. The Group’s comments encourage the Office to adopt liberal standards for initiation of IPR and PGR, limit the potential estoppel affect of a concluded proceeding, and provide procedural flexibility for petitioners.…

Continue Reading Tech Giants Weigh in On USPTO Post Grant Rule Making Effort

Patent Bar Required or Not?

The USPTO continues to work to fashion rules to implement the new post grant proceedings of the Leahy-Smith America Invents Act (AIA). One can only speculate that the new “trial” like, post grant proceedings of the AIA will be closely modeled on the procedures of existing patent interference practice. This is because the USPTO, aside from patent interference, has limited experience in presiding over the types of contested proceedings contemplated by Inter Partes Review (IPR) and Post Grant Review (PGR).

In patent interferences, the Trial Division of the existing Board of Patent Appeals & Interferences (BPAI) conducts proceedings based upon a Standing Order. Patent interference requires an in depth knowledge of a difficult and relatively obscure aspect of patent law. As such, the attorneys who conduct these proceedings are seldom general litigators, but almost always registered patent attorneys with substantial experience in handling interferences–i.e., members of “the interference bar.”  However, such is not required.

…
Continue Reading General Litigators to Practice Before the New Patent Trial & Appeal Board?

PGR Window Anomaly to Encourage Early Litigation?

Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA).  Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.

As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).

When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR,  becomes available for all patents next September 16, 2012.

So, for newly issued patents that will not be eligible for PGR over the next few years, do requesters still have to wait 9 months before filing a request for IPR?
Continue Reading Post Grant Dead Zone Coming Soon

Filing Fees to Increase Substantially

From start to finish, the cost of an inter partes patent reexamination (IPX) proceeding is estimated to be $278K by the 2011 AIPLA Economic Survey. This figure includes all expenses from the time of filing the request to a decision of the Board of Patent Appeals & Interferences (BPAI). The government filing fee for requesting inter partes patent reexamination is $8800.

The America Invents Act (AIA) introduces several new inter partes proceedings for the purposes of challenging the validity of a U.S. Patent. The first, Inter Partes Review (IPR), will be available on September 16, 2012 and will replace IPX. The second, Post Grant Review (PGR) will also be available on September 16, 2012 to challenge certain business method patents. Thereafter, PGR may be used to challenge (within a 9 month window after issuance) a patent filed on or after March 16, 2013.

As discussed yesterday, IPR will provide a significant improvement over IPX with respect to overall pendency delays. PGR will follow the same general timeline. In addition to the improvement in pendency, both IPR and PGR will provide for limited discovery, protective orders, oral hearings, settlement, and the management of the proceedings by a three person Administrative Patent Judge (APJ) panel of the new Patent Trial & Appeal Board (PTAB). But, what is all of this going to cost filers?…

Continue Reading How Much Will Post Grant Proceedings at the USPTO Cost?

Patent Reform Provisions to Impact Technology Companies?

The race to the USPTO door may start very shortly for those defendants charged with infringement of a “business method patent.” 

Patent reform legislation is ostensibly poised for a September 2011 enactment.  The current version of the legislation (H.R. 1249) includes a provision entitled “Transitional Program for Covered Business Method Patents.” The provision essentially provides post grant review (as defined in the legislation) for patents that were issued prior to enactment. This provision is of a limited time, 8 years, and can only be used if actually sued or charged with infringement of a covered business method patent.

The clear intent of the author of this provision (Sen. Charles Schumer, D-N.Y) was to provide relief to the New York Banking Industry from the likes of Data Treasury. Some have gone as far as to label this provision a “bank bailout.” (note the provision in the bill excluding ATM machines as a venue tool Sec. 18(c))

The legislation defines a business method patent in fairly pliable terms, defining…

Continue Reading Proper Business Method Patent Challenges Under the America Invents Act?

Additional Grounds for Challenging Patents in Proposed Post Grant Review LegislationOn Wednesday, the House of Representatives formally introduced H.R. 1249, as previewed here last Friday. The bill includes some changes to the proposed post grant review and inter partes review proceedings.The two major changes being discussed in the House are: (1) The expansion of the Post Grant Review window to 12 months (S.23 previously provided 9 months); and (2) The reemergence of the SNQ standard as the threshold determination in the proposed inter partes review proceeding (S.23 previously proposed a likelihood of success standard). The Bio/Pharma community has been clear that the House’s adoption of the SNQ standard for inter partes review is not a welcomed change.Yet, the “additional grounds” subsection of postgrant review may prove much more troublesome for the bio/pharma community.Both the Senate and House bills prevent a post grant review proceeding form going forward unless the request demonstrates that “it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” (Sec. 324 subsection (a))Subsection (b) provides:(b) ADDITIONAL GROUNDS–The determination required under subsection (a) may also be satisfied by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.Subsection (b) clearly addresses the concern that subsection (a) would, by virtue of the “more likely than not” outcome standard, prevent challenges on unproven theories. But, is subsection (b) necessary?  Is the USPTO the best venue for such novel legal challenges?  What kinds of “theories” would fall into this category anyway?It is hard to imagine too many novel or untested legal theories that are “important to other patents or patent applications” that would not in some way involve application of 35 U.S.C. § 101. Arguing against the patentability of gene sequencing, aspects of human cloning, genome mapping, and the like would seem to be the types of “novel or untested” legal theories having a wide ranging impact on other patents. Subsection (b) is nothing more than an invitation to take these battles to the USPTO.It seems to me that untested legal theories that have far reaching public policy implications are best left to the courts and legislators. The USPTO is best equipped to review issues of technology and prior art, not novel legal questions.Moreover, this legislation is a game changer with respect to the Board of Patent Appeals & Interferences (BPAI). The USPTO will have enough on their plate transitioning to a Patent Trial & Appeal Board to accommodate inter partes review, while simultaneously accommodating an entirely new procedure, post grant review. Encouraging the public to pursue novel and untested legal theories during this time of change seems more than a bit misguided. Clearly, the post grant aspects of the bill will be hotly debated in the coming weeks. Yet, not all aspects of the proposed post grant review mechanism are problematic for bio/pharma.  Interestingly, since the grounds of post grant review are based on the statutory defenses of 35 U.S.C. § 282, instead of patent reexamination’s “patents and printed publications,” obviousness-type double patenting is seemingly excluded from post grant review. The absence of this ground is a boon to the bio/pharma community. Many patent reexaminations that involve drug patents include such rejections with the hopes of limiting patent term.More on the various post grant options of the legislation next week.  

On Wednesday, the House of Representatives formally introduced H.R. 1249, as previewed here last Friday. The bill includes some changes to the proposed post grant review and inter partes review proceedings.

The two major changes being discussed in the House are: (1) The expansion of the Post Grant Review window to 12 months (S.23 previously provided 9 months); and (2) The reemergence of the SNQ standard as the threshold determination in the proposed inter partes review proceeding (S.23 previously proposed a likelihood of success standard). The rn-with-inter-partes-review-changes/”>Bio/Pharma community has been clear that the House’s adoption of the SNQ standard for inter partes review is not a welcomed change.

Yet, the “additional grounds” subsection of postgrant review may prove much more troublesome for the bio/pharma community.…

Continue Reading Post Grant Review Grounds