Post-Grant Review

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220px-Wingmanass=”alignleft size-full wp-image-4165″ title=”220px-Wingman” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/10/220px-Wingman.jpg” alt=”220px-Wingman” width=”220″ height=”177″ />Whether in a social or tactical environment, everyone knows the importance of a good wingman.  Yet, the Board of Appeals and Patent Interferences (“BPAI”) has suffered from the absence of its wingman in several recent appeals to the Federal Circuit.

In Rolls-Royce PLC v. United Technologies Corp. (here), the Federal Circuit applied a non-traditional test in its interference-in-fact analysis, and in Agilent Technologies Inc. v. Affymetrix Inc. (see past blog post here), the court imposed a very controversial claim interpretation standard for copied claims.  In a rare form of collateral damage, the Agilent decision led the BPAI to rescind one of its fundamental rules, 37 C.F.R. 41.200(b).

Would Solicitor participation in these cases have protected the institutional interests of the BPAI?  The answer is not clear.  However, absent Solicitor participation, the BPAI’s record will be left to speak for itself.
Continue Reading No Interference from USPTO Solicitors at the CAFC?

MIB coverass=”alignleft size-full wp-image-3515″ title=”MIB cover” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/08/MIB-cover.bmp” alt=”MIB cover” />The recently published Volume 2, Issue 2 of the journal Medical Innovation & Business focused entirely on patent reform’s potential impact on medical innovation.  Special guest editors Renee Kaswan, David Boundy, and Ron Katznelson express particular concern that patent reform will weaken the investment incentive for innovations with high development costs and low production costs, notably including medical innovations.  Numerous articles in this issue discuss the effects that proposed post-grant review might have on the value of smaller companies’ patents and therefore on the incentives to invest in such companies. The articles in this patent reform issue of Medical Innovation & Business that are relevant to post-grant procedures for assessing validity fall roughly into three categories based on three different perspectives: venture capitalists’ perspective, the perspective of attorneys in private practice, and judicial perspective. Across these categories, post-grant discussions repeatedly highlight several sources of uncertainty that may apply to small companies relying on their intellectual property investments. We provide the following review of the articles in this issue that pertain to post-grant review.
Continue Reading Potential Impact of Patent Reform on Medical Innovation

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The revised version of S. 515 has introduced provisions that will serve to preclude the instituting or maintaining of an inter partes review or post-grant review proceeding under certain circumstances. These circumstances are set forth in proposed changes to §§ 315 and 325 in title 35 of the United States Code.

§§ 315 and 325 provide that an inter partes review or post-grant review may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent.  In other words, you cannot file a Declaratory Judgment and seek to prove invalidity at the USPTO at the same time. Moreover, an inter partes review or post-grant review may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent.  Thus, you cannot answer a complaint for infringement and then seek to prove invalidity at the USPTO at the same time; you must file at the earliest possible time before answering. Thus, the new post grant provisions are really designed to be alternatives to litigation, not after thoughts
Continue Reading How will S.515 Impact Patent Litigation?

OopsSection 17 of the March 5, 2010 version of S. 515 (the Patent Reform Act of 2010) makes certain curious changes to Sections 116 (Joint Inventions), 184 (Filing in a Foreign Country), 185 (Foreign Filing Without a License), 251 (Reissue of Defective Patents), and 253 (Disclaimer) that would eliminate the “without deceptive intent” eligibility proscription.  The effect of these changes would be to eliminate the prohibition against gaining access to these statutory provisions where the applicant had committed fraud on the Patent Office.

If these so called technical amendments were enacted into law applicants could  add or delete named inventors to correct an error in inventorship that was made with deceptive intent.  That is, even where the applicants filed the patent application with the deceptive intent to exclude an inventor,
Continue Reading Does Patent Reform Go Too Far in Eliminating Inequitable Conduct?

top5ass=”alignleft size-full wp-image-1688″ title=”top5″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/top5.jpg” alt=”top5″ width=”116″ height=”114″ />Although the link to the left side provides a top 5 postings of sorts, the ranking is skewed significantly by spam bot visits (seeking to leave advertising comments on the same few posts over and over).  Until we can figure out a way to correct the calculation,…

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With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.

European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO).  Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO.  This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest.  As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.

In the EPO proceeding, if there is an ongoing opposition proceeding,
Continue Reading EPO Opposition Procedures, a Model for Post-Grant Review?

1208885597_4795ass=”alignleft size-full wp-image-1166″ title=”1208885597_4795″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/02/1208885597_4795.jpg” alt=”1208885597_4795″ width=”274″ height=”173″ />With the Obama administration seemingly reigning in their health care reform ambitions, it may be that the never ending saga of Patent Reform may once again be percolating in Washington D.C.  President Obama’s recent comments on the value of a strong patent system and outdated USPTO practices, and increased USPTO budget seem to evidence a refocused agenda.  On the heels of the President’s comments, last Tuesday, a group of bipartisan House members issued a letter to the House leadership opposing the reform efforts, labeling the earlier bill passed by the 110th Congress as “misguided.”

The letter from representatives Don Manzullo (R-IL)
Continue Reading Patent Reform Percolating?