Failed PTAB Bill Reemerges For a 6th Time

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.Continue Reading New PTAB Bill to Drive 101 Compromise?

The ANPRM Proposals That Should Drop Out of the Process

Yesterday I highlighted the ANPRM proposals that are likely to make it into the NPRM this coming fall. Today, I’ll walk through the ones that I expect to be dropped, or at least heavily revised.

The vast majority of these “misfires” suffer from the same fatal deficiency — only Congress can provide for such modifications to the AIA. While the agency has substantive rule-making authority to implement the AIA, it does not have authority to implement regulations that effectively rewrite the AIA statutes themselves.

Given the push back from Congress on the apparent overreach of many of the ANPRM proposals, it is highly unlikely that the agency will carry such proposals forward to the NPRM. Continue Reading PTAB ANPRM – Misfires & Overextensions

Reexamination Deference?

The excessive scope of the PTO’s Advanced Notice of Proposed Rulemaking (ANPRM) on AIA Trial practices is deliberate as it provides favorable optics for the current administration.

Presenting all ideas to the public as opposed to culling out the more (ahem)… “creative,” showcases the open mindedness of the administration—particularly to patent owners. Perhaps a savvy move from a public relations perspective; not so much on the side of demonstrating competence to Congress. As the Director learned a week or so back when testifying before the House Judiciary, public proposals that appear to directly conflict with the AIA statutes, and/or encroach upon the role of the legislature are plainly unwelcome. That said, the warnings of Congress must be reinforced by stakeholder submissions.

The time is now for stakeholders to separate the wheat from the chaff through submitted comments (and in the process provide the agency political cover for the obvious cuts). And an absolute avalanche of comments is coming by the June 20th deadline.

I’ll post thoughts on as many of the proposals as possible here (on an ongoing basis), starting today with the worst of the worst. At the very top of the list of bad ideas is one that has the agency seemingly questioning the PTAB Trial Section’s very purpose. Continue Reading Proposal to Elevate Patent Reexamination Antithetical to AIA Statutes

Virtual CLE Program January 24 – 27th

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

Agency Memorandum Clears Up Long Standing PTAB Debate…For Now

Earlier this week, a guidance memo was issued to the Patent Trial & Appeal Board (PTAB) on the use of Applicant Admitted Prior Art (AAPA) in IPR proceedings.  Much like the agency’s earlier 101 Guidelines on Patent Subject Matter Eligibility, the AAPA Guidance is more a pronouncement of the agency’s independent view of the law as opposed to more traditional implementation guidance on regulatory practices or new CAFC/SCOTUS jurisprudence.  As we know from the Federal Circuit’s feedback on the 101 Guidelines, such independent pronouncements are given little weight outside the agency.

Nevertheless, it is at least helpful to practitioners to have a definitive answer on this issue given the years of PTAB panel variability.  But, this guidance seems a bit short-sighted to my eye.
Continue Reading Admitted Art Ruled Out as IPR Trial Ground Reference

AIA Trial Fees Increasing + New Pro Hac Fee

The United States Patent and Trademark Office (USPTO) is increasing Patent and Patent Trial and Appeal Board (PTAB) fees for a second time in three years.  The new fees schedule, effective October 2, 2020, incudes a new fee for non-registered practitioners to appear before the PTAB pro hac vice.  Patent reexamination and reissue fees will increase by roughly 5%. )
Continue Reading PTAB Trial Fees Increase 25% in October

New Pilot Will Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants.  And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months.
Continue Reading PTAB Fast-Track…Not So Fast

Patent Owners Largely Ignore Ex Parte Amendment Options

A few weeks back the USPTO issued a Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice provided no new information, instead, it served to remind the public that reissue/reexamination options exist to amend claims outside of AIA trials. Given the continuous public outcry over AIA amendment difficulties, one would expect a fairly robust jump in reexam/reissue filing rates—especially as these options provide an ex parte amendment process.

However, as recent Patent Trial & Appeal PTAB statistics show, very few Patent Owners are pursuing these traditional amendment paths.
Continue Reading Amending Outside of the PTAB: Why So Few Reexams/Reissues?

Thursday Webinar Addresses Parallel Post-Grant Proceedings

This Thursday, April 25th, from noon to 1 p.m. ET, the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU) will host a Boardside Chat webinar presenting information on the interplay of AIA trial proceedings under the America Invents Act (AIA), reissue applications, and reexamination proceedings.

Federal Register Notice Advertises Alternative PTAB Amendment Options

Last Friday the USPTO published a notice in the Federal Register entitled: Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice outlines considerations for stakeholders pursuing reexam/reissue as an alternative amendment path to Patent Trial & Appeal Board (PTAB) AIA trial mechanisms. While, the Notice is careful to emphasize that each case will be considered on its own merits, and provides aspects of the record that will be considered in this regard, practically speaking, most such proceedings will be stayed pending an AIA trial.

The true point of the Notice is to advertise that there are other, ex parte options for amending patents that are separate and apart from the PTAB’s controversial amendment processes.
Continue Reading PTAB Amendment Alternatives: Patent Reissue & Reexamination