PatentsPostGrant.com February Webinar

The Patent Trial & Appeal Board (PTAB) discontinued its Broadest Reasonable claim Interpretation (BRI) rubric for AIA trials in the closing weeks of 2018. With the PTAB and district courts now aligned under the Phillips claim construction standard, patent litigants must now manage parallel proceedings in the face of new estoppel risks, timing challenges, and tactical pitfalls.

Please join me for an interactive webinar discussion of these new strategic considerations Thursday, February 21st@2PM (EST). Register (here).

My co-presenter for this webinar will be Matthew Rizzolo, a partner in Ropes & Gray’s IP litigation practice.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period.

To attend the free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Phillips Claim Construction Rule Imminent

Back in May, the USPTO issued a Notice of Proposed Rulemaking to switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings (here).  Thereafter the agency collected comments from the public, most of which favored the change, and submitted the issue to the Office of Management & Budget (OMB) for final regulatory approval. On Wednesday October 3rd the regulatory approval was given by OMB’s Office of Information & Regulatory Affairs (OIRA).  Thus, the USPTO may now publish a Final Rule Package to make the proposed switch to Phillips.

The Final Rule Package, which I expect will publish in the Federal Register next week does not take effect immediately. Rather, there will be an effective date 30-60 days after the date of publishing. Assuming publication next week, that would provide an effective date as early as the first full week of November, or as late as December. (There have been discussions that this change would be retroactive, but that is not my expectation. Too much re-work for existing proceedings, and on the heels of SAS, I just don’t see it.)  I expect that any petition filed on or after the effective date will be subject to the Phillips standard.

As I have pointed out previously, while I don’t expect this change will impact trials in a significant regard, it will impact filing strategies. That is, there will be an avalanche of petitions coming into the PTAB before the effective date. Continue Reading PTAB Rule Package Dropping BRI Clears Final Hurdle