The Stronger Patent Act has failed to gain traction for several years now. The Bill is deemed to one-sided, proposing legislative changes that would effectively kill AIA trial proceedings. Strangely, a new bill was introduced last week that goes even further.
The so-called Restoring America’s Leadership in Innovation Act
As explained earlier this week in a study by my partner Filko Prugo, Orange & Purple Book patents fare no worse at the PTAB than in the courts. That said, some believe that the ability to challenge such patents in a faster, cheaper expert forum upsets the balance of power in the existing drug innovator landscape.
Today, Senator Orrin Hatch (R-UT), the Chairman of the Senate Republican High-Tech Task Force and co-author of the Hatch-Waxman Act, filed an amendment in the Senate Judiciary Committee to in his words “restore the careful balance the Hatch-Waxman Act struck to incentivize generic drug development.” Senator Hatch’s amendment, the Hatch-Waxman Integrity Act of 2018, is argued to prevent alternative procedures for challenging drug patents from tilting the playing field contrary to Hatch-Waxman’s design. It is also argued to ensure that brand-name and generic manufacturers alike have the proper incentives to develop life-saving medications.
Continue Reading Senate Moves to Exclude Orange & Purple Book Patents from PTAB
Today from noon to 1 PM (EST), Chief Judge David Ruschke will provide additional information about the impact of SAS on AIA trial proceedings. He will also share new information about motion to amend practice, and discuss the recently published Notice of Proposed Rule-making on the claim construction standard
At the time SAS Institute first raised its challenge to the partial institution practices of the Patent Trial & Appeal Board (PTAB), I explained that should this argument ultimately prevail that it would be bad news for Patent Owners. Patent Owners facing a motion to stay pending PTAB review frequently leveraged partial institutions to defeat the stay. Such motions were denied because one of the factors considered in the motion analysis is the potential for “simplification of issues for trial.” And where a trial would eventually be conducted regardless of PTAB outcome — the case when there was a partial institution — this factor weighed strongly in favor of Patent Owners continuing the district court litigation .
Post-SAS, this argument is now gone. The impact of SAS on common stay scenarios is already being felt by Patent Owners.
Continue Reading New SAS Reality Impacts Motion to Stay Analysis
This Thursday the IPO Chat Channel will feature the Chief Judge of the Patent Trial & Appeal Board (PTAB) on the program entitled: A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard. The program will
The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead to narrower claim constructions, and thus, more patents being upheld by the agency. But, as I pointed out previously, in practice, BRI is rarely different from a Phillips construction. In fact, utilizing the same standard at the PTAB as in the courts might only make matters worse for Patent Owners from a monetization perspective.
Impact of the proposed claim construction change aside, the speed at which the Director has acted speaks to his keen interest in improving the PTAB playing field for Patent Owners. With the Director expected to issue further proposals to aid Patent Owners, below are some likely candidates.
Continue Reading How Might the Director Improve the PTAB for Patent Owners?
PLI’s PTAB Trials 2018 will be held this Tuesday, May 15th in San Francisco. If you can’t get there in person, strongly consider the webinar of this full-day event. PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB
Even before last week’s Supreme Court opinions in Oil States and SAS, the month of May was already jam packed with PTAB-related CLE.
This week, there are a number of shorter, focused webinars, as well as the MIP PTAB forum in New York. Mid-May brings PLI’s flagship PTAB Trials 2018.
Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that:
[F]or pending trials in which a panel has
instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised
This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday May 2nd, 2018 @ 2PM. The April webinar is entitled: Bio/Pharma Deals & Dispute Resolution in the PTAB Era.
Register (here)
The emergence of the Patent Trial