Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patently-O: Deference to BPAI: Federal Circuit Affirms Ruling that Monsanto’s Late-Filed Claims Win Priority over Pioneer’s Issued Patent – This post discusses the background and interference claim in Pioneer Hi-Bred International, Inc. (“Pioneer”) v. Monsanto Technology LLC, and how appellate panel gave clear deference to the USPTO Board of Patent Appeals and Interferences – repeatedly focusing on whether the board committed reversible error rather than jumping to the underlying question of whether the Board made the correct decision. (more…)

Summary of USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012

In just a few weeks, new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences (BPAI) become effective. The new rules introduce helpful simplifications relative to existing practice and provide for enhanced procedural monitoring to reduce unnecessary appeals. I sat in on the recent PLI One Hour Briefing entitled,”USPTO’s New Rules of Practice for Ex-Parte Appeals: Change and Simplification for 2012″ to become more acquainted with the procedural changes and guidelines to come. The briefing was lead by Scott A. McKeown and Lee E. Barrett, members of Oblon Spivak L.L.P..

Here are some of the highlights:

  • The new rules provide changes as well as clarifications. Changes include simplified briefing requirements for appellants and examiners alike, jurisdiction over appeals for when it passes from examiner to the Board, new procedures for challenging undesignated new grounds of rejection, and all rejected claims will be assumed appealed. Clarifications focus on petitions and information disclosure statements during appeal.
  • An appeal is presumed to be taken from the rejection of all claims under rejection unless canceled by an amendment filed by the applicant and entered by the office.
  • The change of the Board getting jurisdiction over appeal formalizes the streamlined procedure for Appeal Brief review from 2010. This eliminated wasted time before the Board gets jurisdiction, and is more complete than the previous rule.
  • Clarifications made to Section 41.37 simplify the briefing experience for appellants. The clarifications set up how the content should be formatted. It is very important to be careful with one’s formatting of an appellate brief, as mistakes in formatting serve as the biggest reason for briefs to get rejected.
  • Examiners do not have to provide a statement of grounds of rejection on appeal since appellants are no longer required to do so.
  • A summary of claimed subject matter should be done for every claim that is argued separately; a short introduction to the invention is helpful.
  • Appellants can raise new arguments in the appeal brief. The burden is on the appellant to explain why the examiner erred. They then must simply point out the error and get on with the point.
  • Not every decision can be appealed. A new ground for rejection can be changing the statutory basis of your argument, new calculations in support of overlapping ranges, or new structure in support of structural obviousness.

Top 5 Patent Law Blog Posts of the Week

Today we are debuting a weekly installment highlighting the best of the patent blogosphere from the past week. Highlights include USPTO updates and announcements, as well as the expiration of the patent for the world’s best selling prescription drug – ever.

1. IP Watchdog: USPTO Announces More PPH Agreements, China and Iceland – Several announcements came out of the USPTO this week regarding launches for Patent Prosecution Highway (PPH) pilot programs with China’s State Intellectual Property Office, the Icelandic Patent Office, as well as the start of the Paris Route PPH program. This post details how the PPH programs facilitate work-sharing benefits worldwide.

2. Patents Post-Grant: USPTO to Implement New Ex Parte Appeal Rules for 2012 – At the beginning of the week, the USPTO released the final rule package regarding the Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. This post explains the application of the new rules and how they will impact ex parte proceedings and ex parte reexamination. *PLI will be hosting a One Hour Briefing on the USPTO’s new rules on Jan. 9, 2012. Stay tuned for more information. Also check out information regarding PLI’s  Post-Grant USPTO Proceedings 2012 – The New Patent Litigation Seminar on Feb. 3, 2012.

3. Reexamination Alert: Judge Randa Refuses to Lift Reexamination Stay Despite Patentee’s Success (So Far) with Examiner – This post from Westerman, Hattori, Daniels & Adrian, LLP shares an interesting twist to the use of the 35 U.S.C. Section 316(a) standard for “complete” reexamination. In Generac Power Systems v. Kohler, the twist came when an accused infringer invoked Section 316(a) to maintain a reexamination stay rather than the more common practice of the patentee using the section.

4. TIMELipitor Already Cheaper After Patent Expiration – Pfizer’s patent for their best selling prescription drug, Lipitor, expired this week. According to this article, Pfizer’s sales from Lipitor averaged at about $11 billion dollars per year, which ends up being roughly one-sixth of Pfizer’s total sales. Because of the patent’s expiration, Pfizer is now doing what it can in order to preserve whatever claim it has to Lipitor, including selling the drug at a steep discount (to counter-act the sale of the generic drug at an estimated 80% discount), as well as paying pharmacies to spread the news to its customers about the discount. How Pfizer reacts to losing the patent for the best selling prescription drug of all time will have an impact on how the rest of the pharmaceutical market handles patent expiration.

5. Patently-OHoliday Gift List for Patent Attorneys and the Like – Although this blog post is from last week, I thought it would be good to share right before the weekend, considering the holiday season is upon us and all types of holiday parties (whether they be office or social) are popping up each week. Patent attorneys deserve cool presents too, and this list is full of great and very different gift ideas. Enjoy!

Inter Partes Reexamination Mechanics And Results

Our friends at Birch, Stewart, Kolasch and Birch sent in this article discussing inter partes reexamination, a fairly new proceeding in the PTO.  This post is a comprehensive guide to practice before the PTO in inter partes reexamination.  The article covers topics such as what patents qualify for inter  partes reexamination, who can request the proceeding and how to demonstrate a substantial new questions of patentability.  Here is an excerpt and link to the full article.

 The Creation of the Inter Partes Reexamination Procedure and Goals Thereof   

Reexamination is a procedure established by statute which permits the USPTO to reconsider the patentability of the claims in the issued patent in view of prior art which was not considered in the original prosecution of the application. [1 ]The reexamination statute was amended on November 29, 1999 by Public Law 106-113.  Public Law 106-113 authorized the extension of reexamination proceedings via an optional inter partesreexaminaiton procedure in addition to the existing ex parte reexamination procedure.  The final rules to implement the statutory inter partes reexamination option was published in the Federal Register on December 7, 2000 [2] and in the Official Gazette on January 2, 2001. [3]  (more…)

Prosecuting Patent Applications: Establishing Unexpected Results

Today’s guest post was written by Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP.

The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution before the U.S. Patent and Trademark Office in order to overcome a rejection based on obviousness under 35 U.S.C. §103(a).

I. General Comments

“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). (more…)