Patent Law Practice Center

Chilling Effect of the USPTO Patent Reexamination Pilot Program?

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Participation in USPTO pilot program held against Patentee

In August of this year, the USPTO introduced a pilot program aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date. Once a Patentee agrees to waive the patent owner response period (since such statements are rarely filed), the USPTO is able to issue an office action together with the grant of an ex parte reexamination (just like inter partes reexamination).

Not surprisingly, many Patentess opt to maintain their right to file an Owner Statement in ex parte patent reexamination. Read the rest of this entry »

The Clones War: Chapter Two – Myriad Files Their Brief on Appeal

The following guest post was written by Birch, Stewart, Kolasch & Birch Partner Mark J. Nuell, Ph.D.

Myriad Genetics has filed their brief in their appeal of the decision in Assoc. of Med. Pathology et al. v. Myriad Genetics et al. This case is one having effect on patent-eligibility of claims directed to purified natural products and to sequence-based diagnostic methods.  Myriad’s brief is a paper of advocacy, and it is persuasive of an asserted lack of jurisdiction.  Thus, the Federal Circuit might not even reach the questions of patentability of isolated DNA and of nucleic acid (sequence)-based diagnostic methods.  But, should the Federal Circuit choose to consider those questions, it appears that claims to “isolated DNA” meet the standard for patent-eligibility.  Despite their arguments to the contrary, some of Myriad’s diagnostic method claims are likely to fail to meet the standard, as falling within the scope of abstract ideas or laws of nature.  The other method claims that are challenged, although they can be interpreted to include a “transformative” step and so include a strong clue in favor of patent-eligibility under Bilski v. Kappos, might be deemed ineligible for patent protection because the “transformative” steps represent mere data-gathering steps. Read the rest of this entry »

Reexamination Requests For the Weeks of October 18th and 25th

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor which includes the requests for the weeks of October 18th and October 25th….

NVIDIA Attack on Rambus Patent Among Requests Filed the Week of October 18^th

In their litigation/reexamination wars, Rambus and NVIDIA often look like two boxers trying to slug each other into submission.  That was true last Wednesday.  The same day that the PTO issued its Notice of Intent to issue a reexamination certificate, confirming the claims of Rambus’ U.S. Patent No. 6,715,020, NVIDIA requested another reexamination (Inter Partes Request No. 2 below).  The ‘020 patent is just one of 17 patents that Rambus has accused NVIDIA of infringing in their case pending in the Central District of California.  Five of those Rambus patents in litigation were the subject of a recently settled ITC investigation.  The ‘020 patent is related to Rambus’ U.S. Patent No. 7,209,997, which is also part of the California litigation and the subject of two pending reexaminations.  NVIDIA is now appealing the reexamination examiner’s decision to confirm the patentability of the ‘997 claims (95/000,471). Read the rest of this entry »

Amici Argue For Supreme Court Review Of The Indefiniteness Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor)

Last Thursday, Mark Lemley and I filed an amicus brief urging the Court to take certiorari in Applera v Enzo Biochem for the purpose of reviewing the test for when a claim is indefinite under 35 USC 112, Para. 2.   The brief (which is available here) was signed by an array of innovative companies.

The Patent Act requires claims to be “distinct” and “particular” in terms of calling out the subject matter of the claimed invention.  The purpose of this requirement is – not surprisingly – to put the public on notice of what the claims do and do not cover.   See Hearing Components, Inc v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) (“the purpose of the definiteness requirement is to ensure that ‘the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee’s right to exclude.”).

In other words, the Patent Act requires claims to be definite precisely so that people reading the patent know what rights have been claimed by the patent owner and what rights are still available.  Permutit Co. v. Graver Co., 284 U.S. 52, 60 (1931) (“[t]he statute requires the patentee … to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.” ) Read the rest of this entry »

Taking Advantage of the First Action Interview Pilot Program

This post comes from Robert Hulse (Partner at Fenwick & West and Practice Center Contributor)

The U.S. Patent and Trademark Office (USPTO) introduced its “First Action Interview Pilot Program” about two years ago. This program enables patent applicants to conduct an interview with the assigned patent examiner, by phone or in person, before the examiner issues a first office action. In the first office action, the patent examiner either allows the application or identifies grounds to reject the application based on the results of the examiner’s search of the prior art and review of the patent application.

Historically, patent applicants could conduct an interview with the patent examiner after the first office action was issued, but not before this time. With this program, the USPTO has attempted to bring the benefits of the interview earlier in the process by focusing the examiner on relevant aspects of the invention at the beginning of examination and helping the applicant understand the examiner’s interpretation of the patent claims that define the invention. Read the rest of this entry »