Patent Law Practice Center

USPTO’s New Rules and You

The Patent Law Practice Center wants to be sure that you are ready for the USPTO’s new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences that become effective on January 23, 2012. PLI’s “USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012″ is a one hour briefing on January 9, 2012 that will focus on the new petition practice to toll Reply Briefing deadlines, simplification of brief formatting and required appendices, the new default practices and assumptions, guidelines for identifying “new rejections”, any new jurisdictional timing, and the elimination of examiner responsibilities.

The America Invents Act (AIA) introduces entirely new options, e.g., Post-Grant Review, Inter Partes Review (formerly inter partes patent reexamination) Derivation, a special post-grant review for “business method” patents and Supplemental Examination. Going forward, it is anticipated that the USPTO will become an even more prominent battleground for patent disputes. PLI’s “Post-Grant USPTO Proceedings 2012 – The New Patent Litigation” (February 3, 2012) is taught by a faculty of judges, preeminent lawyers, and industry leaders who have earned national reputations in patent litigation and in post-grant proceedings at the USPTO. The program focuses on the role of post-grant USPTO proceedings as component of a litigation strategy, including pre-trial and post-trial options.  The relative advantages and disadvantages of the various proceedings are explained from both the perspective of the Patentee and Third Party.

Maintaining Rights to an Application under the First to Invent Laws – a.k.a. Avoiding the AIA § 3(n)(1) Trap

Written by Leonard R. Svensson, Partner at Birch, Stewart, Kolasch & Birch, LLP.

Patent practitioners know by now that applications filed before March 16, 2013 will be evaluated under the current “first to invent” laws. Commentators are debating whether this may result in a “bump” of applications filed just before the deadline. But if you rush to file by the deadline, care must still be taken to ensure that the resulting application(s) maintain the right to be evaluated under the current “first to invent” regime.

Suppose one files a provisional application on March 15, 2013 and then one year later converts that case to a regular utility application. If that application is directed to an invention in the life science field, experience suggests that there is a very high chance that at least the broadest claim will be rejected for lack of written description or enablement under 35 USC § 112. If the applicant thereafter amends and narrows such a rejected claim to overcome those rejections, what is the consequence? The unfortunate consequence is that the applicant just lost, forever, the right to have any claims in that application or any divisionals/continuations evaluated under the current “first to invent” regime. This is the consequence of the § 3(n)(1) trap, due to the language in the statute that defines the effective date of an application with the language “shall apply to any application for patent that contains or contained at any time such a claim” having an effective date after the effective date of the “first to file” provisions. Having fallen into the trap, the applicant will have wasted all the work expended to file a provisional application before the March 16, 2011 deadline. (more…)

USPTO Fee Increase Effective September 26TH

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the new 15% fee surcharge for patent application filings that will take effect on September 26th.

America Invents Act Raises USPTO Fees September 26th

Last Friday, President Obama signed the Leahy-Smith America Invents Act(AIA) into law. As discussed previously, one of the major changes that became effective immediately is the new standard for initiating inter partes patent reexamination. As the rush to beat the enactment deadline is now over, what other changes are on the immediate horizon at the USPTO?

Fee Increases.

For those with patent application filings of any kind due in the next few weeks, keep in mind that new 15% fee surcharge will take effect on September 26th (10th day after enactment). Note that the fees for filing a request for ex parte patent reexamination and inter partes patent reexamination remain unchanged. A schedule of the increased fees is found (here).

The USPTO has also posted a FAQ on the various provisions of the AIA. (here)