Inter Partes Reexam and the Post Grant Dead Zone

On July 24, 2012, the Patents Post Grant blog published an interesting article titled Higher Patent Reexamination Threshold Suffers from SNQ Hangover.  In the article, Scott McKeown, a partner with Oblon, Spivak in the firm’s Post Grant Patent Practice Group, wrote:


A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners) [sic]. Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.

Based on this sampling by McKeown, it seems that the new standard is indeed having an effect.  McKeown goes on to explain that if you file an inter partes reexamination request and it is denied, you can always learn from what the examiner stated and resubmit, but that only applies as long as there is time.  Inter partes reexamination will go the way of the dinosaurs on September 16, 2012.  McKeown writes: “Those IPX filers that are in parallel litigation, and have their IPX requests denied closer to the September deadline, may soon be forced into some very unfavorable positions.”


Patent Practitioners: You Are Free to Move About the Country

On November 29, 2011, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register requesting comments on where they should locate the additional satellite Patent Offices authorized by the America Invents Act (AIA).

Earlier today, Acting Secretary of Commerce Rebecca Blank and USPTO Director David Kappos announced three new locations for satellite Patent Offices, which will join the Detroit Patent Office scheduled to open just days from now, on July 13, 2012. The winners in the satellite Patent Office sweepstakes were San Jose, California; Denver, Colorado; and Dallas, Texas.

“By expanding our operation outside of the Washington metropolitan area for the first time in our agency’s 200-plus year history, we are taking unprecedented steps to recruit a diverse range of talented technical experts, creating new opportunities across the American workforce,” said David Kappos, Director of the USPTO. “These efforts, in conjunction with our ongoing implementation of the America Invents Act, are improving the effectiveness of our IP system, and breathing new life into the innovation ecosystem.”

The locations selected by the USPTO and Department of Commerce are hardly shocking, and certainly should help the Patent Office recruit high-caliber patent examiners and others who might not be willing to relocate to the Northern Virginia area, or commute there periodically as they work primarily from home.

All three of these locations were on my Top 10 List of possible locations published in December 2011 — sort of.

It was easy to predict that there would be a location in Northern California in or around Silicon Valley, which was my #1 of 10. Describing this no-brainer selection, the USPTO explained:

Silicon Valley provides the USPTO with a pacific time zone hub in the heart of California’s most vibrant innovation center. Silicon Valley, and the areas that surround it, contain many of the USPTO’s top filers as well as legions of start-up and small tech companies that depend on the USPTO. Further, Silicon Valley’s great quality of life and abundant population of engineering talent will provide fertile recruiting grounds for the Agency.

Similarly, Denver was easy to guess because back when the Detroit Satellite Office was announced, there were very disappointed people in Denver who had either been lead to believe they would get the location, or convinced themselves of that fact. I had Denver at #6 of 10. In explaining the selection of Denver, the USPTO explained:

The Denver area provides the USPTO with a mountain time zone hub from which to operate. Empirical evidence demonstrates that Denver is a sought-after place to live and work with relatively low cost-of-living—a critical combination for the recruitment and retention of top talent. Further, the economic impact of a USPTO satellite office in the Denver region is projected to be disproportionate relative to most other cities. Denver also boasts an above average population of potential Veteran employees.

The one that I sort of got right was Dallas. I had “Houston or somewhere in Texas” as #9 of 10. Given the importance of energy technologies for our nation’s future, a location in the heart of American energy country makes perfect sense. With a low tax burden, growing economy and numerous world-class Universities, Texas seemed to be a sure-win, and I would have put it higher on the list if there had been a true, clear-cut city as a front-runner.

The USPTO said this of their Dallas selection:

The Dallas area provides the USPTO with a southern, central time zone hub from which to operate. The region is exceedingly rich in engineering talent, patent applicants, and patent grants. Dallas boasts an above average population of potential Veteran employees.

The Patent Office could easily also have made a case for Houston, Dallas, San Antonio or Austin, but placing the satellite office more inland from the threat of adverse weather seems wise, as does putting it near a major airport.

So now the United States Patent and Trademark Office is going to be a truly National Patent Office. The headquarters will remain in Alexandria, Virginia (of course) and there will be another location in the Eastern Time Zone, but substantially north, in Detroit. There will now be Patent Office satellites in each time zone in the lower 48 — Central (Dallas), Mountain (Denver) and Pacific (San Jose).

I wouldn’t hold my breath for an Alaskan Satellite location, but members of various USPTO oversight committees could perhaps, down the road, be persuaded that a satellite location in Hawaii would make sense. While it would make for a very nice junket, it would also make a USPTO location more convenient to Asia, which is certainly a big USPTO constituency given the amount of filings from overseas. But that is almost certainly just wishful thinking on my part, the same way it was when I added Orange County, California to my top 10 list. How great would it have been for a satellite office in Laguna Beach, Newport Beach or Huntington Beach? Even Irvine or Costa Mesa! Oh well. I suppose that is what vacations are for.

Patent attorneys, patent agents and would-be patent examiners — in the words of Southwest Airlines, “you are now free to move about the country.” See Registration No. 2927614.

Courtenay Brinckerhoff: What Happens When Interfering Applications Straddle The First-To-File Effective Date?

The following article comes from Courtenay C. Brinckerhoff, Partner at Foley & Lardner and writer of PharmaPatents Blog

It has been a while since I’ve taken an in-depth look at the first-to-file provisions of the America Invents Act. This interesting fact pattern comes from Andrea Levesque, IP Counsel at ARC Energy, and relates to the interference provisions that survive the general March 16, 2013 effective date of the first-to-file provisions.

The March 16, 2013 Effective Date

As I wrote previously, one of the more complex aspects of the America Invents Act relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102. As a general rule, applications with any claim that has an effective filing date on or after March 16, 2013 will be subject to the new version of § 102. On the other hand, applications with any claim that has an earlier effective filing date still will be subject to the current versions of 35 USC §§ 102(g), 135 and 291: (more…)