Patent Law Practice Center

Tech Giants Weigh In On USPTO Post Grant Rule Making Effort

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow

As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules, which include Inter Partes Review & Post Grant, must be submitted by November 15th.

Last week, Cisco, Google, Verizon and Intuit submitted joint comments (here) directed solely to the implementation of post grant proceedings, namely, Inter Partes Review (IPR) and Post Grant Review (PGR). Not surprisingly, these tech giants (i.e., targets of serial patent infringement suits) are especially supportive of post grant mechanisms as an alternative to traditional litigation. The Group’s comments encourage the Office to adopt liberal standards for initiation of IPR and PGR, limit the potential estoppel affect of a concluded proceeding, and provide procedural flexibility for petitioners. (more…)

Will Any Patent Application Be Better Off Under The America Invents Act?

The following analysis of the changes to 35 USC § 102 under the America Invents Act comes from Courtenay Brinckerhoff ,writer of PharmaPatents Blog and Partner at Foley & Lardner.  Brinckerhoff questions whether any patent application will be better off under the new law?

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject to a broader definition of prior art and will lose the ability to swear behind certain prior art by proving an earlier date of invention. Moreover, patents granted from such applications will be subject to challenge under the new post-grant review provisions.In counseling clients on how to prepare for the impact of patent reform, I’ve been trying to identify situations where an application might be better off under the new law. So far, only one scenario comes to mind–an application threatened by an inventor-based disclosure that was made before a foreign priority date. (more…)

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…)

Point – Counterpoint: The Debate Over Prior User Rights

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

Since prior user rights first came up as an issue in the patent reform debate I have been opposed to the idea.  Whether I like prior user rights or not, the reality is that prior user rights are now a part of U.S. patent law.  Nevertheless, the debate goes on about whether prior user rights are a good idea.  In fact, the United States Patent and Trademark Office is tasked through the America Invents Act with conducting a Prior User Rights Study.  To facilitate this study a public hearing on prior user rights was held on October 25 in the Madison Auditorium at its Alexandria, Virginia campus of the USPTO.

With this in mind I thought I would once again revisit prior user rights. One of the arguments I have heard recently supporting prior user rights is that a corporation that is going to invest billions of dollars into a facility should know that their investment is safe and that the plant can’t be shut down by a later filed patent application.  This argument is so specious as to be nearly laughable if you ask me.  This strikes me as just more of corporate America wanting the government to save them from themselves.

Click here for IPWatchdog’s full article.

Post Grant Dead Zone Coming Soon

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

PGR Window Anomaly to Encourage Early Litigation?

Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA).  Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.

As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).

When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR,  becomes available for all patents next September 16, 2012. (more…)