Patent Law Practice Center

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…)

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.

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…)

New BPAI Appeal Rules Proposed

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

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations. (more…)