Chief Judge Rader to Speak at Patent Law Institute on All-Star Panel!

Patent law heavyweights will convene for what looks to be two very special days in New York City at PLI’s 6th Annual Patent Law Institute on February 16-17th.

 Chief Judge Randall Rader of the Federal Circuit will participate in an all-star dialogue panel between the bench and bar along with United States District Judge William Young and nationally-recognized expert practitioners Donald Dunner, Seth Waxman and Dean John Whealan of the George Washington University Law School.

Robert Stoll, who recently retired as Commissioner for Patents at the USPTO, is slated to open the program with a PTO keynote address. Commissioner Stoll is expected to report the latest developments regarding the PTO’s on-going implementation of the America Invents Act and other critical PTO developments.

Co-Chairs Scott M. Alter (Faegre Baker Daniels LLP), Douglas R. Nemec (Skadden, Arps, Slate, Meagher & Flom LLP) and John M. White (Berenato & White; Director of Patent Professional Development, Practising Law Institute) will navigate attendees through 6 exciting plenary sessions that discuss the practice impacts of recent Supreme Court and Federal Circuit decisions, AIA changes, current critical patent issues from the corporate counsel perspective, views from the District Court bench, the never-ending PTO changes and for good measure, an hour of legal ethics credit! (more…)

Summary of USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012

In just a few weeks, new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences (BPAI) become effective. The new rules introduce helpful simplifications relative to existing practice and provide for enhanced procedural monitoring to reduce unnecessary appeals. I sat in on the recent PLI One Hour Briefing entitled,”USPTO’s New Rules of Practice for Ex-Parte Appeals: Change and Simplification for 2012″ to become more acquainted with the procedural changes and guidelines to come. The briefing was lead by Scott A. McKeown and Lee E. Barrett, members of Oblon Spivak L.L.P..

Here are some of the highlights:

  • The new rules provide changes as well as clarifications. Changes include simplified briefing requirements for appellants and examiners alike, jurisdiction over appeals for when it passes from examiner to the Board, new procedures for challenging undesignated new grounds of rejection, and all rejected claims will be assumed appealed. Clarifications focus on petitions and information disclosure statements during appeal.
  • An appeal is presumed to be taken from the rejection of all claims under rejection unless canceled by an amendment filed by the applicant and entered by the office.
  • The change of the Board getting jurisdiction over appeal formalizes the streamlined procedure for Appeal Brief review from 2010. This eliminated wasted time before the Board gets jurisdiction, and is more complete than the previous rule.
  • Clarifications made to Section 41.37 simplify the briefing experience for appellants. The clarifications set up how the content should be formatted. It is very important to be careful with one’s formatting of an appellate brief, as mistakes in formatting serve as the biggest reason for briefs to get rejected.
  • Examiners do not have to provide a statement of grounds of rejection on appeal since appellants are no longer required to do so.
  • A summary of claimed subject matter should be done for every claim that is argued separately; a short introduction to the invention is helpful.
  • Appellants can raise new arguments in the appeal brief. The burden is on the appellant to explain why the examiner erred. They then must simply point out the error and get on with the point.
  • Not every decision can be appealed. A new ground for rejection can be changing the statutory basis of your argument, new calculations in support of overlapping ranges, or new structure in support of structural obviousness.

CAFC Reverses USPTO Anti-Patentee Reissue Policy: In re Tanaka

At issue in the In re Tanaka case is whether the addition of narrower, dependent claims in patent reissue is an “error” that the reissue statute is supposed to address.  On April 15, 2011, the CAFC  ruled that this is in fact permissible “error” contemplated by the patent reissue statute.  Charles Gorenstein, Partner at Birch Stewart Kolasch & Birch, sent in this article discussing the In re Tanaka decision.

In a decision dated April 15, 2011, the United States Court of Appeals for the Federal Circuit reversed a decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences by which the USPTO attempted to limit the rights of patentees to file for reissue of patents.  In re Tanaka, Appeal No. 2010-1262, April 15, 2011.  Had it been permitted to stand, the underlying Board decision would have, additionally, cast a cloud over the validity and value of many already-issued patents

Tanaka filed an application for reissue of his patent.  Ultimately, the correction sought to be made was the addition of a single dependent claim, narrower in scope than the existing patent claims, while retaining all of the original patent claims (and making no changes to the specification or drawings).  The U.S. Patent and Trademark Office Board of Appeals and Interferences (the Board) ruled that this was not proper pursuant to the reissue statute, 35 U.S.C. §251.  The Board reasoned that if nothing was to be changed in the original patent claims, specification or drawings, the patent could not be deemed “wholly or partly inoperative or invalid” as set forth in §251.  While The Board acknowledged, at least implicitly, that the failure to include an additional narrower claim in the patent might be an error without deceptive intention, it was not an error of such a nature that could be corrected by reissue. (more…)

Live Blog: PLI’s Reissue & Reexamination Strategies & Tactics With Concurrent Litigation

PLI’s Reissue and Reexamination Strategies and Tactics with Concurrent Litigation kicked off this morning.  First up is Todd Baker of Oblon Spivak.  In his Reissue overview, Baker explains that common bases for filing a reissue application include: the original patent claims are too narrow or too broad, the disclosure contains inaccuracies, the applicant failed to assert or incorrectly asserted foreign priority, and/or the applicant failed to make reference to, or incorrectly made reference to, prior co-pending applications.  In his overview of Ex Parte Reexam, Baker explains ex parte reexams can be initiated by patent owner, third parties (may remain anonymous); or Director. He says requests must be based on prior art patents and printed publications; requests cannot be based on public use, sale priority of invention or derivation; and claims many not be broadened in any request.  He explains that reexamination of patent claims will result in targeted claims being cancelled; narrowed; or confirmed.  Baker went on to discuss pitfalls to avoid both in Reissue and Ex Parte Reexam.

Pitfalls to avoid in Reissue (oath):

  1. The error must be specific.  Insufficient for oath to merely state: “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.”
  2. Insufficient to merely reproduce the amended claims and assert that the error is evident from the amendment
  3. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
  4. Preparing oath not a ministerial act
  5. Adding a dependent claim to hedge against possible invalidity of original claims does not constitute an error correctible by reissue. Ex parte Tanaka
  6. If the basis of the error is claiming more than the patentee was entitled to, then an original patent claim must be narrowed to satisfy s 251. (more…)

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…)