Live from the 6th Annual Patent Law Institute – Inside the PTO: AIA Rule Changes

Live from the 6th Annual Patent Law Institute, I am blogging from the panel entitled, “PTO Doings I: Rules and Regs That Are/Are Not Changing for 2012″. The featured panelists include Institute co-Chair John M. White, Brian Hanlon, Robert J. Spar. This afternoon’s discussion continues the close look at the outcome of the PTO rules and policy-making apparatus.  Highlights from our faculty speakers:

Two basic triggers for 2012 USPTO activity include:

  1. Office self-initiated actions: The Office moved forward with a number of efforts to improve and streamline the examination/prosecution process, and
  2. The AIA, enacted on Sept. 16, 2011: Required the USPTO to take implementing actions, essentially in 3 timed phases, for items effective in:
  1. Phase 1: immediately, or within 60 days
  2. Phase 2: in one year, or on Sept.16, 2012, and
  3. Phase 3: in 18 months, or on March 16, 2013.


Patent Law Institute Live Blog: PTO Doings – Rules & Regs That Are/Are Not Changing for 2012

Welcome back to the Patent Law Institute live blog! Our next panel is entitled, “PTO Doings: Rules & Regs That Are/Are Not Changing for 2012”, and focuses on what to know and what to expect for 2012, as well as the importance of the changes in the rules for patent practitioners. This panel includes John M. White as our moderator, and features Brian Hanlon and Robert J. Spar as panelists. Their views differ as their positions as patent practitioner and PTO official would reasonably generate. Here are some of the highlights:  (more…)

The Best of the Post-Grant USPTO Proceedings Seminar

In case you missed it, PLI hosted a seminar entitled Post-Grant USPTO Proceedings 2012- The New Patent Litigation and the topics discussed by the day’s panelists proved to serve as both a refresher on the language of the new law as well as an enlightening course on what the developments in practice have and will become. If there was a trend throughout the day, it would be that patent professionals need to become familiarized with the changes in patent law in order to streamline their time and resources into more efficient patent applications and to facilitate  the litigation process. Requirements that had become common place in patent law are no longer on the books, but a patent practitioner would not know this unless they studied the America Invents Act provision by provision – or unless they attended PLI’s seminar.

To show you the range of topics that were discussed, here are some of the highlights from each panel of the seminar. The course handbook is still available, and the video recording of the entire seminar will be made available soon for On Demand viewing on the PLI website. (more…)

Post-Grant USPTO Proceedings Seminar Live Blog: Patent Reexamination Practice and Evolution – USPTO Perspective

Welcome back to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Reexamination Practice and Evolution – USPTO Perspective. Our featured panelist is Brian Hanlon, Director of the Office of Patent Legal Administration, United States Patent and Trademark Office. Below are some the highlights:

Revision of Standard for Granting an Inter Partes Reexamination Request: the final rule implements the part of Section 6 of the AIA directed to inter partes reexamination. Inter partes reexamination will be replaced by inter partes review. The reasonable likelihood standard is different from the substantial new question standard. It doesn’t require that the requester establish a prima facie case, and the reasonable likelihood standard doesn’t apply to ex parte reexaminations either.

Miscellaneous Post Patent Provisions Rule Package: The comment period closes March 5, 2012. The office has an obligation to make sure the reexamination isn’t being filed by someone who shouldn’t be filing it. This notice of propose rulemaking implements the estoppel provisions of sections 6(a) and 6(d), which bar a 3rd party requester from filing or maintaining an ex parte reexamination after a final decision has issued in a post grant or inter partes review on the same patent that was requested by the same 3rd party.

Supplemental Examination and Revisions of Reexamination Fees: Only a patent owner may request supplemental examination of a patent to “consider, reconsider, or correct information” believed to be relevant to the patent. There is no 3rd party participation permitted at all. Supplemental exam has 2 parts – the supplemental exam itself and the supplemental reexamination portion. “Information” that forms the basis of the request is not limited to patents and printed publications. Within 3 months from the filing date of the request, the Office must decide whether any of the items of information filed with the request raises a substantial new question of patentability.

We’ll be back after the break with more from the Post-Grant USPTO Proceedings Seminar!