USPTO Fee Increase Effective September 26TH

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the new 15% fee surcharge for patent application filings that will take effect on September 26th.

America Invents Act Raises USPTO Fees September 26th

Last Friday, President Obama signed the Leahy-Smith America Invents Act(AIA) into law. As discussed previously, one of the major changes that became effective immediately is the new standard for initiating inter partes patent reexamination. As the rush to beat the enactment deadline is now over, what other changes are on the immediate horizon at the USPTO?

Fee Increases.

For those with patent application filings of any kind due in the next few weeks, keep in mind that new 15% fee surcharge will take effect on September 26th (10th day after enactment). Note that the fees for filing a request for ex parte patent reexamination and inter partes patent reexamination remain unchanged. A schedule of the increased fees is found (here).

The USPTO has also posted a FAQ on the various provisions of the AIA. (here)



VW Challenge to Flexible Car Warning Light Among Reexamination Requests Filed Week of 9/6/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

In January, the company Effectively Illuminated Pathways, LLC. sued Aston Martin of North AmericaBentley and Volkswagen of America (Bentley’s parent company) for infringement of U.S. Patent No. 6,520,669 for a flexibly mounted warning light for cars, presumably rather up-scale cars.  VW has now replied to that law suit by requesting reexamination of the ‘669 patent (see inter partes Request No. (1)), the request asserting 92 substantial new questions of patentability and weighing in at 1630 pages counting claim charts.

Cisco requested reexamination of a VirnetX patent (see inter partesRequest No. (10)) in a dispute described in greater detail in our second item posted today.  And SanDisk sought reexamination of a flash memory Netac patent (see inter partes Request No. (11)).

Also of interest last week was the fact that there were 16 inter partes reexamination requests and only 6 ex parte requests.  Normally, the ex parte cases exceed the inter partes.  Perhaps requesters are coming to the conclusion that full participation in the reexamination outweighs the risk of statutory estoppel attaching tointer partes requests. (more…)

Attack On VTRAX Patent Among Reexamination Requests Filed Week Of 8/22/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

The sole business of vTRAX appears to be the enforcement of a single patent, U.S. Patent No. 6,865,268 covering systems for call-tracking in virtual call-centers.  Pending in the Southern District of Florida are two actions in which vTRAX has accused SiemensCSXAvaya and a number of others of infringing the ‘268 patent.  Now, a reexamination has been requested of the ‘268 patent (see ex parte Request No. (15)).  We strongly expect that the defendants will soon move to stay both cases, particularly in view of the Southern District of Florida’s record of granting such motions.

(1)         95/001,721 (electronically filed) U.S. Patent No. 7,923,390 entitled Electrical Shielding Material Composed of Metallized Stainless Steel Monofilament Yarn and owned by Micrometal Technologies.  Filed August 22, 2011, by Syscom Advanced Materials.

(2)         95/001,722 (electronically filed) – U.S. Patent No. 6,978,954 entitled DETECTOR FOR A SHREDDER and owned byFellowes.  Filed August 23, 2011, by ACCO Brands.  The ‘954 patent is currently the subject of two litigations styled Fellowes v. ACCO Brands (Case No. 1:10-cv-7587 (N.D. Ill.)) and Royal Appliance Mfg. v. Fellowes (Case No. 1:11-cv-1276 (N.D. Ohio)). (more…)

What’s Wrong with Reexamination and How to Make it Better

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why reexamination should absolutely be considered when there is a strong case of invalidity that is built upon prior patents or publications and what the Patent Office is doing now with respect to reexamination.

Reexamination is a low-cost but seldom used alternative to litigation for determining the patentability of the claims in an issued patent. Despite what I write below, I am a fan of reexamination and I think that the fears associated with the process are largely unfounded.  Reexamination could and should be used more often than it is, and if you are a defendant in an ongoing patent infringement litigation and you are not simultaneously involved in bringing a reexamination you need to ask yourself why not!

Yes, the reexamination process is slow.  Yes, the reexamination process doesn’t work as well as it could or should.  Yes, reexamination it adds extra cost.  But the statistics don’t lie.  In the right case reexamination is extremely effective.  Unfortunately, some patent litigators counsel clients to steer clear of reexamination.  This may be good advice, or it might just be because the litigator isn’t familiar with reexamination, or in some cases because you recommend what you know and do.  The old saying — if you are a hammer all the world looks like a nail — comes to mind.  So despite what follows relating to how Congress could and should make reexamination better, if you are on the wrong side of a patent infringement litigation you really should get some impartial advice about the pros and cons of pursuing a reexamination strategy before writing it off as a bad idea.

Click here to read the full IPWatchdog publication.

TiVo Attack On Four Verizon Patents Among Reexamination Requests Filed Week Of 5/30/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

On Thursday, TiVo requested reexamination of three Verizon cable box patents, and on Friday, of a fourth Verizon patent (see ex parteRequest Nos. (9) through (12)).  These requests are only the latest development in an on-going patent war between the two companies that includes fronts at the ITC and in two District Courts.

Reexamination was requested for SynQor’s U.S. Patent No. 7,272,021 for power converters (see inter partes Request No. (1)).  In January, Judge Ward enjoined Artesyn/Astec and a series of other companies from infringing four SynQor patents, among them the ‘021 patent.  It is not yet clear from the PTO records who filed the request.

And Abbott Diabetes Care requested reexamination of three DexComanalyte-sensor devices in the long-term patent dispute between the companies (see ex parte Request Nos. (4), (5) & (6)). (more…)