Patent Law Practice Center

USPTO Seeks Comment on Post Grant Trial Proceedings

The America Invents Act (AIA) provided for a variety of new administrative trial proceedings, including: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012.

During the rulemaking to implement the administrative trial provisions of the AIA, the USPTO held roundtable discussions in a number of cities across the country. The USPTO at that time committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some period and had gained experience with the new administrative trial proceedings. With nearly three years of experience with these new proceedings, the time has now come for the USPTO to revisit the rules.

The USPTO began the process of revisiting the AIA administrative trial proceeding rules and trial practice guide by engaging in a nationwide listening tour. The USPTO conducted a series of eight roundtables in April and May of 2014, in Alexandria, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas, and Denver, to share information concerning the AIA administrative trial proceedings and obtain public feedback on these proceedings.

The USPTO is now ready to take the next steps and is seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. Written comments must be received on or before September 16, 2014, and should be sent via e-mail to TrialsRFC2014@ uspto.gov. Electronic comments submitted in plain text are preferred.

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USPTO Proposes Changes to Patent Term Adjustment in Response to Novartis

Recently, the United States Patent and Trademark Office proposed changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee.

Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of § 154(b)(1)(B).  As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.

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Satellite Patent Office Update: Denver Opens June 30, 2014

The America Invents Act furthered the era of the satellite Patent Office. The law signed by President Obama on September 16, 2011, laid the foundation for the establishment of at least three satellite offices in addition to the one already planned for Detroit, Michigan. The cities selected for those three satellite offices were Denver, San Jose and Dallas.

The latest announcement from the United States Patent and Trademark Office (USPTO) on satellite offices came recently with the announcement that its permanent satellite office in Denver, Colorado, would officially open on June 30, 2014. The USPTO Denver satellite office will be located in the Byron G. Rogers Federal Building (pictured left) in Denver’s central business district.

The Byron G. Rogers Federal Building is home to multiple federal agencies and offers convenient access to downtown and suburban sites, including through the metro region’s array of public transportation options. The office will eventually house patent examiners, Patent Trial and Appeal Board (PTAB) judges, and outreach officials in a 45,000-square-foot space. There are currently nine PTAB judges working in a temporary location opened in Lakewood, Colorado, in January 2013. In addition to those judges, all of whom will relocate to the new office, the USPTO is currently seeking to hire additional judges and patent examiners for the permanent office, as well as a Deputy Regional Director for Outreach. The USPTO says that  100 examiners, 20 administrative patent judges, and their support staff will eventually be housed at the Denver location. All vacancy announcements are posted on www.usajobs.gov.

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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 6^th Annual Patent Law Institute on February 16-17^th.

 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…)

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.