Patent Law Practice Center

USPTO announces Post-Prosecution Pilot Program

Earlier this month, the United States Patent and Trademark Office published a Notice in the Federal Register announcing a new pilot program for applications that have received a final rejection. The Post-Prosecution Pilot Program will run from July 11, 2016, through January 12, 2017, or until the Patent Office has accepted a total of 1,600 compliant requests, whichever occurs first.

According to the Patent Office, this Post-Prosecution Pilot Program responds to stakeholder input gathered during public forums held in support of the Enhanced Patent Quality Initiative. The goal is to provide another opportunity for applicants and examiners to attempt to resolve disputes without requiring an appeal or the filing of a Request for Continued Examination (RCE).

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Patent Law Institute Live Blog: Judges’ Panel

Welcome back from the lunch break! The Patent Law Institute live blog continues with the “Judges Panel” which presents judiciary perspectives on effective trial presentation and when and how discovery disputes should be brought before the court, in particular the patent pilot program. The panel features Douglas R. Nemec as moderator and includes Hon. Tonianne J. Bongiovanni, Magistrate Judge at the United States District Court, District of New Jersey, Hon. Denise Cote, District Judge at the United States District Court, Southern District of New York, and Hon. Mitchell S. Goldberg, District Judge at the United States District Court, Eastern District of Pennsylvania. Here are the highlights:

Hon. Denise Cote:

• Of the people who didn’t chose to be in the patent project pilot, 4/5 judges kept their cases. Only in 6 cases out of 26 did a judge asked to have the case reassigned to a patent project judge. Federal judges enjoy patent cases even though they don’t have a patent background. Patent cases are intellectually challenging and judges enjoy the challenge and the work. A new patent case can bring an opportunity for a judge to learn about a new field in science or technology that they wouldn’t have been exposed to otherwise.
• There’s no local patent rules because the patent cases tend to not be one size fits all.

Hon. Bongiovanni

• Patent law is a difficult area, especially the pharmaceutical area, a judge can’t intuit a lot of the underlying issues. Despite patent law is so technical, very may judges won’t dodge hearing a patent case.
• The patent rules have streamlined the time lines for initial discovery. Most interesting is if the attorneys have an e-discovery plan in place.
• Know that the judge’s time is sensitive and needs you to get to the point and needs you to cooperate with your adversaries.

Hon. Goldberg

• The backgrounds of patent attorneys is equally intimidating and interesting. There was no adoption of local patent rules in the Eastern District of Pennsylvania.
• Because judges want to actually learn about what is underlying the case, patent attorneys are encouraged to share their discovery as early as possible.
• Try to understand that sometimes its possible to give a judge too much to read.