Patent Law Practice Center

Understanding Post-Grant Review

Last week, I published an article about inter partes review on IPWatchdog.com. Patent Office statistics for FY 2013 and FY 2014 show that there have been a total of 361 decisions on IPR petitions, with 288 trials instituted. There have been 11 cases that have been joined and only 62 petitions denied, which corresponds with an 82.8% IPR petition grant rate. Having said this, the IPR grant rate during FY 2013 was 87.2%, while so far during FY 2014, the IPR grate rate has been 77.2%.

But what about post-grant review?

Both inter partes review and post-grant review became a reality when “Phase 2” of the America Invents Act (AIA) became effective on September 16, 2012. But you haven’t seen any post-grant reviews yet, aside from the quasi-post-grant review known as covered business method (CBM) review. That is because the post-grant review provisions apply only to patents issued from applications that have an effective filing date on or after March 16, 2013.  Said another way, post-grant review proceedings are only available to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

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Kappos Gives Presentation at PLI Post-Grant Program

On Wednesday, March 27, 2013, the Practising Law Institute hosted the New York edition of the all-new USPTO Post-Grant Patent Trials program. This was the second of four stops across America for the program. The first stop was in Chicago on March 4, 2013. The remaining live presentations will be in San Francisco, CA, on April 15, 2013, and in Austin, TX, on April 29, 2013.

The headliner for the New York event was David Kappos, the former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Kappos, now at Cravath, Swaine & Moore, provided an overview of what has been happening at the Patent Trial and Appeals Board (PTAB). The slides were prepared by the USPTO and the presentation was originally scheduled to be delivered by Chief Judge James Smith of the PTAB, who unfortunately had to back out due to sequestration/budget matters.

Kappos ably filled in and was a fountain of useful information on the PTAB, what the Office is doing and why. He was, of course, the head of the Office at the time the America Invents Act (AIA) was passed and was intimately involved with the formulation of the Appeals rules that went into effect at the end of 2011 and the many rules packages dealing with the new post-grant trial procedures that went into effect on September 16, 2012, the one year anniversary of enactment of the AIA.

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Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patent Docs: Tomato Genome Determined – The recent news that the “entire genomic DNA sequence of the tomato (Solanum lycopersicum) has been deciphered” inspired this post. It takes an in depth look at the “interesting relationships between tomatoes and closely-related species.” No discussion of whether there will be a push to patent the tomato genetic sequence.

2) IP Watchdog: Mobile App Developers Gain Ally to Fight Patent Infringement – This post highlights the attempt to promote innovation within the mobile app industry. The world’s largest patent research community announced the formation of a partnership with a global trade organization for mobile software developers, which this post argues could in fact impact the mobile app industry in a positive way by benefiting the small businesses and individual entrepreneurs behind the technology. (more…)