AIA Calls for Discovery, but PTO Doesn’t Really Know What that Entails

A recent law suit against the USPTO has brought to light an issue regarding the litigation process following the patent reform of the America Invents Act. The issue is that the USPTO has never provided for discovery in its review proceedings policies before, but within the AIA’s provisions for inter partes review and post-grant review there is a call for a discovery process.

The National Law Journal reports Cordis Corp., a Johnson & Johnson subsidiary, sued the U.S. Patent and Trademark Office and its director, David Kappos, based on the USPTO’s refusal to let Cordis subpoena companies challenging its patents in an inter partes re-examination. The USPTO stated its policy is not to allow discovery in these review proceedings.  The ultimate issue emerging from this suit goes beyond whether Cordis is entitled to subpoena certain parties.  Because the AIA reforms the law such that discovery must now be a part of the inter partes review process and the post-grant review process, the issue becomes bigger as it becomes clear that there has yet to be a standard for discovery within PTO proceedings and the number of litigation matters is due to increase.

With no precedent to follow, discovery guidelines have to be established either through years of law suits and proceedings until precedent becomes settled and proposed rules are enacted. Those of you that wish to express your concerns and comments regarding the discovery issue still have time to have your thoughts heard by the USPTO. According to the Federal Register, 37 CFR Part 42 [Docket No.: PTO–P–2011–0094], Practice Guide for Proposed Trial Rules, written comments must be received on or before April 9, 2012 to ensure consideration.

For more on the Cordis suit against the USPTO and Kappos, check out the National Law Journal article here.

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…)

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) IP Watchdog: Patent Drawings: An Economical Way to Expand Disclosure – This post discusses the importance of including patent drawings within patent applications that  show every feature of the invention specified in the claims, and explains when and where the applications would best serve the applicant.

2) Chicago IP Litigation Blog: Determining Senior User is Not an Issue for Motion to Dismiss – This post reports on Arcadia Group Brands Ltd. v. Studio Moderna SA, No. 10 C 7790, Slip Op. (N.D. Ill. Aug. 15, 2011), including both parties’ arguments as well as the judge’s decision. (more…)

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

 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…)

Don’t Miss the Post-Grant USPTO Proceedings Seminar Next Week!

On Monday, February 3rd, PLI is hosting a seminar in New York City focused on the role of post-grant USPTO proceedings as components of a litigation strategy, including pre-trial and post-trial options. The seminar is entitled Post-Grant USPTO Proceedings 2012 – The New Patent Litigation, and it will focus on strategic considerations and common procedural traps for the unwary. The relative advantages and disadvantages of the various proceedings are explained from both the perspective of the Patentee and Third Party. Perspectives of the judiciary will also be presented, including case studies of well-known disputes, as judges from the U.S. District Court, the ITC, and the USPTO Board of Patent Appeals and Interferences (BPAI) are all members of the faculty.

Registration is still open for the seminar. Registration includes a course handbook and associated course materials. A downloadable course handbook will also be available several days prior to the program start for your review. Won’t be in the New York City area next Monday? This upcoming seminar is also available via live webcast! The seminar, co-chaired by Oblon Spivak’s Scott McKeown and Birch Stewart’s Gerald Murphy, is one that should not be missed. The Patent Law Practice Center will keep you posted on the seminar throughout the day as we will be live blogging as well as tweeting  from the seminar (hashtag: #PLIpostgrant).