Patent Law Practice Center

USPTO proposes new rules for PTAB administrative trials

Several weeks ago, the United States Patent and Trademark Office published proposed rule changes that will, if adopted, amend the rules for practice before the Patent Trial and Appeal Board (PTAB). The deadline to comment on the USPTO proposed rule changes will be 60 days after publication in the Federal Register, which should be Monday, October 19, 2015. Comments should be sent by electronic mail message over the Internet addressed to: trialrules2015@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Patent Board, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Lead Judge Susan Mitchell, Patent Trial Proposed Rules.

Claim Construction

In the initial request for comments, the Office asked the patent community, “Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?”

Not surprisingly, by and large, the Office decided to stick with the broadest reasonable interpretation (“BRI”) approach, explaining that the United States Court of Appeals for the Federal Circuit recently determined that that the Office is authorized to employ the broadest reasonable interpretation approach when construing terms of an unexpired patent at issue in an inter partes review. The Office did, however, choose to adopt the Phillips standard for claim construction for claims of a patent that will expire prior to the issuance of a final decision.

Motions to Amend

One of the biggest issues many have had with current PTAB trial practice relates to the fact that the law says that the patent owner has a right to amend, but that well over 90% of the time, the PTAB denies patent owners the ability to amend. The Office asked for comments on the following topic: “What modifications, if any, should be made to the Board’s practice regarding motions to amend?”

In declining to make substantive changes to amendment practice, the Office explained that  MasterImage 3D, Inc. v. RealD, Inc. Case IPR2015-00040 clarifies that a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, including any art provided in light of a patent owner’s duty of candor, and any other prior art or arguments supplied by the petitioner, in conjunction with the requirement that the proposed substitute claims be narrower than the claims that are being replaced. Further, the decision also stands for the proposition that the burden of production shifts to the petitioner once the patent owner has made its prima facie case for patentability of the amendment, although the ultimate burden of persuasion remains with the patent owner.

Other Issues

Other issues addressed in the proposed rules include: (1) amending the rules to allow the patent owner to file new testimonial evidence with its preliminary response; (2) the Office declining to adopt a mandatory rule regarding additional discovery of secondary considerations; (3) permitting a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding; (4) declining a proposal that would allow a petitioner’s reply as of right in the pre-institution phase of an AIA review; (5) denying to provide for small entity and micro-entity filing fee reduction for reviews under AIA; and (6) Rule 11-type certification for all papers filed with the Board with a provision for sanctions for noncompliance.

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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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 Mass Aggregators: The Giants Among Us – Written by guest authors Tom Ewing and Professor Robin Feldman, this post discusses how a handful of entities have amassed vast treasuries of patents on an unprecedented scale. The post points out how it is important to understand the method of organization and the types of activities that are causing a paradigm shift in the world of patents and innovation.

2) Patently-O: New Post Grant Options and Associated Proposed Fees – This post lists the new fees for petition for post-grant opposition or covered business method patent review, a petition for inter partes review, a petition for ex parte reexamination, supplemental examination, derivation, and third party submission of prior art in pending cases. (more…)

USPTO Proposes Three-Track Patent Examination System

On June 4, 2010, the US Patent and Trademark Office (USPTO) published in the Federal Register a detailed call for comments and the announcement of a public meeting to discuss it’s proposed Three-Track patent processing initiative. Federal Register/ Vol.75, No 71/Friday, June 4, 2010/ notes.  The public meeting will take place at the USPTO office on July 20, 2010.

Under the proposed initiative, for applications filed first in the United States, an applicant may: (1) Request prioritized examination (Track I); (2) for non-continuing applications, request  a delay lasting up to 30 months in docketing for examination (Track III); or (3) obtain processing under the current procedure (Track II) by not requesting either (1) or (2).  As for applications filed in the USPTO that are based on a prior foreign-filed application, the proposed process is quite different.

According to  Jack O’Brien, founder of Law Offices of John A. O’Brien P.C. and Practice Center Contributor,  “All applications filed first in the United States can freely participate this three track system.  However, US patent applications based on a prior foreign filed application are delayed.” (more…)