Patent Law Practice Center

Inter Partes Reexam and the Post Grant Dead Zone

On July 24, 2012, the Patents Post Grant blog published an interesting article titled Higher Patent Reexamination Threshold Suffers from SNQ Hangover.  In the article, Scott McKeown, a partner with Oblon, Spivak in the firm’s Post Grant Patent Practice Group, wrote:

 

A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners) [sic]. Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.

Based on this sampling by McKeown, it seems that the new standard is indeed having an effect.  McKeown goes on to explain that if you file an inter partes reexamination request and it is denied, you can always learn from what the examiner stated and resubmit, but that only applies as long as there is time.  Inter partes reexamination will go the way of the dinosaurs on September 16, 2012.  McKeown writes: “Those IPX filers that are in parallel litigation, and have their IPX requests denied closer to the September deadline, may soon be forced into some very unfavorable positions.”

(more…)

Scott McKeown on Post Grant Strategies

The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the PTO. To this end, patent reexamination in particular has exploded in popularity as a viable alternative to costly litigation, or parallel path, to enhance litigation positions. This topic was discussed during the Practising Law Institute’s seminar entitled, Post-Grant USPTO Proceedings 2012 – The New Patent Litigation. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, broke down post-grant topics into pre-trial and post-trial strategies, issues, and goals, and spelled out cost effective post-trial strategies.

Here is a clip from Scott’s discussion during the Pre-Trial and Post-Trial Post-Grant Strategies Concurrent with Litigation panel:

[vsw id=”WgkKCLy0vUE&list” source=”youtube” width=”425″ height=”344″ autoplay=”no”]

The “Post Grant USPTO Proceedings 2012 – The New Patent Litigation” seminar is currently available for viewing on demand. The on demand program includes access to select chapters of  the seminar’s Course Handbook.

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…)

Post-Grant USPTO Proceedings Seminar Live Blog: Patent Trial, Appeal Board Transformation & AIA Implementation

Welcome to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Trial, Appeal Board Transformation and AIA Implementation. The panel’s moderator is Oblon, Spivak Partner and seminar co-chair Scott A. McKeown, and the featured panelists are Hon. Robert Clarke, Chief of Staff, United States Patent and Trademark Office, Office of Patent Legal Administration, Oblon, Spivak’s Stephen G. Kunin, and  Irem Yucel, Director of the Central Reexamination Unit (CRU), USPTO. Here are some highlights:

(more…)

Summary of USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012

In just a few weeks, new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences (BPAI) become effective. The new rules introduce helpful simplifications relative to existing practice and provide for enhanced procedural monitoring to reduce unnecessary appeals. I sat in on the recent PLI One Hour Briefing entitled,”USPTO’s New Rules of Practice for Ex-Parte Appeals: Change and Simplification for 2012″ to become more acquainted with the procedural changes and guidelines to come. The briefing was lead by Scott A. McKeown and Lee E. Barrett, members of Oblon Spivak L.L.P..

Here are some of the highlights:

• The new rules provide changes as well as clarifications. Changes include simplified briefing requirements for appellants and examiners alike, jurisdiction over appeals for when it passes from examiner to the Board, new procedures for challenging undesignated new grounds of rejection, and all rejected claims will be assumed appealed. Clarifications focus on petitions and information disclosure statements during appeal.
• An appeal is presumed to be taken from the rejection of all claims under rejection unless canceled by an amendment filed by the applicant and entered by the office.
• The change of the Board getting jurisdiction over appeal formalizes the streamlined procedure for Appeal Brief review from 2010. This eliminated wasted time before the Board gets jurisdiction, and is more complete than the previous rule.
• Clarifications made to Section 41.37 simplify the briefing experience for appellants. The clarifications set up how the content should be formatted. It is very important to be careful with one’s formatting of an appellate brief, as mistakes in formatting serve as the biggest reason for briefs to get rejected.
• Examiners do not have to provide a statement of grounds of rejection on appeal since appellants are no longer required to do so.
• A summary of claimed subject matter should be done for every claim that is argued separately; a short introduction to the invention is helpful.
• Appellants can raise new arguments in the appeal brief. The burden is on the appellant to explain why the examiner erred. They then must simply point out the error and get on with the point.
• Not every decision can be appealed. A new ground for rejection can be changing the statutory basis of your argument, new calculations in support of overlapping ranges, or new structure in support of structural obviousness.