Patent Law Practice Center

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).

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. Highlights include a lot of news and updates from the USPTO! 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) Intellogist: A Quick Guide to Changes on the USPTO Homepage – The USPTO homepage’s familiarity to any patent or trademark researcher facilitates the ease of their site navigation. However, this post explains how the current USPTO homepage will be officially retired on February 29, 2012 (yep, it’s a leap year folks), and it also shares the differences between the new homepage and the old one.

 2) PatentDocs: USPTO Proposes Rules Changes for Implementing AIA Provisions — Statute of Limitations Provisions for Office Disciplinary Proceedings – This post addresses address the USPTO’s notice regarding “Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings”. (more…)

Patent Post-Grant Options – The New AIA Regime

Post-grant review proceedings of the USPTO were pursued in record number in 2011. In response, the America Invents Act introduced new options for patent reexamination such as Post-Grant Review, Inter Partes Review (formerly inter partes patent reexamination) Derivation, a special post-grant review for “business method” patents and Supplemental Examination. Whether your job requires management of a patent portfolio or advising clients in disputes that involve or may lead to patent litigation, the changes brought forth by the AIA are incredibly relevant.

PLI is responding to these changes by providing a seminar focused on these new patent post-grant options. On February 3rd, the seminar entitled “Post-Grant USPTO Proceedings 2012 – The New Patent Litigation” will be held at the New York PLI Center and online via a live webcast! Gain valuable practice insights concerning the new America Invents Act (AIA) post-grant USPTO proceedings directly from experienced practitioners on the program’s stellar faculty including:

Brian Hanlon, Director of the Office of Patent Legal Administration;

Irem Yucel, Director of the Central Reexamination Unit (CRU);

BPAI’s Chief Administrative Patent Judge James Donald Smith;

U.S. Chief Judge Garrett E. Brown and District Judge Gerald Bruce Lee; and

ITC Administrative Law Judge Theodore R. Essex  (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. Highlights include a new UPSTO branch in Detroit and IBM’s patent portfolio remaining the recipient of the most patents granted in the past year.  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) Patently-O: New Detroit Office – It’s somewhat all-American to be happy for Detroit’s recent resurgence, and this post shares the details of the new Detroit Branch of the USPTO. The office is expected open by July 2012 and will employ about 100 individuals, mainly patent examiners.  Prospective employees can e-mail detroitHiring@uspto.gov.

2)Patents Post Grant: Patent Reissue Oath Practice Revised by the USPTO – As the America Invents Act has required that the “deceptive intent” component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems. This post explains the major changes to the inventor’s oath. (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.