Patent Law Practice Center

Post Grant Dead Zone Coming Soon

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

PGR Window Anomaly to Encourage Early Litigation?

Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA).  Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.

As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).

When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR,  becomes available for all patents next September 16, 2012. (more…)

America Invents: A Simple Guide to Patent Reform, Part 2

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

I have done quite a bit of writing about the America Invents Act, but I have been a bit derelict in providing the sequel to America Invents: A Simple Guide to Patent Reform, Part 1. Part of the reason, if not the entirety of the reason, is that the major parts of the American Invents Act that remain are anything but simple.

I was speaking with John White via telephone yesterday about the America Invents Act.  Yes, John and I are thoroughly immersed in this legislation and coming up with wrinkle after wrinkle that you probably never thought about.  Fun I know, but that is what two wild, crazy and tremendously charismatic patent attorneys talk about!  In any event, I told him I was having difficulty and asked him — how do you describe prior user rights, post-grant review and supplemental examination simply?  His response: “You don’t.”  We went on to talk about how first to file isn’t all that simple either, although the name suggests otherwise.  This thing, the monstrosity that is the America Invents Act, will be a full employment act for lawyers!  But when is it ever good for clients when it is good for the attorneys?

In any event, on this note I embark upon Part 2, which will seek to make sense of prior user rights, post-grant review, preissuance submission and patentability changes. This will leave inter partes review, supplemental examination and derivation proceedings for the finale — Part 3.  I will endeavor to describe these in the most straight forward way possible, but I am going to completely punt on Section 18 as it pertains to business methods and post-grant review, at least for now.  I just see no way to explain that in a “simple” way.  Notwithstanding, look for an article on Section 18 soon (a relative term I know), along with an article about specific peculiarities and likely unintended consequences of the Act.

Click here for Gene Quinn’s full article on IPWatchdog.

PLI’s 6th Annual Patent Law Institute

PLI’s 6th Annual Patent Law Institute is on February 15-16 in New York (and via web) and on March 19-20 in San Francisco.  The Institute is designed to be of ultimate practice value to all three subgroups in the patent law community:patent prosecutors, patent litigators, and strategic & transactional lawyers. The two-day schedule includes 6 plenary sessions of interest to all patent lawyers and a separate breakout track for prosecution, litigation and strategic/transactional lawyers. Each track features six sessions focused on each of those three practice subgroups. You design the 2-day schedule that best meets your professional needs.

Do not miss this unique opportunity to sharpen your practice skills and to network with federal judges, USPTO officials, in-house counsel and outstanding outside patent lawyers.

What you will learn

Plenary sessions include:

• Keynote Address by Robert L. Stoll, Commissioner of Patents
• A dialogue with Federal Circuit Chief Judge Randall R. Rader
• Corporate counsel divulge critical issues that keep them awake at night
• A distinguished panel of Judges from critical U.S. District Courts
• The practice impact of recent Supreme Court and Federal Circuit decisions
• Special Feature: Earn 1 hour of legal ethics credit



Click here for more information about the Patent Law Institute

 

New Inter Partes Review Grounds To Stay Most Patent Litigation?

Written by Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor.

Estoppel Provisions Disfavor Parallel Proceedings

During a  [recent] webinar on post grant USPTO proceedings, I compared the current estoppel provisions of inter partes patent reexamination to that ofInter Partes Review. The Inter PartesReview (IPR) estoppel provisions are similar in some respects to the currentinter partes patent reexamination (IPX) provisions, but differ in significant respects.

In some ways, the new estoppel provisions are designed to address shortcomings of the existing IPX estoppel provisions. For example, whileIPX estoppel does not apply to ITC proceedings, the IPR provisions extend estoppel to ITC proceedings. Additionally, while the IPX provisions use the terminology “raised or could have raised,” the new IPR provisions recite “raised or reasonably could have raised during Inter Partes Review.” Ostensibly, this language softening is designed to provide some slight wiggle room to account for the late found reference in a far away library of Siberia.

Of perhaps much greater interest however is the aspect of IPR estoppel that may compel judges to stay a parallel litigation pending IPR. (more…)

USPTO Issues Final Notice for Track I Fee-Based Prioritized Examination

On September 23, 2011, the USPTO issued a final notice, “Changes to Implement the Prioritized Examination Track (Track 1) of the Enhanced Examination Timing Control Procedures under the Leahy-Smith America Invents Act“.  According to the notice, starting today,September 26th, applicants can seek fee-based prioritized examination under the USPTO’s Track I program.  Courtenay Brinckerhoff, writer of PharmaPatents Blog and Partner at Foley & Lardner, posted an article setting forth details of the program including: applications eligible For Track I Examination, the filing requirements for Track I Examination, the on-going requirements for Track I Examination, the USPTO’s Track I goals and her lingering concerns. Here is an excerpt from her article:

As of September 26, 2011, applicants can seek fee-based prioritized examination under the USPTO’s Track I program. The September 23, 2011 Federal Register Notice sets forth the details of the program, which is largely identical to that previously set to take effect May 4, 2011, although the basic fee is higher. The USPTO decided not to implement the program in May because funding limitations required it to revise its hiring plans, and it did not believe that it could meet the Track I pendency goals with its current resources. While the USPTO’s funding situation has not improved, Track I is being offered now, in accordance with provisions of the Leahy-Smith America Invents Act.

Here is a link to the full article.