Today, the USPTO published a proposed rule: Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board (PTAB).
Here is a summary from the USPTO:
"This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board to recognize that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office (USPTO or Office), communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. The rule would apply to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.
Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before December 19, 2016 to ensure consideration.
Comments should be sent by electronic mail message over the Internet addressed to: acprivilege@uspto.gov.
Comments may also be submitted by postal mail addressed to: Mail Stop OPIA Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of "Soma Saha, Patent Attorney, Patent Trial Proposed Rule on Privilege."
Copyright © 2016 Robert Moll. All rights reserved.
Showing posts with label derivation. Show all posts
Showing posts with label derivation. Show all posts
Tuesday, October 18, 2016
Sunday, August 23, 2015
PTAB - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
On August 20, 2015, the USPTO published Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board.
As stated in the Federal Register, this proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office) trial practice for inter partes (IPR), the transitional program for covered business method patents (CBM), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (AIA) providing for trials before the Office.
Copyright © 2015 Robert Moll. All rights reserved.
As stated in the Federal Register, this proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office) trial practice for inter partes (IPR), the transitional program for covered business method patents (CBM), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (AIA) providing for trials before the Office.
Copyright © 2015 Robert Moll. All rights reserved.
Wednesday, October 22, 2014
Dolak - Patent Office Contested Proceedings and the Duty of Candor
Tonight, I suggest reading Professor Lisa Dolak's Patent Office Contested Proceedings and the Duty of Candor. Professor Dolak has been speaking on ethics issues in intellectual property for years, and this is a nice contribution to AIA trial work.
Here's the abstract: "The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.
This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings."
Copyright © 2014 Robert Moll. All rights reserved.
Here's the abstract: "The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.
This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings."
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, August 3, 2014
USPTO Request Public Comments on American Invents Act Covered Business Method Review, Derivation, Inter Partes Review, and Post Grant Review
As a follow up to the eight USPTO roundtables held across the country this spring, the USPTO issued a request for public comments on covered business method review, derivation proceedings, inter partes review, and post grant review before the Patent Trial and Appeal Board (PTAB) under the America Invents Act.
The USPTO is seeking public input on all of these proceedings, but especially issues raised at the roundtables: claim construction, motions to amend, patent owner preliminary responses, obviousness, real party in interest, additional discovery, multiple proceedings, extensions of 1 year period to issue a final determination, and oral hearings.
Written comments must be submitted no later than September 16, 2014.
Copyright © 2014 Robert Moll. All rights reserved.
The USPTO is seeking public input on all of these proceedings, but especially issues raised at the roundtables: claim construction, motions to amend, patent owner preliminary responses, obviousness, real party in interest, additional discovery, multiple proceedings, extensions of 1 year period to issue a final determination, and oral hearings.
Written comments must be submitted no later than September 16, 2014.
Copyright © 2014 Robert Moll. All rights reserved.
Wednesday, March 26, 2014
USPTO - PTAB Patent Trial Roundtables in April - May 2014
The Patent Trial and Appeal Board (PTAB) is hosting roundtables regarding America Invents Act patent trials at eight locations in April - May 2014. America Invents Act (AIA) patent trials (inter partes review, post-grant review, and covered business method review) can significantly reduce the cost of challenging patent validity. The Silicon Valley roundtable will be hosted at Santa Clara University. See links below for details. The USPTO is hosting the roundtables and webcasts for free.
As stated in the notice the PTAB roundtables will "share information about the new AIA trials (i.e., inter partes reviews, post grant reviews, covered business method reviews, and derivations) including statistics, lessons learned, and techniques for successful motions practice. The Board is interested in receiving feedback about the trials and will feature a panel discussion to elicit public input. At each roundtable, at least five administrative patent judges will participate and be available for questions and conversation."
As stated in the notice the PTAB roundtables will "share information about the new AIA trials (i.e., inter partes reviews, post grant reviews, covered business method reviews, and derivations) including statistics, lessons learned, and techniques for successful motions practice. The Board is interested in receiving feedback about the trials and will feature a panel discussion to elicit public input. At each roundtable, at least five administrative patent judges will participate and be available for questions and conversation."
Copyright © 2014 Robert Moll. All rights reserved.
Labels:
AIA,
business method review,
derivation,
inter partes review,
IPR,
post-grant review,
PTAB,
USPTO
Wednesday, February 13, 2013
USPTO - Final Rules and Examination Guidelines to Implement the First-Inventor-to-File Provision of the America Invents Act
Today, the USPTO published the final Rules implementing the first-inventor-to-file provision of the America Invents Act (AIA) effective on March 16, 2013.
See the Federal Register publications: Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act and Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines
The USPTO also published guidelines setting forth its interpretation of how the first inventor to file provision changes the current novelty and obviousness requirements. The guidelines inform how the law has changed (expanded) the scope of prior art and changed (narrowed) the scope of the grace period.
The Acting Director of the USPTO Teresa Stanek Rea states: "Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."
Usually if the law changes radically, a litigant will push for a favorable interpretation of the new law. Until the court decisions build up and limit possible interpretations, the law is likely to be less predictable. On the other hand, the first inventor to file system provision may bring greater predictability in the long term, since many priority disputes will be resolvable by filing date.
The USPTO is also giving a fair level of customer support. It will give more information on the first-inventor-to-file provision at a public training session held at the USPTO in Alexandria, Virginia on March 8, 2013, which will also be available on the Web. See details at www.uspto.gov/americainventsact. Also one may contact the AIA help line at 1-855-HELP-AIA (1-855-435-7242) or send an email to helpaia@uspto.gov for first-inventor-to-file and other AIA questions. The USPTO also suggests if we have questions regarding the final rules to call Ms. Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711 and direct questions about the first-inventor-to-file final examination guidelines to Ms. Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.
Copyright © 2013 Robert Moll. All rights reserved.
See the Federal Register publications: Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act and Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines
The USPTO also published guidelines setting forth its interpretation of how the first inventor to file provision changes the current novelty and obviousness requirements. The guidelines inform how the law has changed (expanded) the scope of prior art and changed (narrowed) the scope of the grace period.
The Acting Director of the USPTO Teresa Stanek Rea states: "Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."
Usually if the law changes radically, a litigant will push for a favorable interpretation of the new law. Until the court decisions build up and limit possible interpretations, the law is likely to be less predictable. On the other hand, the first inventor to file system provision may bring greater predictability in the long term, since many priority disputes will be resolvable by filing date.
On the flip side, unpredictability may arise in the new derivation proceedings that are intended to ensure a person will not be able to obtain a patent even when filing first for an invention that he or she did not actually invent. The scope of the one-year grace period is another area to expect unpredictability. Sure patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures, but what happens when the third party disclosure is not identical to the "first" inventor's disclosure? Do we have a one-year grace period against the third party disclosure? Further, do we have a grace period for an third party offer for sale or public use? Thus, unpredictability exists on the grace period of the new law.
The migration to the first inventor to file system is another step toward harmonizing U.S. patent law with that of the rest of the world, but the US definition of prior art and scope of the grace period is different. And the steps proceed in parallel for better or worse. For example, the USPTO implemented a common classification system for the USPTO and the EPO to enhance examination on January 1, 2013. The so-called Tegernsee Group is another effort to harmonize patent law among the major offices.
The USPTO is also giving a fair level of customer support. It will give more information on the first-inventor-to-file provision at a public training session held at the USPTO in Alexandria, Virginia on March 8, 2013, which will also be available on the Web. See details at www.uspto.gov/americainventsact. Also one may contact the AIA help line at 1-855-HELP-AIA (1-855-435-7242) or send an email to helpaia@uspto.gov for first-inventor-to-file and other AIA questions. The USPTO also suggests if we have questions regarding the final rules to call Ms. Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711 and direct questions about the first-inventor-to-file final examination guidelines to Ms. Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.
Copyright © 2013 Robert Moll. All rights reserved.
Wednesday, September 12, 2012
America Invents Act - USPTO Final Rules for Derivation
The USPTO published final rules to implement the America Invents Act (AIA) derivation proceedings.
Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated: 'This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."
The USPTO Patent Trial and Appeal Board will conduct derivation proceedings to enable a true inventor to challenge the right of the first person to file by proving the first application filed was derived from the true inventor.
The final rules will be effective on March 16, 2013.
Here are a few sources of additional information on derivation:
Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated: 'This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."
The USPTO Patent Trial and Appeal Board will conduct derivation proceedings to enable a true inventor to challenge the right of the first person to file by proving the first application filed was derived from the true inventor.
The final rules will be effective on March 16, 2013.
Here are a few sources of additional information on derivation:
- The USPTO's 116-page document: Changes to Implement Derivation Proceedings
- Eight AIA roadshows in September 2012
- Lead Administrative Patent Judge, Sally G. Lane; Administrative Patent Judge, Sally C. Medley; Administrative Patent Judge, Richard Torczon; and Joni Y. Chang, Administrative Patent Judge, Board of Patent Appeals and Interferences by telephone at (571) 272-9797
Saturday, April 21, 2012
Public Comments on the USPTO's Proposed Rules to Implement the America Invents Act
The USPTO published 374 public comments on the proposed rules to implement the America Invents
Act (AIA):
The USPTO also published 24 comments in response to the PPAC hearings on the proposed patent fees.
- Inter Partes Review
- Post-Grant Review
- Transitional Program for Covered Business Method Patent Review
- Definition of Technological Invention
- Derivation Proceedings
- Umbrella Administrative Trial Rules and Practice Guide
- Genetic Diagnostic Testing
- Statute of Limitations Provisions for Office Disciplinary Proceedings
- Patent Public Advisory Committee Public Hearings on the Proposed Patent Fee Schedule
- Satellite Offices for the Nationwide Workforce
- Supplemental Examination and Revision of Reexamination Fees
- Inventor's Oath or Declaration
- Preissuance Submissions by Third Parties
- Post Patent Provisions
- Leahy-Smith America Invents Act Implementation
The USPTO also published 24 comments in response to the PPAC hearings on the proposed patent fees.
Monday, March 19, 2012
PTO America Invents Act Roadshow - Videos and Slides
The PTO America Invents Act (AIA) team recently finished its roadshow on the proposed PTO rules. It visited Alexandria, Boston, Chicago, Dallas, Fort Lauderdale, Salt Lake City, and Sunnyvale, California on the dates below. If you didn't attend, the PTO has given links to videos of the programs as presented in Alexandria, VA and Sunnyvale, CA as well as links to slides in all the cities:
- Opening
Remarks
- Patents:
Pre-issuance Submission and Inventor’s Oath/Declaration
- Patents:
Miscellaneous Post Patent and Supplemental Examination
- Board:
Specific Rules for Post Grant Review, Inter Partes Review, Covered
Business Method Review, and Derivation
- Board:
Umbrella Rules
- Closing Remarks
AIA Roadshow Slides
- Alexandria, VA
(February 17, 2012)
- Sunnyvale, CA (February
24, 2012)
- Salt Lake, UT (February
27, 2012)
- Dallas, TX (February
29, 2012)
- Ft.
Lauderdale, FL (March 2, 2012)
- Boston, MA (March,
5, 2012)
- Chicago, IL (March
7, 2012)
Copyright © 2012 Robert Moll. All rights reserved.
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