In August 2012, the USPTO published Office Patent Trial Practice Guide (the Guide) for 37 C.F.R. Part 42 (Part 42 is currently on pages 416-447). The Guide was intended to give guidance to parties participating in inter partes review, post-grant review, covered business methods, and derivation under the America Invent Act (AIA) that had just passed.
In August 2018, the USPTO published Trial Practice Guide Update (August 2018) to update the Guide on topics such as expert testimony, motion practice, institution of trial, reply to patent owner response, reply to motion to amend, challenging admissibility, motions to exclude and strike, and oral hearings.
Copyright © 2018 Robert Moll. All rights reserved.
Showing posts with label post grant review. Show all posts
Showing posts with label post grant review. Show all posts
Friday, August 10, 2018
Thursday, June 28, 2018
USPTO - Proposes Changes to the Claim Construction in Trial Proceedings Before the Patent Trial and Appeal Board
The USPTO is proposing changes favorable to patent owners with regard to claim construction in the following Patent Office proceedings: (1) inter partes review (IPR), (2) post-grant review (PGR), and (3) the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).
As stated in the regulatory notice: the USPTO "proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding."
If this change is implemented, it should be more difficult for a challenger to invalidate patent claims in certain cases, which may be reasonable given patent owners are rarely afforded the opportunity to amend claims in Patent Office proceedings to date.
See the USPTO Notice of Proposed Rule Making.
Also see U.S. Supreme Court's prior decision in Cuozzo Speed Technologies v. Lee that affirmed PTAB's use of the broadest reasonable interpretation of the claims in inter partes review.
Copyright © 2018 Robert Moll. All rights reserved.
As stated in the regulatory notice: the USPTO "proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding."
If this change is implemented, it should be more difficult for a challenger to invalidate patent claims in certain cases, which may be reasonable given patent owners are rarely afforded the opportunity to amend claims in Patent Office proceedings to date.
See the USPTO Notice of Proposed Rule Making.
Also see U.S. Supreme Court's prior decision in Cuozzo Speed Technologies v. Lee that affirmed PTAB's use of the broadest reasonable interpretation of the claims in inter partes review.
Copyright © 2018 Robert Moll. All rights reserved.
Labels:
BRI,
CBM,
claim construction,
claims,
covered business method,
inter partes review,
IPR,
PGR,
post grant review,
PTAB,
USPTO
Tuesday, October 18, 2016
PTAB - Proposed Rule Recognizing Privileged Communications Between Clients and Patent Practioners at the Patent Trial and Appeal Board
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.
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.
Monday, September 21, 2015
PTAB - Webinar Proposed AIA Trial Rules on Thursday, October 1
Today, PTAB notified it is hosting a free webinar on the proposed AIA trial rules noon to 1 pm ET on Thursday, October 1.
As stated in the notice: "Lead Judge Susan Mitchell will walk through the proposed rule changes followed by a discussion with Lead Judge Mike Tierney and Lead Judge Tom Gianetti about the background, rationale, and implications of the proposed rules. To review the proposed rules in advance, please visit the Federal Register Notice.
On Tuesday, October 6th, AIPLA is holding a companion webinar to address the proposed rule changes from AIA trial practitioners' perspectives, including views from Todd Baker of Oblon and Joe Palys of Paul Hastings. The practitioners will address the practical implications of the rules and how they may alter current AIA trial practice and strategy.
For more information about AIPLA's webinar.
Together, these two programs are designed to address the proposed AIA trial rules from all angles. And at the conclusion of each webinar, viewers will have the opportunity to pose questions to the judges and practitioners. Please attend to participate in the development of the AIA trial rules and share your input."
Webinar Access Information:
As stated in the notice: "Lead Judge Susan Mitchell will walk through the proposed rule changes followed by a discussion with Lead Judge Mike Tierney and Lead Judge Tom Gianetti about the background, rationale, and implications of the proposed rules. To review the proposed rules in advance, please visit the Federal Register Notice.
On Tuesday, October 6th, AIPLA is holding a companion webinar to address the proposed rule changes from AIA trial practitioners' perspectives, including views from Todd Baker of Oblon and Joe Palys of Paul Hastings. The practitioners will address the practical implications of the rules and how they may alter current AIA trial practice and strategy.
For more information about AIPLA's webinar.
Together, these two programs are designed to address the proposed AIA trial rules from all angles. And at the conclusion of each webinar, viewers will have the opportunity to pose questions to the judges and practitioners. Please attend to participate in the development of the AIA trial rules and share your input."
Webinar Access Information:
| Event address for attendees |
|
| Event number: |
994 593 512 |
| Event password: |
123456 |
| Audio
conference: |
1-650-479-3208 |
| Access code: |
994 593 512 |
Copyright © 2015 Robert Moll. All rights reserved.
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.
Friday, July 24, 2015
PTAB - Trial Statistics 1998-2015
The Patent Trial and Appeal Board (PTAB) trials have become a major factor in resolving patent disputes. To see what is going on, you may want to check out the USPTO statistics: PTAB recent statistics and graphical AIA trial statistics and PTAB/BPAI statistics 1998-2013. If you have questions on the statistics, the USPTO recommends calling 571-272-7822.
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, August 16, 2014
USPTO - PTAB Webinar and PowerPoint Slides on 17 Questions Related to AIA Trials
As a follow up to the article USPTO Request Public Comments on American Invents Act Covered Business Method Review, Derivation, Inter Partes Review, and Post Grant Review:
The USPTO published a webinar and PowerPoint slides on 17 questions regarding practice in America Invents Act (AIA) Trials: webinar and slide set on July 29, 2014.
Copyright © 2014 Robert Moll. All rights reserved.
The USPTO published a webinar and PowerPoint slides on 17 questions regarding practice in America Invents Act (AIA) Trials: webinar and slide set on July 29, 2014.
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, July 24, 2013
Congress Introduces Yet Another Anti-troll Bill - Expanding Post Grant Review for Business Method Patents
In Supermarkets' solution to patent trolls: fight it out at the USPTO, Joe Mullin reports that Congressman Darrell Issa (R-CA) and Judy Chu (D-CA) introduced a bill to the House on July 22 that proposes to expand the types of business method patents eligible for post grant review (PGR). The Issa-Chu bill sounds similar to an earlier proposed bill by Senator Schumer (D-NY).
Noting the benefits of the bill, CCIA patent counsel Matt Levy notes that the cost of post grant review is currently about $100,000, which is a bargain compared to the $2 million or more that might be spent to defend against a US patent in federal court. Mr. Levy suggests it could be even more of a bargain as "if a troll is targeting 20 or 30 companies they can each chip in." Of course the downside to this "even better bargain" is 20 or 30 companies would be subject to an estoppel if the PGR request to invalidate or narrow the essential patent claims is unsuccessful.
Copyright © 2013 Robert Moll. All rights reserved.
Noting the benefits of the bill, CCIA patent counsel Matt Levy notes that the cost of post grant review is currently about $100,000, which is a bargain compared to the $2 million or more that might be spent to defend against a US patent in federal court. Mr. Levy suggests it could be even more of a bargain as "if a troll is targeting 20 or 30 companies they can each chip in." Of course the downside to this "even better bargain" is 20 or 30 companies would be subject to an estoppel if the PGR request to invalidate or narrow the essential patent claims is unsuccessful.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, September 6, 2012
America Invents Act - USPTO Q&A Final and Proposed Rules
If you have questions regarding the America Invents Act (AIA) you may want to attend the free USPTO Webinar on the final and proposed rules 12:30 - 1:30 pm ET, Friday, September 7, 2012.
Director David Kappos, Commissioner for Patents Peggy Focarino, GC Bernard Knight, Chief Judge James Smith, and Lead Judge Michael Tierny will answer questions regarding the inventor's oath/declaration, preissuance submissions, supplemental examination, post grant review, and inter partes review.
Here's what you need to attend:
Event number: 990 842 706
Event password: 123456
Event link for attendees: USPTO Webinar on Final and Proposed Rules
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, August 11, 2012
America Invents Act - Final Rules for Citation of Prior Art and Written Statements and Reexamination Estoppel
The PTO announced final rules to implement post patent provisions in the America Invents Act (AIA): the citation of prior art and written statements and the estoppel attaching to an ex parte reexamination request filed after a final decision in an inter partes review or post grant review. The provisions are effective on September 16, 2012, and will apply to any U.S. patent issuing before, on, and after September 16, 2012. The Federal Register Notice on the final rules is here.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
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