Today, the USPTO reported on the Post Grant Outcomes Pilot, concluding it "has succeeded in making examiners aware of patents related to applications they are examining that are involved in PTAB trials, and in turn has facilitated the timely and effective examination of applications."
Chief Judge for the Patent and Trial Appeal Board (PTAB) David Ruschke and Commissioner for Patents Drew Hirschfeld stated:
"As part of the USPTO’s ongoing Enhanced Patent Quality Initiative, in April 2016 we launched the Post Grant Outcomes Pilot, focused on pending patent applications that are related to issued patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). We’d like to report that the Post Grant Outcomes Pilot has succeeded in making examiners aware of patents related to applications they are examining that are involved in PTAB trials, and in turn has facilitated the timely and effective examination of applications.
AIA trial proceedings contain prior art and arguments that might be highly relevant to the patentability determination of related applications currently under examination. This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability.
During the pilot, we notified examiners via email when they had an application related to an AIA trial, and we streamlined access to the contents of the trial by pinpointing for examiners the most relevant documents. We then surveyed the examiners to gain detailed feedback.
The survey results showed that our examiners found the PTAB information—especially the initial petition (including the prior art citations), the PTAB’s institution decision, and any expert declarations—to be highly useful. We also found that 46% of the examiners referred to at least one reference cited in the AIA trial petition during the examination of their own case, either by citing it in a rejection or as pertinent prior art. If an examiner did not use or cite the prior art from the trial, it was most likely because the claims were different between the “parent” and the “child” case, the examiner disagreed with the AIA petitioner’s analysis of the prior art and/or claims, or the examiner was able to find better art.
To further facilitate the process, in August 2016 we deployed an upgrade to examiners’ desktop application viewers which allows automated access to the contents of related AIA trials, including access to the entire file, and any cited prior art.
Our next objective with regards to the post grant outcomes process is to identify examination best practices or deficiencies that we can address through additional examiner training. To accomplish this, we are currently analyzing data gathered about the AIA trials with respect to prior art searching and claim interpretation, and are also working to thoroughly analyze how PTAB trials impact related applications.
Our final objective is to provide examiners with a periodic review of post-grant outcomes focused on Supreme Court, Federal Circuit, district court, and PTAB decisions that relate to their specific technological area. It is our hope that by providing this information, examiners will gain a better understanding of the current state of the law and what happens to a patent after it leaves the USPTO.
We are dedicated to ensuring examiners have all pertinent information, especially post grant outcomes information, easily and readily available, in order to issue the highest quality patents possible and enhance patent quality overall. Based on the program’s initial results, we can already see that our examiners are benefitting, and we will continue to identify additional ways to improve our processes."
My input is the AIA trials are a significant change in the US patent system, because they invalidate more than half of challenged US patent claims. This pilot produces prior art and arguments that are communicated to examiners handling pending applications that the USPTO determines are "related" to the US patent being challenged in the PTAB trial. Considering the best prior art makes sense, but this may tilt the playing field in favor of larger companies able to finance PTAB trials. On the other hand, patent application owners may look to any patent owner's preliminary response in the PTAB trial to address that prior art.
Copyright © 2016 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
Tuesday, November 22, 2016
Tuesday, October 25, 2016
PTAB - AIA Review Decisions Now Available Daily
Today, the USPTO notified that "PTAB AIA review decisions are now available daily at the AIA Review Decisions webpage, which displays the current and previous business day’s decisions. The reports will be updated twice a day at 11 a.m. and 4 p.m. ET and do not include Derivation proceedings."
Copyright © 2016 Robert Moll. All rights reserved.
Copyright © 2016 Robert Moll. All rights reserved.
Sunday, April 12, 2015
Professor Robin Feldman and Reseach Fellow Evan Frondorf - Patent Demands and Initial Public Offerings - A Comment
In a study Patent Demands and Initial Public Offerings, forthcoming in the Stanford Technology Law Review, Professor Robin Feldman and Research Fellow Evan Frondorf of UC Hastings law school state a "significant majority of information technology companies received patent demands near their IPO and "almost all of that activity originated from patent NPEs." Sounds like a problem, right?
In this study the authors checked with lawyers at recently public companies about exposure to patent demands as their company developed. Mr. Frondorf explains "Patent trolls thrive on extracting settlements from startup companies that don't have the time or money to litigate, even if the claims are dubious. An IPO is new leverage that can be used against a company that wants to avoid the negative effects that pending litigation might have on its offering price or public reputation. The results are consistent with monetizers issuing demands based on the economics of patent litigation, rather than on the legitimacy of the claims. It's more evidence of the need for comprehensive patent reform."
I appreciate the research of Professor Feldman, but I am not seeing that a study revealing patent demands occur before IPOs is more evidence supporting the need for comprehensive patent reform being considered by Congress.
Patent demands made before IPOs is not a new tactic, but a long standing strategy of patent owners. As a patent lawyer at Wilson Sonsini Goodrich & Rosati from 1993 - 1998, I saw a number of tech companies get hit with patent demands and even patent lawsuits before going public. That does not prove, however, whether the patent claim is legitimate or not. Patents owners simply show up when they have the most leverage to get paid. Whether the patent owner practices the invention is not relevant to whether or not a patent is valid or infringed.
I also question the suggestion that companies near an IPO have no time or money to fight illegitimate patent claims. Many tech companies have pending patent litigation or threatened lawsuits but have the resources to handle that as well as go public. How many of them withdraw from going public because the patent lawsuit drained their resources? I would venture rarely if ever. A patent lawsuit may be resolved before the IPO, but it is not required. Instead, the risk of that patent lawsuit is disclosed in the prospectus. Whether or not it settles is up to the parties. One notable example is Yahoo's online advertising patent lawsuit before Google's IPO. Google disclosed the risk in the prospectus, and settled with Yahoo, then went public, and life went on. Sure Google had to pay a chunk of stock, but a number of observers believed Yahoo had a legitimate claim. Google had the legal talent, financial resources and considerable momentum in the search engine space that enabled it to settle that patent case on its own terms.
If a company is successful to the point of going public, it usually also has smart management, a viable business, legal talent, and the financial resources to settle or fight the patent demands before, during, and after the IPO. Further, the AIA trials give a relatively low cost way to deal with dubious patent demands today. Just before a company goes public is not when it's vulnerable to illegitimate patent demands. Higher vulnerability occurs at a much earlier stage, but as the study notes "almost no companies received demands near another important funding moment-- obtaining the first round of venture capital funding." Another vulnerable time for a startup to receive a patent demand is when seeking a first round of funding, since investors do not want to invest in that situation, but of course you have exceptions.
Copyright © 2015 Robert Moll. All rights reserved.
In this study the authors checked with lawyers at recently public companies about exposure to patent demands as their company developed. Mr. Frondorf explains "Patent trolls thrive on extracting settlements from startup companies that don't have the time or money to litigate, even if the claims are dubious. An IPO is new leverage that can be used against a company that wants to avoid the negative effects that pending litigation might have on its offering price or public reputation. The results are consistent with monetizers issuing demands based on the economics of patent litigation, rather than on the legitimacy of the claims. It's more evidence of the need for comprehensive patent reform."
I appreciate the research of Professor Feldman, but I am not seeing that a study revealing patent demands occur before IPOs is more evidence supporting the need for comprehensive patent reform being considered by Congress.
Patent demands made before IPOs is not a new tactic, but a long standing strategy of patent owners. As a patent lawyer at Wilson Sonsini Goodrich & Rosati from 1993 - 1998, I saw a number of tech companies get hit with patent demands and even patent lawsuits before going public. That does not prove, however, whether the patent claim is legitimate or not. Patents owners simply show up when they have the most leverage to get paid. Whether the patent owner practices the invention is not relevant to whether or not a patent is valid or infringed.
I also question the suggestion that companies near an IPO have no time or money to fight illegitimate patent claims. Many tech companies have pending patent litigation or threatened lawsuits but have the resources to handle that as well as go public. How many of them withdraw from going public because the patent lawsuit drained their resources? I would venture rarely if ever. A patent lawsuit may be resolved before the IPO, but it is not required. Instead, the risk of that patent lawsuit is disclosed in the prospectus. Whether or not it settles is up to the parties. One notable example is Yahoo's online advertising patent lawsuit before Google's IPO. Google disclosed the risk in the prospectus, and settled with Yahoo, then went public, and life went on. Sure Google had to pay a chunk of stock, but a number of observers believed Yahoo had a legitimate claim. Google had the legal talent, financial resources and considerable momentum in the search engine space that enabled it to settle that patent case on its own terms.
If a company is successful to the point of going public, it usually also has smart management, a viable business, legal talent, and the financial resources to settle or fight the patent demands before, during, and after the IPO. Further, the AIA trials give a relatively low cost way to deal with dubious patent demands today. Just before a company goes public is not when it's vulnerable to illegitimate patent demands. Higher vulnerability occurs at a much earlier stage, but as the study notes "almost no companies received demands near another important funding moment-- obtaining the first round of venture capital funding." Another vulnerable time for a startup to receive a patent demand is when seeking a first round of funding, since investors do not want to invest in that situation, but of course you have exceptions.
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, March 28, 2015
PTAB - Changes to Rules for AIA Trials
In PTAB's Quick-Fixes for AIA Rules Are to Be Implemented Immediately, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee discusses rule changes governing America Invents Act (AIA) trials before Patent and Trial and Appeal Board (PTAB):
"As to our first 'quick fix' rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing).
Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.
As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.
Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent."
Copyright © 2015 Robert Moll. All rights reserved.
"As to our first 'quick fix' rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing).
Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.
As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.
Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent."
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, March 24, 2015
Mullin - Life360 CEO tells others how to beat patent trolls in three not-so-easy steps
In Life360 CEO tells others how to beat patent trolls in three not-so-easy steps, Mr. Joe Mullin passes along the CEO's advice on how to beat patent trolls: "go nuclear" which means publicize the law firms and trolls involved, share the prior art with others in your industry, and "go with your gut" knowing you fight for what is right.
Whatever you think about this advice, my question is why doesn't the article talk about the option of filing a petition to invalidate the patents in the USPTO? Maybe this occurred, but the article never mentions it. It talks about sharing prior art, but the case was won on non-infringement. Either way about 2/3 of patents litigated in court have a concurrent USPTO proceeding (e.g., inter partes review). Thus, whatever happened here, many defendants are turning to this approach to invalidate patents and significantly reduce costs when the court stays the litigation.
Copyright © 2015 Robert Moll. All rights reserved.
Whatever you think about this advice, my question is why doesn't the article talk about the option of filing a petition to invalidate the patents in the USPTO? Maybe this occurred, but the article never mentions it. It talks about sharing prior art, but the case was won on non-infringement. Either way about 2/3 of patents litigated in court have a concurrent USPTO proceeding (e.g., inter partes review). Thus, whatever happened here, many defendants are turning to this approach to invalidate patents and significantly reduce costs when the court stays the litigation.
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, March 17, 2015
Stanford Law School - The PTO and Courts - April 17-18
Stanford Program in Law, Science & Technology, Samsung, and Stanford Technology Law Review are co-sponsoring The PTO and the Courts on April 17-18.
This event will discuss administrative procedures (e.g., inter partes review, post-grant review, and covered business methods) before the USPTO as an alternative or a concurrent procedure with litigation.
It's open to the public and free, but Stanford recommends registration.
April 17 will feature judges, lawyers, and academics speaking on issues lawyers face, and April 18 will feature academics.
Here is a list of speakers confirmed for April 17:
This event will discuss administrative procedures (e.g., inter partes review, post-grant review, and covered business methods) before the USPTO as an alternative or a concurrent procedure with litigation.
It's open to the public and free, but Stanford recommends registration.
April 17 will feature judges, lawyers, and academics speaking on issues lawyers face, and April 18 will feature academics.
Here is a list of speakers confirmed for April 17:
- Steve Baughman, Ropes & Gray LLP
- Judge Scott Boalick, USPTO
- Aaron Capron, Finnegan, Henderson, Farabow, Garrett & Dunner
- Judge Peter Chen, USPTO
- Professor Dennis Crouch, University of Missouri School of Law
- Andy Culbert, Microsoft
- Professor John Duffy, University of California, Irvine
- Ian Feinberg, Feinberg, Day Alberti & Thompson
- Professor Robin Feldman, Hastings College of the Law
- Judge Paul Grewal, United States District Court Northern District of California
- Naveen Modi, Paul Hastings
- Judge Kimberly Moore, United States Court of Appeals for the Federal Circuit
- David O'Brien, Haynes and Boone
- Karl Renner, Fish & Richardson
- Sasha Rao, Maynard Cooper & Gale
- Clement Roberts, Durie Tangri
- Laura Storto, Genentech, Inc.
- Lee Van Pelt, Van Pelt, Yi & James
Tuesday, November 25, 2014
Jonathan Tamimi - Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity
Tonight, I recommend reading UC Berkeley law student Jonathan Tamimi's article, Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity. The 60-page article is quite comprehensive, and has loads of data and tables regarding the results obtained in the America Invents Act trials.
In the article: "Part I discusses the historical background of the AIA. Part II navigates the AIA’s updated and expanded procedures for reexamining patent validity at the PTO. The first section of Part II details the advantages of challenging patent validity via AIA reviews relative to district court litigation. The second section presents the limitations and potential drawbacks of using AIA reviews. The third section discusses additional considerations for potential petitioners. Part III concludes with a brief summary of issues surrounding AIA reviews."
Copyright © 2014 Robert Moll. All rights reserved.
In the article: "Part I discusses the historical background of the AIA. Part II navigates the AIA’s updated and expanded procedures for reexamining patent validity at the PTO. The first section of Part II details the advantages of challenging patent validity via AIA reviews relative to district court litigation. The second section presents the limitations and potential drawbacks of using AIA reviews. The third section discusses additional considerations for potential petitioners. Part III concludes with a brief summary of issues surrounding AIA reviews."
Copyright © 2014 Robert Moll. All rights reserved.
Friday, November 14, 2014
PTAB - American Invents Act (AIA) Trials Statistics
Tonight, I recommend reading the PTAB statistics regarding AIA trials. In short, the number of petitions filed for post-grant validity challenges has increased from about 25 petitions in September 2012 to nearly 200 petitions in October 2014. As long as people are getting favorable results, the relative low cost of inter partes review (IPR) will motivate the continuing increase, while post-grant review filings remain miniscule. Post-grant review filings should increase as more patents become eligible for challenge, but post-grant review may never reach the filing of IPR, because it is viewed as a costly solution compared to IPR. Most of the IPRs are being filed against software, electrical, and/or mechanical patents, and no petitions were filed to challenge the validity of design patents.
Copyright © 2014 Robert Moll. All rights reserved.
Copyright © 2014 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.
Tuesday, October 21, 2014
AIPLA - Comments on PTAB Rules and Trial Practice Guide
On October 16, 2014 the American Intellectual Property Law Association (AIPLA) filed comments on the PTAB Rules and Trial Practice Guide on rules for post-grant review and inter partes review before the Patent Trial and Appeal Board (PTAB).
The AIPLA presents some pro-patent owner positions in the comment letter. I will list a few with quick comments.
AIPLA argues PTAB values efficiency more than fairness to the participants. My comment is this sounds correct, but in view of the PTAB heavy workload and statutory deadlines, PTAB can't fix this soon. Beside extending the length of these proceedings require Congressional law be modified and ultimately might benefit lawyers more than the parties.
Second, the AIPLA argues it's time to abandon the "broadest reasonable interpretation" for claims, since AIA trials are adjudicative rather than prosecution. I expect powerful forces to push back on this because they would face infringement of narrowly interpreted claims in court that might otherwise be held invalid in the USPTO.
In another place, the AIPLA argues PTAB should not require a motion to amend claims be grounded on a proof of patentability of the amended claim, since it distorts the presumption of validity of US patents and "short-circuits the burden" of the petitioner to prove unpatentability. Since nearly all motions to amend claims are denied, something should be done to make it possible to enter amendments to claims. One approach might be the patent owner could be just required to prove the narrow amended claim satisfies 35 USC 112 rather than prove it satisfies the requirements of 35 USC 102 and 35 USC 103, which were met when the broader claim was allowed.
Copyright © 2014 Robert Moll. All rights reserved.
The AIPLA presents some pro-patent owner positions in the comment letter. I will list a few with quick comments.
AIPLA argues PTAB values efficiency more than fairness to the participants. My comment is this sounds correct, but in view of the PTAB heavy workload and statutory deadlines, PTAB can't fix this soon. Beside extending the length of these proceedings require Congressional law be modified and ultimately might benefit lawyers more than the parties.
Second, the AIPLA argues it's time to abandon the "broadest reasonable interpretation" for claims, since AIA trials are adjudicative rather than prosecution. I expect powerful forces to push back on this because they would face infringement of narrowly interpreted claims in court that might otherwise be held invalid in the USPTO.
In another place, the AIPLA argues PTAB should not require a motion to amend claims be grounded on a proof of patentability of the amended claim, since it distorts the presumption of validity of US patents and "short-circuits the burden" of the petitioner to prove unpatentability. Since nearly all motions to amend claims are denied, something should be done to make it possible to enter amendments to claims. One approach might be the patent owner could be just required to prove the narrow amended claim satisfies 35 USC 112 rather than prove it satisfies the requirements of 35 USC 102 and 35 USC 103, which were met when the broader claim was allowed.
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, August 12, 2014
USPTO Statistics on AIA Procedures
Tonight, I was curious how many people are taking advantage of the America Invents Act (AIA) procedures such as inter partes review and preissuance submission. I started by checking on the USPTO web site, which has a page AIA statistics that gives the raw number of filings for the AIA procedures from their inception on September 16, 2012 up to June 30, 2014.
First, some AIA procedures are being increasingly used while others are ignored. For example, inter partes review is more often than not the key strategy to consider if you have been sued for patent infringement. Thus, I expect patent infringement actions without a concurrent inter partes review to become even more rare (i.e., Concurrent court/USPTO cases are about 2/3) as defendants become aware of the benefits. In contrast, covered business method patent review filings don't appear be increasing in a big way due to the subject matter restriction, and perhaps because inter partes review is more cost effective. We don't know much about post-grant review just yet, since the first petition was just filed and we still don't have that many issued US patents filed after March 16, 2013.
As far as the other administrative procedures, preissuance submission is seeing only a modest number of filings (e.g., 100 filings is a good month!) given the number of applications pending in the USPTO. Supplemental examination has seen surprisingly little use (e.g., 7 filings per month).
Note the raw filings do not indicate they complied with US patent law and regulations.
Also see the USPTO data for the administrative trials at the PRPS Filing System.
Copyright © 2014 Robert Moll. All rights reserved.
First, some AIA procedures are being increasingly used while others are ignored. For example, inter partes review is more often than not the key strategy to consider if you have been sued for patent infringement. Thus, I expect patent infringement actions without a concurrent inter partes review to become even more rare (i.e., Concurrent court/USPTO cases are about 2/3) as defendants become aware of the benefits. In contrast, covered business method patent review filings don't appear be increasing in a big way due to the subject matter restriction, and perhaps because inter partes review is more cost effective. We don't know much about post-grant review just yet, since the first petition was just filed and we still don't have that many issued US patents filed after March 16, 2013.
As far as the other administrative procedures, preissuance submission is seeing only a modest number of filings (e.g., 100 filings is a good month!) given the number of applications pending in the USPTO. Supplemental examination has seen surprisingly little use (e.g., 7 filings per month).
Note the raw filings do not indicate they complied with US patent law and regulations.
Also see the USPTO data for the administrative trials at the PRPS Filing System.
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, May 20, 2014
PTAB - How to Make Successful Claim Amendments in AIA Trials
At the AIA Trials conference at Santa Clara Law school on April 29, 2014, the Patent Trial and Appeal Board (PTAB) administrative judges noted it is difficult to amend claims during an inter partes review (IPR), post-grant review (PGR), or covered business methods (CBM) review (i.e., the AIA proceedings).
Part of the problem appears to be attorneys are confusing claim amendment practice in AIA trials with that employed in patent prosecution. In prosecution of a US patent application one can freely amend a claim before the final Office action as long as the amended claim meets the requirements of 35 USC 112. Once amended, the burden shifts to the examiner to establish how the amended claim is unpatentable. In IPR, PGR, or CBM proceedings, the patent owner can only file a motion proposing to amend a claim then bears the burden to show the claim is patentable. For whatever reason, patent owners are having a difficult time meeting these two requirements and are not getting any claim amendment entered in the AIA proceedings, which can invalidate the patent claim.
For tips on how to succeed on getting amendments entered, please see USPTO Message from PTAB: How to Make Successful Claim Amendments in AIA Trial Proceedings
Updated May 22, 2014: We now have exactly one case where the motion to amend claims was permitted. Although these are relative new proceedings, the comment during the conference that "it is difficult to amend claims in an AIA trial" understates the difficulty patent owners currently face.
Copyright © 2014 Robert Moll. All rights reserved.
Part of the problem appears to be attorneys are confusing claim amendment practice in AIA trials with that employed in patent prosecution. In prosecution of a US patent application one can freely amend a claim before the final Office action as long as the amended claim meets the requirements of 35 USC 112. Once amended, the burden shifts to the examiner to establish how the amended claim is unpatentable. In IPR, PGR, or CBM proceedings, the patent owner can only file a motion proposing to amend a claim then bears the burden to show the claim is patentable. For whatever reason, patent owners are having a difficult time meeting these two requirements and are not getting any claim amendment entered in the AIA proceedings, which can invalidate the patent claim.
For tips on how to succeed on getting amendments entered, please see USPTO Message from PTAB: How to Make Successful Claim Amendments in AIA Trial Proceedings
Updated May 22, 2014: We now have exactly one case where the motion to amend claims was permitted. Although these are relative new proceedings, the comment during the conference that "it is difficult to amend claims in an AIA trial" understates the difficulty patent owners currently face.
Copyright © 2014 Robert Moll. All rights reserved.
Labels:
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America Invents Act,
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covered business method,
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Tuesday, May 6, 2014
America Invents Act (AIA) Patent Trial and Appeal Board - AIA Trial Roundtable in Denver and Webcast on May 8
The Patent Trial and Appeal Board (PTAB) is concluding the AIA Trial Roundtables in Denver on Thursday, May 8.
I was able to attend the roundtable in Silicon Valley a week ago, and enjoyed the presentations and mingling with the patent community. If you are outside the Denver area, you should catch the webcast that starts at 1 pm MDT. The USPTO has done an excellent job of preparing for the roundtables!
Here is the access link to watch, learn, and share feedback with the administrative patent judges (APJs) about the AIA trials: http://www.cba-cle.org/uspto.html
As stated in the reminder, "the program is broken into three segments, so feel free to join for any or all of them:
• Segment 1 (one hour): lecture to highlight trial filing statistics and lessons learned about inter partes review and covered business method review proceedings
• Segment 2 (one hour): mock conference call focused on a motion to amend the claims and a motion for additional discovery
• Segment 3 (approximately 1.5 hours): panel discussion with expert AIA trial practitioners and APJs covering all phases of the trial process."
Copyright © 2014 Robert Moll. All rights reserved.
I was able to attend the roundtable in Silicon Valley a week ago, and enjoyed the presentations and mingling with the patent community. If you are outside the Denver area, you should catch the webcast that starts at 1 pm MDT. The USPTO has done an excellent job of preparing for the roundtables!
Here is the access link to watch, learn, and share feedback with the administrative patent judges (APJs) about the AIA trials: http://www.cba-cle.org/uspto.html
As stated in the reminder, "the program is broken into three segments, so feel free to join for any or all of them:
• Segment 1 (one hour): lecture to highlight trial filing statistics and lessons learned about inter partes review and covered business method review proceedings
• Segment 2 (one hour): mock conference call focused on a motion to amend the claims and a motion for additional discovery
• Segment 3 (approximately 1.5 hours): panel discussion with expert AIA trial practitioners and APJs covering all phases of the trial process."
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
Thursday, May 9, 2013
Schumer Bill to Expand Post-Grant Review Beyond Business Methods Patents Used in Financial Products and Services
On May 2, U.S. Senator Charles Schumer introduced a small but important senate bill (S. 866) that would expand post-grant review (PGR) to a patent claiming a method or apparatus for performing data processing or other operations used in the practice, administration, or management of an enterprise, product, or service. Currently, the transitional business method patent review is limited to business methods used in financial products and services. This bill would allow a PGR challenge to all business method patents under 35 USC 101, 102, 103, and/or 112. Senator Schumer's press release gives details. This bill would make business method patent review a permanent law.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, December 4, 2012
America Invents Act - Proposed Bill H.R. 6621 Technical Amendment to AIA
On November 30, Congressman Smith introduced a bill H.R. 6621 to change language in the America Invents Act (AIA).
Some refer to it as a "technical amendment" that corrects errors in the AIA. However, it buries a provision that will eliminate many if not all pre-GATT applications (i.e., about 200 applications filed before June 7, 1995) if they fail to issue as US patents within one year of the bill's enactment. It does this by rendering them ineligible for a patent term that runs 17 years from grant date. Instead their patent term would only run 20 years from filing date. Even if only 0.02% of all pending applications (e.g., 1.2M) are affected, it sounds like some want to eliminate or greatly reduce their patent terms. Do the math!
On the other hand, it doesn't seek to change the estoppel standard for post grant review, which is wise given the arguments raised in its favor. See e.g., Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint.
Copyright © 2012 Robert Moll. All rights reserved.
Some refer to it as a "technical amendment" that corrects errors in the AIA. However, it buries a provision that will eliminate many if not all pre-GATT applications (i.e., about 200 applications filed before June 7, 1995) if they fail to issue as US patents within one year of the bill's enactment. It does this by rendering them ineligible for a patent term that runs 17 years from grant date. Instead their patent term would only run 20 years from filing date. Even if only 0.02% of all pending applications (e.g., 1.2M) are affected, it sounds like some want to eliminate or greatly reduce their patent terms. Do the math!
On the other hand, it doesn't seek to change the estoppel standard for post grant review, which is wise given the arguments raised in its favor. See e.g., Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, September 5, 2012
America Invents Acts - Electronic Filing System for Post-Grant Procedures - USPTO Free Seminar September 6, 2012
If you plan to file papers in the new post-grant procedures (e.g., post-grant review, inter partes review, and the transitional program for business methods), you may want to attend the Patent and Trial and Appeal Board's seminar. The Board plans to preview how to file papers using the new electronic file system.
The USPTO will preview:
The USPTO press release: PRPS Public Preview - Patent Review Processing System Preview gives the details on how to sign up.
Copyright © 2012 Robert Moll. All rights reserved.
The USPTO will preview:
- An overview of the new trials available on September 16, 2012
- An overview of the Patent Trial and Appeal Board home page resources
- A panel presentation on the Patent Review Processing System (PRPS) filing and record management system
- A Q&A session
The USPTO press release: PRPS Public Preview - Patent Review Processing System Preview gives the details on how to sign up.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, May 16, 2012
Post-Grant Proceedings Under the America Invents Act - The 12 Month Rule
On May 15, 2012, Teresa Stanek Rea of the USPTO posted: Building a Better Post Grant on Director Kappo's Blog. She talks about how the USPTO plans to build a better post-grant proceedings under the America Invents Act (AIA) that will serve as an efficient alternative to patent litigation.
Ms. Stanek Rea states "Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals." Ms. Stanek Rea notes the AIA establishes post-grant review, inter partes review and the transitional program for covered business method patents by the Board of Patent Appeals and Interferences (Board) which will be referred to as the Patent Trial and Appeal Board.
Congress has limited the length of these post-grant proceedings to 12 months, plus six months for exceptional cases. To explain how the PTO will complete a post-grant proceedings in 12 months Ms. Stanek Rea states:
1. The PTO is adding many judges with considerable patent prosecution and litigation experience to the 120 judges currently on the Board.
2. The PTO's rule making will incorporate input from the user community, the PTO, the federal court, the ITC, and interferences.
3. The AIA's post-grant procedures rules will be streamlined to what is essential to decide the case. Thus, dilatory practices, wasteful motions, and procedural traps that drove older interferences to last 4-7 years will not be permitted.
4. Judges will be given great latitude to shepherd cases to stay on schedule.
Although Ms. Stanek Rea envisions reaping the benefits of a straightforward process (e.g., a trial), implemented by experienced judges, resulting in a fair and efficient proceeding, the post doesn't address how the PTO will keep stay on such a tight schedule plus reduce the backlog of more than 30,000 ex parte appeals now pending.
Ms. Stanek Rea states "Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals." Ms. Stanek Rea notes the AIA establishes post-grant review, inter partes review and the transitional program for covered business method patents by the Board of Patent Appeals and Interferences (Board) which will be referred to as the Patent Trial and Appeal Board.
Congress has limited the length of these post-grant proceedings to 12 months, plus six months for exceptional cases. To explain how the PTO will complete a post-grant proceedings in 12 months Ms. Stanek Rea states:
1. The PTO is adding many judges with considerable patent prosecution and litigation experience to the 120 judges currently on the Board.
2. The PTO's rule making will incorporate input from the user community, the PTO, the federal court, the ITC, and interferences.
3. The AIA's post-grant procedures rules will be streamlined to what is essential to decide the case. Thus, dilatory practices, wasteful motions, and procedural traps that drove older interferences to last 4-7 years will not be permitted.
4. Judges will be given great latitude to shepherd cases to stay on schedule.
Although Ms. Stanek Rea envisions reaping the benefits of a straightforward process (e.g., a trial), implemented by experienced judges, resulting in a fair and efficient proceeding, the post doesn't address how the PTO will keep stay on such a tight schedule plus reduce the backlog of more than 30,000 ex parte appeals now pending.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, May 14, 2012
Board of Patent Appeals Backlog Enormous and Growing
On May 3, 2012, Director Kappos noted that the Board of Patent Appeals and Interferences (BPAI) has a large backlog of ex parte appeals. How large? In April 2012, Chief Administrative Judge Smith gave a presentation with slides at the AIPLA Spring Conference that indicates the growing backlog is over 30,000 cases.
The USPTO has made various attempts to attack the enormous backlog. In December 2011, Chief Judge Smith proposed various ways to streamline the appeals process in a blog post here but the backlog continues to grow. In the AIPLA presentation in April 2012, Chief Administrative Judge Smith suggests per curiam decisions and hiring more administrative judges would help.
Hiring more administrative judges, streamlining the appeal process, and per curiam decisions will help, but to really reduce the backlog the USPTO must increase the quality of initial examination. One way to increase quality is to liberally encourage PTO interviews. Interviews to discuss concrete detailed proposed amendments and replies are the best way to identify issues, reach a mutual understanding, and proceed on how to claim an invention with respect to the prior art. Examiners should initiate interviews and never refuse a request for an interview even after a final Office action. One reason applicants appeal is they have grown frustrated with a revolving door of prior art rejections, i.e., a paper exchange that goes round and round and is even at times sustained by some examiner's desires to get another RCE on their docket. Until we address this type of problem in examination, the appeal backlog is not going away.
This is not to suggest every application interviewed contains patentable subject matter and should result in a patent. Instead, the result should be that applicants and examiner understand what claims, if any, are patentable. And examination should end with a mutual understanding that nothing further would be gained by an appeal to the Board. Reaching a mutual understanding requires listening to someone with contrary views. It is difficult work, but I don't see how to avoid it. We don't need to hire more administrative judges or examiners, but retain and hire better examiners and administrative judges, who can rapidly assimilate the technology, the legal arguments and are paid sufficiently that they can make a career at the PTO. If we retain the best examiners, we will see the backlog reduced. And everyone should benefit from their experience. Otherwise, we accept that some of the best examiners opt to leave for law firms after working a few years at the PTO, that we have large backlog at the examination which includes 42% RCEs, and that we have an appeal backlog of about 30,000 cases.
On September 16, 2012, the America Invents Act (AIA) will add new post-grant procedures to the ex parte appeal workload being handled by the BPAI (later the Patent Trial and Appeal Board (PTAB)). Thus, the PTO needs to turn this around in the next six months to avoid further growth of the appeal backlog.
Copyright © 2012 Robert Moll. All rights reserved.
The USPTO has made various attempts to attack the enormous backlog. In December 2011, Chief Judge Smith proposed various ways to streamline the appeals process in a blog post here but the backlog continues to grow. In the AIPLA presentation in April 2012, Chief Administrative Judge Smith suggests per curiam decisions and hiring more administrative judges would help.
Hiring more administrative judges, streamlining the appeal process, and per curiam decisions will help, but to really reduce the backlog the USPTO must increase the quality of initial examination. One way to increase quality is to liberally encourage PTO interviews. Interviews to discuss concrete detailed proposed amendments and replies are the best way to identify issues, reach a mutual understanding, and proceed on how to claim an invention with respect to the prior art. Examiners should initiate interviews and never refuse a request for an interview even after a final Office action. One reason applicants appeal is they have grown frustrated with a revolving door of prior art rejections, i.e., a paper exchange that goes round and round and is even at times sustained by some examiner's desires to get another RCE on their docket. Until we address this type of problem in examination, the appeal backlog is not going away.
This is not to suggest every application interviewed contains patentable subject matter and should result in a patent. Instead, the result should be that applicants and examiner understand what claims, if any, are patentable. And examination should end with a mutual understanding that nothing further would be gained by an appeal to the Board. Reaching a mutual understanding requires listening to someone with contrary views. It is difficult work, but I don't see how to avoid it. We don't need to hire more administrative judges or examiners, but retain and hire better examiners and administrative judges, who can rapidly assimilate the technology, the legal arguments and are paid sufficiently that they can make a career at the PTO. If we retain the best examiners, we will see the backlog reduced. And everyone should benefit from their experience. Otherwise, we accept that some of the best examiners opt to leave for law firms after working a few years at the PTO, that we have large backlog at the examination which includes 42% RCEs, and that we have an appeal backlog of about 30,000 cases.
On September 16, 2012, the America Invents Act (AIA) will add new post-grant procedures to the ex parte appeal workload being handled by the BPAI (later the Patent Trial and Appeal Board (PTAB)). Thus, the PTO needs to turn this around in the next six months to avoid further growth of the appeal backlog.
Copyright © 2012 Robert Moll. All rights reserved.
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.
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