LexisNexis® Legal Newsroom
Williams Mullen: Changes in Pre-Grant and Post-Grant Challenges at the U.S. Patent Office (USPTO)

Editor Timothy J. Bechen, Alison S. McGeary The Leahy-Smith America Invents Act, H.R. 1249 ("the Act") will become law once the President signs it this month. The Act proposes many changes to current pre-grant and post-grant challenges and further introduces enhanced post-grant...

Patents Post-Grant: AIA Change to Reexamination Standard Aids Motion to Stay

Court Cites Change in Inter Partes Reexamination Standard as Justifying Stay When faced with the assertion of a patent of questionable validity prospective defendants increasingly resort to patent reexamination. Once a suit is filed, the opportunity to obtain a stay of an ongoing district court infringement...

Patents Post-Grant: Discovery Practices before the Patent Trial & Appeal Board

Practitioners Preoccupied with Discovery Opportunities Generally speaking, "discovery" is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Of course, discovery is not permitted in patent...

Patents Post-Grant: Taxing USPTO Reexamination Resources

Tax Strategy Patent Reexamination Continues Despite AIA Provision Back in January of 2011, the Director of the USPTO initiated reexamination of U.S. Patent 6,567,790 ( here ), which claims a method of minimizing transfer tax liability. In 2007, the '790 Patent was asserted against a corporate...

Patents Post-Grant: Enhanced Patent Reexamination Speed Coming Soon?

Reduction in Incoming Requests & InterPartes Workload to Free Up Resources Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last fall. Starting in September of 2012, these new...

Patents Post-Grant: Patent Reexamination Surge Headed to USPTO

Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent Trial & Appeal Board (PTAB). These changes...

Patents Post-Grant: CRU Workload Extending Patent Reexamination Pendency?

Reexamination Filing Surge Dismissed as Speculative Back in September, I explained that the USPTO received an unprecedented number of reexamination filings in the closing days before the September 16th . This surge was a result of several factors: First, the fee for ex parte patent examination was...