Patents Post-Grant: Post Grant Dead Zone Coming Soon

PGR Window Anomaly to Encourage Early Litigation? Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA ). Of course, it will take several years for such patents to issue from...

Patents Post-Grant: General Litigators to Practice Before the New Patent Trial & Appeal Board?

Patent Bar Required or Not? The USPTO continues to work to fashion rules to implement the new post grant proceedings of the Leahy-Smith America Invents Act (AIA). One can only speculate that the new "trial" like, post grant proceedings of the AIA will be closely modeled on the procedures...

Patents Post-Grant: Tech Giants Weigh in On USPTO Post Grant Rule Making Effort

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules , which include Inter Partes Review & Post Grant,...

McNees Wallace & Nurick LLC: Post-Grant Review and Inter Partes Review – New Tools from the America Invents Act

By Elizebeth M. Maag The new patent law creates two new post grant review provisions to provide administrative alternatives for parties to challenge the validity of issued patents more quickly and more cost effectively than in traditional litigation. These provisions are identified as post-grant...

Patents Post-Grant: USPTO to Revise Ex Parte Patent Reexamination Procedures

Ex Parte Patent Reexamination Practices Adjusted to Account for Estoppel The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request...

Patents Post-Grant: New USPTO Fee Setting to Drive Filing Behaviors?

USPTO Fee Structure to Discourage Conduct? It is expected that the rules to implement post-grant review (PGR), inter partes review (IPR) and transitional business methods post-grant review (TBMP) proceedings will be printed in the Federal Register this coming Tuesday. Included in the new rules...

USPTO Proposes Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions

From the US Patent and Trademark Office: Washington - The United States Patent and Trademark Office (USPTO) has proposed a consolidated set of rules related to trial practice before the Patent Trial and Appeal Board. The proposed rules implement the provisions of the Leahy-Smith America Invents Act...

Patents Post-Grant: Post Grant Fee Structure a Boon for Patent Trolls?

Modern Patent Troll Business Model Insulated from New Post Grant Challenges Roughly two weeks ago the USPTO published the last of the Post Grant related rule packages established by the America Invents Act (AIA). The rule packages propose hefty filing fees for both Post Grant Review (PGR) and Inter...

Patents Post-Grant: USPTO Page Limit Proposals Need Recalibration

Proposed Page Limits Based on Interference Model As discussed previously, the fees proposed to initiate for Post Grant Review (PGR) and Inter Partes Review (IPR) may be too cost prohibitive for many filers . Yet, perhaps more troubling than the proposed fee structure is the extreme page limits proposed...

Patents Post-Grant: USPTO Post Grant Rule Proposals to Force Piecemeal Practice?

Severe Page Limit Restrictions Likely to Force Parallel Filings The page limit restrictions proposed by the USPTO for the new post grant proceedings of the America Invents Act (AIA) are quite severe. The currently proposed rules set a maximum 50 page limit for requests to initiate Inter Partes Review...

Patents Post-Grant: AIA Changes to Greatly Increase Stays of District Court Actions?

Speedy, One Sided Estoppel to Force Judicial Deference The estoppel provisions of Post Grant Review (PGR) and Inter Partes Review (IPR) are markedly different than those in existence today for I n ter Partes Reexamination (IPX). Most importantly, PGR/IPR estoppel attaches upon a written determination...

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: Senator Urges USPTO to Tackle Software & E-Commerce Patents

Transitional Program for Covered Business Method Patents (TPCBMP) The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the USPTO on September 16, 2012. The new post grant option essentially provides that any "covered business method patent" may be...

Building a Better Post Grant

From the U.S. Patent and Trademark Office : Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea Currently, the USPTO has two principal ways of challenging granted patents - inter partes reexamination and ex parte reexamination...

Patents Post-Grant: Real-Party-In-Interest & Privies before the USPTO

Reach of Estoppel More of a Concern After AIA The application of statutory estoppel to patent challengers was a concept first introduced in 1999 with the advent of inter partes patent reexamination (IPX). Initially, many sensationalized the estoppel effect of IPX together with the unpredictability...

Patents Post-Grant: Preliminary Injunctions an Even Tougher Sell Post AIA?

AIA Post Grant Trial Mechanisms: Game Changers Currently, Patentees anticipating a motion to stay a parallel litigation pending patent reexamination will often pursue a preliminary injunction (PI) to bolster their argument that a stay would be prejudicial as between competitors. That is to say, the...

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: Settling Post Grant Patent Proceedings

Will Contesting Parties Embrace the New Post Grant Settlement Provision? One of the more intriguing provisions of the new post grant patent proceedings of the America Invents Act (AIA) is the ability to settle these patentability disputes by agreement. Unlike existing patent reexamination practices...

Patents Post-Grant: Obtaining an Electronic Filing Date at the PTAB

Satisfying the Electronic Filing Requirements of PRPS As discussed earlier this week [Aug. 20-24], the Patent Trial & Appeal Board (PTAB) of the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the America invents Act. Unless...

Patents Post-Grant: Anonymity of Patent Reexamination Requests

Revised Rule on Anonymous Requests Subject to Practitioner Interpretation The estoppel provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP) will impact related court proceedings involving the same patent , and USPTO...

Brinks Hofer Gilson & Lione: Strategies for Post-Grant Review

The America Invents Act (AIA) introduces several new procedures for challenging the validity of an issued patent before the US Patent and Trademark Office (USPTO), with the intention of reducing the time and expense associated with litigation. The post-grant review procedure of 35 USC §§321...

Patents Post-Grant: Section 101 as a Basis for a Post Grant Patent Challenge

USPTO Clarifies Stance on 101 Challenges Before the PTAB Over the past few weeks, commentators have been buzzing about the ability/inability to challenge a patent on the grounds that the claims are not directed to statutory subject matter ( 35 U.S.C. § 101 ). Under the discussed theories, a 101...

Patents Post-Grant: The Asymmetric Estoppel of Business Method Patent Challenges

Unsuccessful CBM Challengers Forced Back into Court? As discussed last week [Oct. 8th - 12th], the Transitional Program for Covered Business Method Patents, or "CBM" proceeding offers significant advantages to qualifying patent challengers . While technically a Post Grant Review (PGR) proceeding...