Intellectual Property

Recent Posts

IPR Final Decisions Track Reexamination Outcomes
Posted on 2 Oct 2014 by Scott A. McKeown

USPTO Inter Partes Patent Challenge Statistics Remain Consistent With two full years of Inter Partes Review (IPR) proceedings on the books, we now have an adequate sample of decisions—158 through 9/26/14. While most IPR decisions are still pending... Read More

NPE Attempts to Exact License by Threat of IPR
Posted on 9 Aug 2013 by Scott A. McKeown

NPE Files Unsuccessful IPR Against Target Over the years I have seen a handful of non-practicing entities (NPEs) pursue post grant challenges against the patents of their opponent. This “turning of the tables” by the NPE is an odd strategy... Read More

Top 5 Mistakes in IPR Petition Drafting
Posted on 19 Sep 2013 by Scott A. McKeown

Avoid These Litigation Inspired Drafting Errors One of the biggest misconceptions about the new patentability challenges of the America Invents Act (AIA) is the notion that these administrative trial proceedings are somehow analogous to district court... Read More

PTAB Institution Rate Dips Into 60% Range
Posted on 22 Jul 2014 by Scott A. McKeown

Past Three Months of PTAB Statistics Tell A Different Story Last week, I explained that the institution rate of PTAB trials in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings had dropped, on average, by roughly 10 percentage... Read More

Work Product Immunity & PTAB Proceedings
Posted on 21 Jun 2013 by Scott A. McKeown

Attorney Work Product in Unsuccessful IPR Challenges Inter Partes Review (IPR) includes a statutory estoppel provision designed to prevent harassment of a patentee. The statute provides that an IPR challenger that fails to secure cancellation of a... Read More

Patents Post-Grant: CAFC Sides with USPTO on SNQ Debate
Posted on 3 Oct 2012 by Scott A. McKeown

CAFC Finds SNQ Denial Not Subject to Appeal in Inter Partes Patent Reexamination Back in March of 2011, an expanded panel of the Board of Patent Appeals & Interferences (BPAI) decided Belkin International et al., v. Optimumpath LLC . Belkin's... Read More

Patents Post-Grant: USPTO to Revise Ex Parte Patent Reexamination Procedures
Posted on 9 Jan 2012 by Scott A. McKeown

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... Read More

Patents Post-Grant: USPTO Page Limit Proposals Need Recalibration
Posted on 13 Mar 2012 by Scott A. McKeown

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... Read More

Court Unimpressed by PTO Review of Prior Art
Posted on 5 Aug 2014 by Scott A. McKeown

Court Finds Clear & Convincing Invalidity Despite Previous USPTO Review The USPTO applies the preponderance of the evidence standard in post-grant patent proceedings to assess patentability relative to applied prior art. For at least this reason... Read More

Patents Post-Grant: CAFC Probes Statutory Basis for Third Party Declaration Filings in Patent Reexamination
Posted on 25 Apr 2012 by Scott A. McKeown

Can Declaration Evidence be Considered "Written Comments" Since the advent of inter partes patent reexamination (IPX), both Requesters and Patentees alike have relied upon declaration evidence to bolster their respective positions. Practically... Read More

Patents Post-Grant: Inter Partes Patent Reexamination Standard to Tighten in 30 Days
Posted on 24 Aug 2011 by Scott A. McKeown

Enactment of America Invents Act to Change Inter Partes Patent Reexamination Practice Immediately The USPTO is currently hard at work preparing to implement and adapt agency practices to comport with the various provisions of the Leahy-Smith America... Read More

Patents Post-Grant: SNQ Review Options in Patent Reexamination
Posted on 8 May 2011 by Scott A. McKeown

SNQ Review Options Vary Significantly Between Ex Parte & Inter Partes Patent Reexamination As discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability... Read More

Patent Reexamination Speed Presents New Opportunity
Posted on 12 Aug 2015 by Scott A. McKeown

Improved Speed For Overlooked Post-Grant Patent Options Once upon a time, patent reexamination was the only mechanism to challenge a U.S. patent at the USPTO. First introduced as an ex parte proceeding in the 1980s, patent reexamination was expanded... Read More

Patents Post-Grant: USPTO Prepares to End Inter Partes Patent Reexamination
Posted on 26 Sep 2011 by Scott A. McKeown

Draft Rules Released by USPTO to Transition to New Inter Partes Review Proceeding Upon enactment of the America Invents Act on September 16, 2011, the USPTO was forced to change their previous SNQ based analysis for granting a request for inter partes... Read More

USPTO Publishes Final Rules for Administrative Trials Under America Invents Act
Posted on 14 Aug 2012 by LexisNexis Patent Community Staff

From the USPTO : Inter Partes Review, Post-Grant Review, and Covered Business Method Patents Addressed Washington - The U.S. Department of Commerce's United States Patent and Trademark Office (USPTO) announced today [August 13th] that it... Read More