Post Grant Expectations For 2011

Post Grant Expectations For 2011

Change on the Horizon for 2011

With 2010 coming to a close, we can look back and see many positive changes at the USPTO. Ex parte and inter partes appeal brief processing has been streamlined, new user friendly BPAI appeal rules are proposed, new pilot programs are being introduced, and the pendency of reexamination proceedings is slowly improving. (I will post a podcast next week going through the full 2010 retrospective, so cancel those holiday plans!)

Looking forward to 2011 there is still significant uncertainty as to the status of patent reform, at least the kind expected from Congress. Will this be the year that something....anything.....comes out of Congress? Patent Reform is still on the minds of Congress, perhaps more so than in past years as it has the potential to be sold as a no-cost economic stimulus. Yet, courts and the USPTO continue to drive the real change in U.S. patent law, especially as it relates to post grant practice before the USPTO.

So, what can we look forward to in 2011?

Aside from the never ending patent reform drama, the CAFC is slated to decide three important patent reissue cases this year, In re Tanaka, In re Staats, and In re Mostafazadeh. Further, CAFC guidance on the inequitable conduct standard is imminent in Therasense, Inc. v. Becton Dickinson and Co. Meanwhile, the Supreme Court is considering perhaps the most important patent litigation case since Festo in i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp.

Finally, and perhaps of most interest to me, the USPTO is working on a new rules package to overhaul aspects of patent reexamination and patent reissue practice.

With patent reexamination filings increasing significantly year over year, and court's looking to the USPTO for guidance on concurrently litigated patents, it is important that the USPTO focus on keeping the patent reexamination machine humming. To this end, the Central Reexamination Unit has grown in the number of examiners over the past few months, and USPTO management is focused on improving patent reexamination responsiveness. Likewise, patent reissue has been largely ignored over the years, as a result, responsiveness to such filings by the Office has been inconsistent sluggish.

Although, there has been no official announcement, a patent reissue/reexamination rules package should be expected in the coming months designed to improve the responsiveness and quality of these important proceedings. Details on the proposed changes are scant at this point, but it appears at least that patent reissue processing will shifted in some manner to a special group of examiners, perhaps even the Central Reexamination Unit itself. I will keep my fingers crossed; that kind of change is long overdue.

With respect to post grant proceedings at the USPTO, 2011 is shaping up to be a year of change.....I am looking forward to it.

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