Top Stories of 2011
2011 was perhaps the most significant year to date in terms of post
grant patent practice. The perennial legislative effort generally known
as "patent reform" finally bore fruit as the Leahy-Smith America Invents
Act (AIA); patent reexamination filings in 2011 reached an all time high;
patent reissue practice was explored and clarified by the CAFC; and
patent litigation parallel with patent reexamination continues to expand
as a well established strategic practice.
As to the America Invents Act, several entirely new post grant patent
proceedings have now been enacted into law (effective September 16,
2012). A summary of these proceedings, and discussions of their
expected impact are linked below (and throughout the blog).
Post Grant Review
Inter Partes Review
Transitional Business Method Patent Challenge
The USPTO is scheduled to issue a notice of proposed rule making on these proposed proceedings within the next 2-3 weeks. 2012 will bring much more detail to the broad legislative concepts found in the AIA.
As to patent reissue, the CAFC has clarified the scope of error necessary for patent reissue (Ex Parte Tanaka) and has addressed the complexities of the recapture doctrine (Ex Parte Mostafazadeh). The CAFC is expected to issue their decision in Ex Parte Staats, another important patent reissue case, in the coming weeks.
Patent reexamination has been impacted by the passage of the AIA in that the SNQ standard is now available only for ex parte patent examination. Likewise, the USPTO has proposed their own changes to patent reexamination practice to decrease pendency. With the passage of the AIA, it is unclear where this earlier proposal now stands.
2012 is expected to bring even further attention to post grant patent
practice as it expands and matures under the new legislation. Stay
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