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Patents Post-Grant: Inter Partes Patent Reexamination Standard to Tighten in 30 Days

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 Invents Act. As many features of the legislation...

Patents Post-Grant: USPTO Prepares to End Inter Partes Patent Reexamination

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 patent reexamination . The new standard for any...

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...

Foley & Lardner LLP: USPTO Issues Proposed Rules Packages to Implement America Invents Act

By Stephen B. Maebius , Courtenay Brinckerhoff , Kristel Schorr and Benjamin A. Berkowitz On February 7, 2012, the USPTO released seven proposed rules packages to implement the new trial proceedings that the Patent Trial and Appeal Board (Board) will conduct under the Leahy-Smith America Invents Act...

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 Proposal to Destabilize Large Patent Portfolios

Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions...

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: Will Patentees File Preliminary Responses to Post Grant Challenges?

Added Rebuttal Opportunity of Limited Value to Patentees When faced with a third party request for either ex parte patent (EXP) reexamination or inter partes patent (IPX) reexamination, a Patentee must sit helplessly by and await the determination of the USPTO to grant or deny the request. That is...

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...

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...

USPTO Publishes Final Rules for Administrative Trials Under America Invents Act

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 will publish final rules in the Federal Register...

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...

Common Patentee Missteps in Inter Partes Review

Preliminary Responses: Just Because You Can Doesn't Mean You Should The new post grant patentability challenges of the America Invents Act (AIA) have been warmly embraced by the public as a cost effective patent dispute resolution tool . Patent challengers have quickly leveraged these new...

Senate Moves to Derail Gains of America Invents Act

Patent Act Rewritten to Appease Bio/Pharma Lobby In a surprising change of course, the Senate bill known as the ' The Patent Act" (S.1137) has morphed into a PTAB reform bill. The initial version of the Bill hardly touched the patentability trials of the USPTO's Patent Trial & Appeal...

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules...

PTAB Issues Rule Long Awaited Rules Package

Expected Changes to Patentee Preliminary Response Among Noteworthy Changes The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here ). The proposed changes are largely expected given the d iscussion coming out of the agency for months on these...