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Patents Post-Grant: Pay to Stay….The Game Changing Impact of Business Method Patent Challenges

New CBM Challenges to Derail Business Method Patent Assertions? Last September 16th marked the one year anniversary of the enactment of the America Invents Act (AIA). This "patent reform" legislation introduced several new post grant avenues to challenge an issued patent at the USPTO. One...

Fitch, Even, Tabin & Flannery LLP: Derivation Proceedings

Among the changes introduced by the Leahy-Smith America Invents Act (AIA) is the implementation of a "first-to-file" system. Generally, under the first-to-file system, if there are two competing applicants for the same patentable invention, the first inventor to file will be awarded the patent...

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...

Patents Post-Grant: Draft Bill Proposes Fixes to America Invents Act

Straight Forward Changes Expected to Pass Quickly As discussed last month , Congress will be considering a technical amendment to the AIA before Christmas. Congressman Lamar Smith (R-Tx) proposed this bill (H.R. 6621 here ) to the House last Friday, passage of which seems very likely in the near term...

Patents Post-Grant: Congress Proposes Second Post Grant Window for Patent Reissue?

Repeal of 325(f) May Have Unintended Consequences As discussed earlier this week the House is currently considering H.R. 6621 , which proposes some technical corrections to the America Invents Act. One of the stated goals of the technical bill is to eliminate the 9 month dead zone that now applies...

Patents Post-Grant: Technical Amendment to AIA Passes House

Technical Amendment Passes First Hurdle Yesterday (Dec. 18th), the House considered H.R. 6621 , a bill to correct and improve certain provisions of the America Invents Act, under a suspension of the rules requiring a two-thirds majority vote for passage. The bill was passed 308-89. Rep. Rohrabacher...

Patents Post-Grant: AIA Post Grant Proceedings Begin to Impact NPE Assertions

Rippling Effect of PTAB Proceedings to Upset Patent Litigation Business Model? Opponents of the U.S. patent system are quick to deride the America Invents Act (AIA) as a failure when it comes to the so called "patent troll" or "non-practicing entity" (NPE) problem. Indeed, a steady...

Brinks Hofer Gilson & Lione: President Signs Patent Reform Technical Corrections Bill

On January 14, 2013, President Obama signed into law a "technical corrections" bill that amends provisions of the Leahy-Smith America Invents Act (AIA), the recently enacted patent reform legislation. While much of the technical corrections bill deals with typographical, grammatical and drafting...

Fitch, Even, Tabin & Flannery LLP: U.S. Patent System Changes from “First-to-Invent” to “First-to-File” System on March 16, 2013

On March 16, 2013, the final provisions of the America Invents Act (AIA) will go into effect. Under these provisions, the U.S. patent system is changing from a "first-to-invent" system to a "first-to-file" system. Accordingly, the first inventor to file a patent application will normally...

Brinks Hofer Gilson & Lione: Transitioning to First-Inventor-to-File: Part I

For patent seekers and patent attorneys alike, March 16, 2013 will be a momentous date. On that day, the U.S. transitions from its current "first-to-invent" system to a "first-inventor-to-file" (FITF) system. Although the FITF system has been in place in every other country in the...

Troutman Sanders LLP: U.S. Becomes “First-to-File” Country for Patents on March 16, 2013 - Consider Strategic Action Now

By Robert Schaffer and Joseph R. Robinson On March 16, 2013, the United States will become a "first-to-file" country for determining the rights of different inventors competing for a patent covering the same invention. This is part of the recent "America Invents Act" (AIA). To...

Brinks Hofer Gilson & Lione: Patent Office's New Fee Structure Begins March 19, 2013

The Leahy-Smith America Invents Act (AIA) provided the USPTO with new fee-setting authority. The authority specifically permits the USPTO to set fees to recover the cost of patent operations, reduce the current patent application backlog, decrease patent application pendency, improve patent quality,...

Patents Post-Grant: Is There Value to Ex Parte Patent Reexamination after the AIA?

Ex Parte Patent Reexamination Filings Fall by 50% After AIA Prior to September 16, 2012, ex parte patent reexamination was the only USPTO option for challenging the validity of patents that issued from patent applications filed before November 29, 1999. This is because the inter partes patent reexamination...

Patents Post-Grant: Patent Trolls Drive Demand for New AIA Post Grant Proceedings

Demand for IPR Driven by Patent Troll Assertions On September 16th, 2012 the new post grant patent proceedings of the America Invents Act (AIA) became available to patent challengers for the first time. These proceedings have only been available for a few months, but there has been a robust demand...

Fitch, Even, Tabin & Flannery LLP: USPTO Announces Final Rules and Examination Guidelines to Implement the Final Phase of the America Invents Act

As reported in previous Fitch Even IP Alerts, the final provisions of the Leahy-Smith America Invents Act (AIA) will go into effect on March 16, 2013. Under these provisions, the U.S. patent system is changing from a "first-to-invent" system to a so-called "first-to-file" system....

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...

Will PTAB Decisions In Interferences Declared After September 15, 2012 Be Reviewable In Court?

The America Invents Act preserves court review under both 35 USC 141 and 35 USC 146 of decisions by the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board in interferences decided before September 15, 2012 and in interferences pending on September 15, 2012. However, the AIA...

Is The Estoppel Of The New AIA Proceedings Worse Than Interference Estoppel?

It is the thesis of this article that 37 CFR 42.73(d) estoppel is likely to be implemented in much the same way as interference estoppel under 37 CFR 41.127(a)(1) and that, just as members of the interference bar have learned to live with interference estoppel, members of the now-forming post-grant patent...

Will PTAB Decisions in Interferences Declared After September 15, 2012 But Before Enactment of the AIA Technical Amendments Act Be Reviewable Via Petitions for Extraordinary Writs or Actions Under the APA?

by Charles L. Gholz and Lisa M. Mandrusiak As explained in detail in this article, the "Act to correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code" provides that there will be court review under both 35 USC 141 and 35 USC 146 of...

The PTAB Cannot Adopt a Phillips Claim Analysis for AIA Trial Proceedings

Requests for Comment Touch Upon Claim Construction Standards at the PTAB Back in June, the USPTO issued a Request For Information (RFI) in the Federal Register. The Notice , entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board...

A Philips Construction at the PTAB Will Halt Patent Litigation

Patentees: Be Careful What You Wish For...You Just Might Get It Since the passage of the America Invents Act (AIA), the debate has raged as to whether or not the Patent Trial & Appeal Board (PTAB) should apply the broadest reasonable claim interpretation (BRI) for AIA trial proceedings. Some patentees...

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...

Federal Circuit Affirms PTAB in First Decision on an Appeal of America Invents Act Business

by K. Patrick Herman and Christopher W. Glynn Digest of Versata Dev. Group, Inc. v. SAP Am., Inc. , No 2014-1194 (Fed. Cir. July 9, 2015) (precedential) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. On appeal from the United States Patent and Trademark...