Legislation : US PTO Litigation Alert™

IPO Webinars on New Inter Partes Proceedings, Today and Tomorrow

Scott Daniels | February 21, 2012

The Intellectual Property Owners Association is sponsoring two webinars, today and tomorrow, on the PTO’s recently proposed rules for the new AIA inter partes proceedings.  Today, starting at 2:00 PM, the session will consider the preliminary phase of those proceedings, from filing through institution.  Tomorrow’s session will cover the trial phase, i.e., the period after institution through conclusion. 

Most notably, the webinar panelists include Administrative Patent Judge Michael Tierney who was a key figure in drafting the rules proposed for the new proceedings.

See the following link to register for one or both of the sessions:  http://www.ipo.org/AM/Template.cfm?Section=Search&Template=/CM/HTMLDisplay.cfm&ContentID=32203.

Purpose of Inter Partes Review and Post-Grant Review to Differ from that of Inter Partes Reexamination

Scott Daniels | November 22, 2011

Accused infringers, hoping to challenge a patent, find current inter partes reexamination attractive, in part, because there is no statutory presumption of validity.  And yet the threshold requirement of a “substantial new question of patentability” contains an irrebuttable presumption that all issues expressly addressed by the examiner in the original prosecution were correctly resolved.  Inter partes reexamination is not granted under the current statute merely because the original examiner was wrong.  Even if an accused infringer believes that the examiner made an obvious mistake, there must still be a new issue to justify inter partes reexamination. 

All that changes with the new inter partes review and post-grant review procedures.  The former is granted where there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The latter, where the allegations in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or where “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”  There is no need for “newness” in the threshold requirements for the new procedures.

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The New U.S. Patent Law: A Hybrid patent law combining a first-to-file and a first-to-invent (first-to-publish)

Ken Hattori | October 3, 2011

The newly enacted U.S. patent law is neither a pure first-to-file system, nor a pure first-to-invent (first-to-publish) system, rather it is a hybrid patent system combining both features.

Further, the one-year grace period is unique in that it is based on the effective filing date, which can be the earliest foreign filing date, and not on the U.S. filing date and public disclosure of the invention before filing a patent application within one year excludes third party’s disclosure (prior art) or prior application which is completely different from other countries’ standard grace period.  Thus, the one-year grace period is sort of an absolute grace period.

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Scott Daniels | April 25, 2011

Q:        Who may petition the PTO for post-grant review?

A:        Anyone who is not the patentee may request post-grant review.

Q:        What grounds may be asserted in a petition for post-grant review?

A:        A request may be based on any defense under 35 U.S.C. § 282, ¶¶ 2 & 3, i.e., all defenses under §§ 102, 103 & 112.

Q:        What is the deadline for petitioning for post-grant review?

A:        A request must be filed no later than nine months after the patent issue date or issue date of a reissue patent.

Q:        What must a petition contain?

A:        A petition must disclose the “real party in interest” petitioning for review and describe in detail the grounds for review; the petition must also comply with certain formal requirements and include a filing fee to be promulgated by the PTO.

Q:        Can the patentee reply to a petition?

A:        Yes.  The patentee has two months from the petition filing date to file a “preliminary response”explaining why post-grant review should not be ordered.

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Darrin Auito | March 7, 2010

The Senate sponsors of the proposed Patent Reform Act of 2010 have changed the reexamination provisions to create more coherent structure for post-issuance review of U.S. patents.  Essentially, the changes (found here) protect patentees from harassing reexamination requests and give the PTO greater discretion handling such requests.

The likelihood of passage of the legislation is always in doubt, as shown by Congress’ failures in past years to enact similar reforms.
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The Pending Legislation: What It Means for Oppositions & Reexaminations

Darrin Auito | January 21, 2010

The proposed Patent Reform Act of 2009 introduces a post-grant opposition procedure, as well as several changes to the current inter partes reexamination system.

Post-grant oppositions would be similar to the procedure currently used in Europe, which allows a third party to challenge the validity of a patent within one year of issuance. Here are the key points of this new procedure:
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