PharmaPatents Timely Insight on Emerging Legal Developments

Category Archives: Patent Reform

First To File Practice: Grace Period Shielding Disclosures

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

This is the third article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, and the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art.Continue reading this entry

An Overview Of The Final Patent Reform Rules Packages Effective September 16, 2012

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

On August 14, 2012, the USPTO published the final rule packages for implementing the patent reform changes that take effect September 16, 2012. Several colleagues and I prepared Legal News Alert articles which provide an overview of key changes embodied in the rules.

This article looks at some of the key provisions relating to an assignee’s ability to file and prosecute patent applications, changes to the inventor oath/declaration requirements, changes to reissue application practice, simplified procedures for correcting inventorship, the heightened importance of application data sheets, and the elimination of “without deceptive intent” requirements.

This article looks at the new rules for the new supplemental examination proceedings and pre-issuance submissions by third parties.

This article looks at the four rules packages which implement the new trial proceedings that will be conducted by the Patent Trial and Appeal Board (Board), including inter partes review, post-grant review, and the transitional program for covered business method patents.

Learning More About The Final Rules

We will be providing more in-depth reviews of the final rules packages on PharmaPatentsBlog over the next few weeks. In addition, as noted above, the USPTO is holding several AIA roadshows across the country in September, where USPTO representatives will explain the new rules.

Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012.  This program will give attendees an opportunity to understand how interference and inter partes examination have influenced the new proceedings, to discuss how these new options may impact business strategies, and to learn proactive steps that can be taken now to prepare for the changes to come.  Scheduled featured guest speakers include Teresa Stanek Rea, Deputy Under Secretary of Commerce for IP and Deputy Director of the USPTO and James D. Smith, Chief Administrative Patent Judge, USPTO. Featured speakers from Foley & Lardner LLP include Matthew A. Smith, Partner and Chair, Patent Office Trials Practice, and Andrew S. Baluch, Special Counsel and Vice Chair, Patent Office Trials Practice.

USPTO Issues Final Rules For America Invents Act Provisions That Take Effect September 16, 2012

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; Uncategorized; USPTO Proposed Rule Changes

As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication versions of the rules packages are available now in the Federal Register reading room. While I have not yet reviewed all of the final rules, it appears that the USPTO took public comments into consideration and made significant changes to some of the proposed rules. Applicants and practitioners should study the final rules packages and consider attending a USPTO “AIA roadshow,” where USPTO representatives will explain the new rules. Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012.   Continue reading this entry

First To File Practice: Grace Period Non-Inventor Disclosures

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

This is the second article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, and the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what the USPTO refers to as the “grace period non-inventor disclosure” exception to prior art. Continue reading this entry

USPTO Reverses Course to Permit Anonymous Ex Parte Reexamination Requests

Posted by Andrew Baluch on Posted in Patent Reform; Reexam; USPTO Proposed Rule Changes

Responding to public feedback, the USPTO announced that it has dropped a controversial proposal that would have required all requests for ex parte reexamination to identify the requester’s “real party in interest.”  The change is one of several new provisions in a Final Rule, released August 6, 2012, which implements a new estoppel provision in the America Invents Act (AIA) barring ex parte reexamination of a patent following the completion of an inter partes review or post-grant review.  Third-party requesters and patent owners alike will need to be familiar with the Final Rule which goes into effect on September 16, 2012.  Continue reading this entry

First To File Practice: Grace Period Inventor Disclosures

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

This is the first article in my First-To-File Friday series. On each Friday in August, I will publish an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules and the proposed examination guidelines. Here, I turn my attention to the specific requirements (as proposed) for invoking the “grace period inventor disclosure” exception to prior art. Continue reading this entry

USPTO Issues Proposed First-To-File Rules And Guidelines

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

The July 26, 2012 Federal Register published the USPTO’s proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA). I provided an initial overview of the proposed rules last week, and now turn my attention to the proposed examination guidelines. The USPTO will consider written comments on the proposed rules and guidelines received by October 5, 2012. Continue reading this entry

A Sneak Peek At The USPTO’s Proposed First-To-File Rules

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

For a short time on Friday, July 20, 2012, the USPTO’s proposed rules to implement the first-to-file provisions of the America Invents Act (“AIA”) were available in the Federal Register’s “electronic Reading Room.” According to the USPTO’s AIA Implementation website, the USPTO temporarily withdrew the proposed rules in order “to enable the Federal Register to publish the first-inventor-to-file rulemaking at the same time as the first-inventor-to-file guidance document” that the USPTO plans to issue. Because this explanation suggests that the USPTO does not intend to change the substance of the proposed rules, I will proceed with my review and analysis of the proposed rules as pre-published.Continue reading this entry

USPTO Publishes Final Rules For Preissuance Submissions By Third Parties

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

The USPTO published the final rules to implement the Preissuance Submissions provisions of the America Invents Act in the July 17, 2012 Federal Register. The final rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The rules take effect on September 16, 2012, and are applicable in principle to all pending patent applications. The final rules are similar to the proposed rules that were published in January, but there are some important differences and clarifications set forth in the final rulemaking.Continue reading this entry

Third Party Observations Now Permitted In PCT Applications

Posted by Courtenay Brinckerhoff on Posted in International Patent Practice; Patent Reform

As of July 2, 2012, third parties can submit “observations” in published PCT applications via the ePCT Public Service system. It is interesting to compare this service with the expanded ability of third parties to make Preissuance Submissions under new 35 USC § 122(e) (created by the America Invents Act), which takes effect on September 16, 2012. As with that program, only time will tell how many third parties will make the effort to bring potentially relevant prior art to the attention of patent examining authorities. Continue reading this entry

Where We Stand On Patent Reform

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

It has been nine months since President Obama signed the Leahy-Smith America Invents Act into law on September 16, 2011. In just under three months, the next phase of changes will take effect on September 16, 2012, and in just under nine months, the final phase of changes will take effect on March 16, 2013. Have you taken any steps to get ready yet? Continue reading this entry

USPTO Publishes Proposed Micro Entity Rules

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

A Federal Register Notice set to publish on May 30, 2012, sets forth the USPTO’s proposed rules for implementing the Micro Entity provisions of the America Invents Act (“AIA”). The proposed rules closely track the new law, but the USPTO seeks input on one important issue of statutory interpretation. Public comments on the proposed rules should be submitted by July 30, 2012.Continue reading this entry

Patent Reform Q & A

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

A few weeks ago I was a presenter for the AIPLA webinar on “Patent Prosecution Under The AIA.” I discussed some strategies for preparing for the transition to the “first to file” system of the American Invents Act (AIA), and my co-presenter, Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, provided insight on the legislative history of some of the key provisions of the new law. Audience members submitted some good questions during the webinar, and since we were not able to answer all of them during our Q & A time, I thought I would address some of them here. Continue reading this entry

Public Comments Criticize USPTO’s Proposed Rules For “Routine Discovery,” “Patentee Estoppel,” and Amendments in Board Trial Proceedings

Posted by Andrew Baluch on Posted in Duty of Disclosure; Patent Reform; USPTO Proposed Rule Changes

As I previously pointed out, there are three proposed rules in the USPTO’s patent trial proceedings rules package that raise concerns and should be dropped.  Public comments on these proposed rules were due April 9-10, 2012.  Now that the public has spoken, let’s take a look at what people had to say about these three specific proposals.Continue reading this entry

Adopting To First-to-File: The Significance Of Segregating Subject Matter

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

One important strategy for adopting to the first-to-file system of the America Invents Act will be to segregate subject matter that has an effective filing date of March 15, 2013 or earlier from subject matter that has an effective filing date of March 16, 2013 or later. This is because even after March 16, 2013, it will be possible to pursue subject matter with an earlier effective filing date under the current first-to-invent system as long as it is segregated from subject matter with a later effective filing date. (For a more detailed explanation, see my previous article on The First-To-File Poison Pill.) While my previous article on the Ides of March outlined several reasons why it could be important to obtain an effective filing date of March 15, 2013 or earlier, Max Colice, a patent agent and member of the Electronics practice at Foley & Lardner LLP, has pointed out yet another reason to segregate subject matter before and after the first-to-file effective date.

Continue reading this entry

Time Is Running Out To Comment On Proposed Rules For USPTO Board Patent Trial Proceedings

Posted by Andrew Baluch on Posted in Patent Reform; Reexam; Uncategorized; USPTO Proposed Rule Changes

The deadline for submitting public comments on the USPTO’s proposed rules for patent trial proceedings is next week, April 9 and 10, 2012.  Specifically, public comments on the seven Federal Register notices containing the USPTO’s rulemaking proposals are due as follows:

  • Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012;
  • Practice Guide for Proposed Trial Rules—public comments due April 9, 2012;
  • Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012;
  • Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012;
  • Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012;
  • Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012;
  • Changes to Implement Derivation Proceedings—public comments due April 10, 2012. 

Continue reading this entry

Today Is the Deadline for Commenting on the USPTO’s Proposed Supplemental Examination Rules

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

Today, March 26, 2012, is the deadline for submitting public comments on the USPTO’s proposed rules for implementing the Supplemental Examination provisions of the America Invents Act.

Some issues that stakeholders may wish to comment on include:

Comments can be submitted by email to supplemental_examination@uspto.gov.

Be Aware Of The Ides Of March

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The “first-to-file” provisions of the America Invents Act (AIA) take effect on March 16, 2013. Here, I highlight a few reasons why many applicants will not want their patent applications to be subject to the new version of 35 USC § 102, and why all applicants—and their patent counsel—should be aware of the significance of March 15, 2013—the Ides of March.

Continue reading this entry

Three Proposed USPTO Board Rules That Should Not Be Adopted

Posted by Andrew Baluch on Posted in Patent Reform; USPTO Proposed Rule Changes

Please welcome Andrew Baluch as a new contributing author for PharmaPatentsBlog!

There is a lot to like about the USPTO’s proposed rules for the new patent trial proceedings that the Patent Trial and Appeal Board (PTAB) will conduct under the America Invents Act (AIA). On the whole, the proposed rules released last month appear to be sound, well-written, and based largely on the “Standing Order” governing current Interference proceedings. The team of administrative judges that drafted the proposals should be commended for their work.

But, as with any project of this size, there is bound to be some oversight and possible overreach. After studying the seven Federal Register notices spanning 133 pages that comprise the post-grant rules packages, I particularly was struck by three specific proposed rules. As explained below, these three proposed rules appear to be unnecessary, unsupported by the law, and should be dropped. The USPTO would be doing everyone a favor, including itself, if it simply omits the following from its final rules.Continue reading this entry

Comments Due Today (March 5) On First Batch Of USPTO Proposed AIA Implementation Rules

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

Public comments on the USPTO’s proposed rules to implement the following AIA provisions are due today and tomorrow:

The comment period for the first three items expires today, March 5, 2012, while the comment period for the last item expires tomorrow, March 6, 2012.

I wrote several articles highlighting a few issues with the proposed rules relating to third party submissions, citation of prior art, and the inventor’s oath and declaration, which can be found on this page. It will be interesting to see what others think of the proposed rules, and how the USPTO responds to the public comments.

What Happens When Interfering Applications Straddle The First-To-File Effective Date?

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

It has been a while since I’ve taken an in-depth look at the first-to-file provisions of the America Invents Act. This interesting fact pattern comes from Andrea Levesque, IP Counsel at ARC Energy, and relates to the interference provisions that survive the general March 16, 2013 effective date of the first-to-file provisions.Continue reading this entry

The Rhyme & Reason Behind The USPTO’s Proposed Patent Fees

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed patent fees. Even taking the USPTO’s cost estimates at face value, I have several questions and concerns about some of the proposed fees. Continue reading this entry

A First Look At The Proposed Rules For The New USPTO Patent Trial Proceedings

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

As I wrote previously, the USPTO has released its proposed rules for the new patent trial proceedings that will be conducted by the Patent Trial and Appeal Board in accordance with the America Invents Act (AIA). The proposed rules will be published in seven separate Federal Register Notices that are due out later this week:

  • Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012
  • Practice Guide for Proposed Trial Rules—public comments due April 9,
  • Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012
  • Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012
  • Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012
  • Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012
  • Changes to Implement Derivation Proceedings—public comments due April 10, 2012

Several of my colleagues at Foley & Lardner LLP and I spent the day reviewing the proposed rules and preparing a Legal News Alert that outlines some of the key provisions in these rules packages. Here, I note a few of my first impressions.

Continue reading this entry

USPTO Publishes Proposed Rules For New Patent Challenges And Outlines New Patent Fees

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

The USPTO has published non-final versions of its proposed rules for the new “contested cases” created by the America Invents Act (Inter Partes Review, Post Grant Review and Derivation proceedings) on its AIA Implementation website. According to the USPTO, the official Federal Register Notices will be published later this week, on February 9 and 10. Written comments will be due by April 9 or April 10, depending on the exact publication date of the proposed rule at issue. 

The USPTO also has published its proposed patent fee schedule for the fees it plans to charge under its new fee-setting authority. The USPTO is holding PPAC Fee Setting Hearings on February 15 (at the UPSTO’s Alexandria campus) and February 23 (in Sunnyvale, California).Continue reading this entry