Tag Archives: Inter Partes Review

Inter Partes Review -- Parties Favor Settlement Over Board Decisions

Now that we have a growing body of statistics on the Inter Partes Review proceedings created by the America Invents Act, it is interesting to see how the proceedings are being resolved. With the significant attention given to Patent Trial and Appeal Board (PTAB) decisions, it may come as a surprise to learn that a … Continue reading this entry

Federal Circuit Issues Remand In Ten Year Reexamination Proceeding

In Tempo Lighting, Inc. v. Tivoli, LLC, the Federal Circuit vacated the decision of the U.S. Patent Office Patent Trial and Appeal Board that had reversed the Examiner’s rejection of most of the claims of the patent at issue. While the decision touches on a few important legal issues, this ten year reexamination proceeding illustrates … Continue reading this entry

USPTO Rules Eliminate Inter Partes Review Dead Zone

On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013, and relate to statutory changes with an effective date of January 14, 2013. The Dead Zone The AIA … Continue reading this entry

A Look At The Technical Amendments To The America Invents Act (AIA) Made By HR 6621

On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) provisions. This article provides an overview of the … Continue reading this entry

USPTO Board Holds That Complaint Dismissed Without Prejudice Does Not Bar Inter Partes Review

In a decision granting (in part) a Request for Inter Partes Review, the USPTO Patent Trial and Appeal Board (PTAB) held that an infringement complaint that was dismissed without prejudice did not bar the Request for Inter Partes Review. The Statute At Issue The Inter Partes Review statute includes a limitations period measured from service … Continue reading this entry

USPTO Requires New PRPS E-Filing System For New Patent Trials

 The USPTO is developing a new electronic filing and case management system for the new patent trial proceedings that become available on September 16, 2012. According to new 37 CFR § 1.46(b) which takes effect on September 16, 2012, unless “otherwise authorized,” all submissions to the Board “are to be made . . . electronically … Continue reading this entry

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

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 … Continue reading this entry

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

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 … Continue reading this entry

Three Proposed USPTO Board Rules That Should Not Be Adopted

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 … Continue reading this entry

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

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: … Continue reading this entry

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

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. … Continue reading this entry

Proposed AIA Implementation Rules: Estoppel Against Ex Parte Reexamination

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent.  While I wrote about those changes previously, the same rules package includes proposed changes to the ex parte reexamination rules that … Continue reading this entry