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 via the Internet according to the parameters established by the Board.” The new system, called the Patent Review Processing System (PRPS), embodies the new parameters.Continue reading this entry
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
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
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.
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.
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.
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
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.
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
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 I write about here. The USPTO will consider written comments received by March 5, 2012. Continue reading this entry
Patent Reform cleared its final hurdle on September 8, 2011, when the Senate approved the House version of the Leahy-Smith America Invents Act by a vote of 89-9, leaving only President Obama’s signature as the final step to make patent reform a reality. The President has expressed support for this legislation, and is expected to sign it into law very soon.
The Leahy-Smith America Invents Act makes the most sweeping changes to U.S. patent law in many decades, including moving the U.S. towards a first-to-file system, expanding prior user rights as a defense to infringement, eliminating interference proceedings, and creating new USPTO proceedings for post-grant review.
Now that the Senate is set to vote on the Patent Reform Act of 2011 this week, the mainstream media is weighing in on the issues. This Saturday, The Washington Post published an editorial in support of patent reform, (“Why The patent process should be overhauled,” Feb. 26, 2011) but it butchered the background facts so thoroughly that it did more to confuse the issues than enlighten the public. I sincerely hope that Senators are better informed when they place their votes this week.