Tag Archives: Post-Grant Review

Did The PTAB Dose The AIA Poison Pill Incorrectly Against Premium Genetics?

In Inguran, LLC v. Premium Genetics (UK) Ltd., the USPTO Patent Trial and Appeal Board (PTAB) instituted Post Grant Review (PGR) proceedings in a patent granted from an AIA transition application based on its finding that at least one of the claims was not entitled to an effective filing date before March 16, 2013. While that aspect … Continue reading this entry

First Post Grant Review Petition Shows That Amending Claims Is Not Child's Play

The first Post Grant Review petition visible to the public was filed August 5, 2014, against U.S. Patent 8,684,420. The patent was granted from an application filed July 26, 2013, but claims priority through a series of continuation applications to an application filed September 8, 2011, and to a provisional application filed November 5, 2010. … 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

Public Comments Criticize USPTO's Proposed Rules For "Routine Discovery," "Patentee Estoppel," and Amendments in Board Trial Proceedings

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 … 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

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

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 … Continue reading this entry

Be Aware Of The Ides Of March

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 … 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

Patent Reform Clears Final Hurdle--President Obama Expected To Sign America Invents Act Soon

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 … Continue reading this entry

The Washington Post Muddies The Waters On Patent Reform

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 … Continue reading this entry