Category: Ex Parte Prosecution
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Preissuance Submission Final Rules Published July 17, 2012
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in America Invents Act, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, preissuance submissions by third parties, reexamination generally, Substantial New Question (SNQ), UncategorizedThe Patent Office has published its final rules for preissuance submissions under the AIA. A copy of the final rules can be found here (2012-16710). I briefly summarized the rule requirements in a presentation that can be found here (Preissuance Submissions Final Rule July 17 2012).
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Claim Interpretation for Post-Grant Review and Inter Partes Review under the AIA – Part I
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in America Invents Act, Broadest Reasonable Interpretation standard, clear and convincing evidence, Ex Parte Prosecution, ex parte reexamination, inter partes reexamination, inter partes review, Litigation, Patent Reform, Phillips-type construction, Post Grant Review, preponderance of evidence, PTAB, reexamination generally, Reissue, UncategorizedToday, USPTO Director David Kappos posted a comment advocating the use of the broadest reasonable interpretation standard (BRI) for claim interpretation in post grant review and inter partes review under the America Invents Act. This is a topic of great interest among those conducting post-grant review of patents because of numerous conflicts occuring in practice due to different…
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Do You Want That Post-Grant Review Super-Sized? – Part III
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in America Invents Act, covered business methods, Damages, estoppel, estoppel, estoppel from administrative proceeding, Ex Parte Prosecution, ex parte reexamination, inter partes review, Litigation, past damages, Patent Reform, petitions practice, Post Grant Review, raised or reasonably could have raised, reexamination generally, Substantial New Question (SNQ), UncategorizedThis is the third post in a series of articles on PGR strategies. In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes. By statute, the PGR must complete in 1 to 1 ½ years. Part II addressed some of the…
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Do You Want That Post-Grant Review Super-Sized? – Part II
This is the second post in a series of articles on PGR strategies. In my last post I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) don’t. PGRs are very different from ex parte prosecution. In ex parte prosecution, if a patent application includes 200 claims that are…
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New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy
Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings Patent Owners adopt different approaches for drafting patent applications. For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular application. There is a reasonable argument to use this “assembly line” approach for very large…
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Patent Challengers get additional Preissuance Challenge Option after Leahy-Smith Bill Passes
Pre-Issuance Challenge Option Added Section 8 of the Act provides for additional pre-issuance submissions by third parties by amending 35 U.S.C. 122. Written submission of the relevance of a patent application, patent, published patent application, or other printed publication must be made before the Notice of Allowance or the later of (1) six months after…
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Can Post Grant Review Enhance Patent Quality?
We have all heard about the new post grant review (PGR) aspect of the patent reform legislation. It is supposed to provide a mechanism for review of the patent initiated in the first year of the patent’s issue. Please indulge me for a bit as I explore what this may mean for the patent system as a…
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Petition Granted for Rehearing en banc of Akamai Technologies v. Limelight Networks
On April 20, 2011, the Federal Circuit granted the petition by Akamai Technologies for rehearing en banc its appeal in Akamai Technologies, Inc. v. Limelight Networks, Inc. The order vacated the earlier opinion of December 20, 2010. The order includes a request to file new briefs addressing this question: If separate entities each perform separate…
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Federal Circuit Decision in In re Tanaka
You might recall that we discussed the BPAI decision in In re Yasuhito Tanaka in an earlier post. On April 15, the Federal Circuit reversed the BPAI decision and remanded the matter for further proceedings in accordance with the opinion. The Federal Circuit held that a patent owner that retains original patent claims and adds new narrower claims in…
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Petitions Practice for SNQ Findings in Inter Partes Reexaminations
A prior post emphasized the importance of a well crafted petition in cases where the examiner determines that there is no SNQ in an inter partes reexamination request. Recall that the BPAI determined it had no jurisdiction to review of a determination that there was no SNQ (for certain claims) in inter partes reexamination control no. 95/001,089 (Belkin International v Optimumpath…