Category: Post Grant Review
-
Claim Interpretation for Post-Grant Review and Inter Partes Review under the AIA – Part I
—
by
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…
-
Do You Want That Post-Grant Review Super-Sized? – Part III
—
by
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…
-
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…
-
Do You Want That Post-Grant Review Super-Sized? – Part I
Patents come in all shapes and sizes. There are long ones, short ones, ones that are hard to read, and easy ones. Some have 1 claim and some have 200 claims. Some have valid claims, and some not-so-much. But when it comes to post-grant procedures, the two new procedures only come in two statutory sizes: regular and super-sized.…
-
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…
-
America Invents Act: Post-Grant Procedures for Patent Challengers
—
by
in America Invents Act, Appealable, covered business methods, estoppel, estoppel, ex parte reexamination, inter partes reexamination, inter partes review, motion practice, Patent Reform, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, UncategorizedNow that the America Invents Act has become law there are several new provisions for patent challengers to consider. For example, the Act includes: preissuance submissions by third party challengers (Sec. 8 — see the last post); Post-Grant Review (Sec. 6 – see slides*); Inter Partes Review (Sec. 6 – see slides*); Business Method Transitional Proceedings…
-
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…
-
Strategic Use of Reexamination in view of the Patent Reform Bill
—
by
in covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, factors for stay, inter partes reexamination, inter partes review, Litigation, motion practice, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, Reissue, stay, Substantial New Question (SNQ), supplemental examinationLast week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit. The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.” The powerpoint presentation materials can be found here. The materials assume that the bill currently pending before the Senate is passed substantially intact. The…
-
Estoppel in Post-Grant Review (cont’d)
In the previous post we discussed some aspects of post-grant review (PGR) in the current bill before the Senate. The grounds available for petition in PGR are more comprehensive than those available for traditional reexamination and and also for the grounds of petition slated for inter partes review. So if the estoppel is on grounds that…
-
Post-Grant Review and Estoppel in the Current Patent Reform Bill
When the Senate returns from recess next month it will be debating patent reform, and in particular the Leahy-Smith America Invents Act. A copy of the redlined version passed by the House is found here. (thanks to Brad Pedersen of Patterson Thuente Christensen Pedersen, P.A. for providing this version). Don’t let the amount of redlining fool you because many…