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Global IP Matters

Coordinated patent strategy for multi-national companies

“Restriction Requirements” Series, Part 1: Considering Restrictions When Developing A Claim Filing Strategy

Posted in IP strategy, Patent litigation, US patent prosecution

US Pat and YouWelcome to the blog’s first post in a series about restriction requirements! This series will explore nuances in restriction requirement law and provide strategies for most effectively handling restriction requirements, both before and after they arise during prosecution of a U.S. patent. This first post focuses on strategies for developing an initial claim filing strategy that advantageously takes possible future restriction requirements into account.

Let’s begin with a brief overview of U.S. restriction requirements. Per 35 U.S.C. § 121, a restriction requirement generally requires an applicant to elect for prosecution only one of two or more independent and distinct inventions presented in a single application. Patent rules 37 CFR §§ 1.141-1.146 are issued under 35 U.S.C. § 121 and also govern U.S. restriction practice. Per these legal requirements, a restriction requirement identifies two or more Groups/Genus, two or more Species, and/or two or more Sub-species that an applicant must choose between for substantive examination. Examiners typically require restriction between inventions before the issuance of a first Office Action on the merits, but Examiners can require restriction at any time during prosecution as a standalone action or, after the first Office Action, as part of an Office Action.

Given the Examiner’s wide discretion in both the timing and content of restriction requirements, it is important for applicants to always be aware of the possibility of receiving a restriction requirement because restrictions can suddenly limit the type or scope of claims that can be pursued in an application, absent the new filing of a divisional or continuation application.

Awareness of restriction requirements best begins before an application is even filed – during preparation of the application’s initial claims. Continue Reading

PTAB Clarifies Protocol for Expanded Post-Grant Panels

Posted in Inter Partes Review, Patent Trial and Appeal Board (PTAB), Post-Grant proceedings, United States Patent and Trademark Office (USPTO)

Today the Patent Trial and Appeal Board (“Board”) posted on its website Revision 14 of its Standard Operating Procedure 1 (SOP 1).  SOP 1 covers the assignment of Administrative Patent Judges to merits panels, interlocutory panels, and expanded panels in appeals, interferences, and AIA Reviews.  With Revision 14, the Board, among other things, clarifies that although a party may not request an expanded panel, a party is permitted to suggest the need for one.  SOP 1, § III.C, (Rev. 14) (May 8, 2015).

This revision comes on the heels of the Board’s announcement last Friday that it has designated as “Informative” under Standard Operating Procedure 2 (SOP 2) two decisions regarding petitioner requests for expanded panels on rehearing of Board denials of inter partes review.  In Conopco, Inc. v. Procter & Gamble Company, Case IPR2014-00506 (PTAB Dec. 10, 2014) (Paper 25) (“’506 IPR”), the Board denied Petitioner Conopco’s request for rehearing before an expanded panel, including the Chief Judge.  In AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771 (Mar. 24, 2015) (Paper 12) (“’771 IPR”), the Board went further, deeming Petitioner AOL’s request for an expanded panel for rehearing as improper.  Both of these decisions are in fact referenced in the Board’s announcement today of SOP 1 (Rev. 14). Continue Reading

The PTAB Explores Estoppel in New Representative Decision

Posted in Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

The Patent Trial and Appeal Board (“the Board”) recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.  In this ruling, the Board denies Petitioners’ IPR request under the estoppel provision in 35 U.S.C. § 315(e)(1), which prevents petitioners, real parties-in-interest and privies from challenging an already-adjudicated claim on grounds that were previously raised or could have been previously raised before the Board:

The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318 (a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. (emphasis added)

The Dell decision presents a straightforward application of 35 U.S.C. § 315(e)(1).  In the ‘549 IPR, Dell petitioned for review of U.S. Patent No. 6,978,346 (“the ‘346 Patent”) based on claims 1-9 being obvious under 35 U.S.C. § 103 over the Mylex and Hathorn references.  In its decision, the Board explains that Dell had previously asserted both Mylex and Hathorn against the ‘346 Patent in Dell, Inc. v. Electronics and Telecommunications Research Institute, Case IPR2013-00635 (“the ‘635 IPR”).  Dell’s ‘635 IPR Petition challenged the ‘346 Patent claims on the following grounds: (1) claims 1–3 and 8 as obvious under 35 U.S.C. § 103(a) over Weygant and Mylex (’635 IPR Pet. 20–23); (2) claims 4 and 9 as obvious under 35 U.S.C. § 103(a) over Weygant, Mylex, and Serviceguard5 (’635 IPR Pet. 23–39); (3) claims 5–7 as obvious under 35 U.S.C. § 103(a) over Weygant, Mylex, and ANSI6 (’635 IPR Pet. 39–45); (4) claims 1–3 and 5–8 as anticipated under 35 U.S.C. § 102(b) by Hathorn (’635 IPR Pet. 45–60).  The Board instituted trial in the ‘635 IPR solely on the ground that claims 1-3 and 5-8 were anticipated under 35 U.S.C. § 102 by Hathorn, but ultimately held in its final written decision that these claims were not shown to be unpatentable based on Hathorn.

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FTC and DOJ: The PTO’s Efforts to Enhance Patent Quality Will Promote Competition, Innovation and Consumer Welfare

Posted in United States Patent and Trademark Office (USPTO)

On May 6, 2015, the U.S. Department of Justice (“DOJ”) and U.S. Federal Trade Commission (“FTC”) submitted public comments to the U.S. Patent and Trademark Office (“PTO”) commending the PTO for its efforts to enhance patent quality and making specific recommendations on how the PTO may improve its processes. The comments are important both for the content of the recommendations and as an example of the increasing trend of FTC and DOJ concern with issues relating to patents.

The DOJ-FTC comments praise the role of a “well-functioning” patent system in promoting innovation, competition, and consumer welfare, but stated that the patent system only “serves its intended purpose if it promotes and protects innovation and does not inadvertently serve as a barrier to it.” The agencies noted that the quality of patents and the PTO’s work directly impacts competition and innovation, and they emphasized the role of clear notice of patents’ boundaries to both promoting collaboration and reducing “needless litigation.” The agencies also said that they understand that improving patent quality might add costs or delays in patent issuance, but that it was their position that the benefits of improved patents outweighed such costs to private parties.  Continue Reading

Maximizing Use of the USPTO’s Patent Application Alert Service

Posted in United States Patent and Trademark Office (USPTO)

The U.S. Patent and Trademark Office (USPTO) recently launched the Patent Application Alert Service (PAAS), a free electronic tool aimed to keep the public apprised of the publication of patent applications. Through the tool, a user can create customized email alerts that provide notification to the user within minutes of the publication of any U.S. patent application that meets criteria set by the user. The email alerts provide links to the relevant published applications to allow for quick, convenient access to and review of the publications. This new tool provides various opportunities for you to maximize value for you or your company.

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A Scandalous Mark to Some, Free Speech to Others: Federal Circuit to Decide Whether Controversial Limit on Trademark Registrations Violates First Amendment

Posted in Trademark

A controversial section of the Lanham Act, which prohibits the registration of immoral, scandalous, or disparaging marks, may be unconstitutional under the First Amendment. The Federal Circuit has now decided to consider this question en banc and revisit a long-standing precedent that Section 2(a) is not an unconstitutional restriction of free speech. For full details on the Federal Circuit’s review of In re Shiao Tam, please see our full post on our Copyright & Trademark Matters blog.

‘Last Week Tonight’ Host John Oliver Ignores the Last Three Years of Patent Reform

Posted in United States Patent and Trademark Office (USPTO), United States Supreme Court, US patent prosecution

Have you seen John Oliver’s piece about abuses in the patent system?  If not, take a look here.  The ‘Last Week Tonight’ host has quite a bit of fun at the expense of the patent system.  He tossed out three primary complaints:

(A) patent owners that don’t practice their patents shouldn’t be able to assert them;

(B) patent owners enforcing their patents are extorting parties, including small businesses and end users, that lack the funds or capability to litigate; and

(C) patents, especially software patents, are too vague, resulting in uncertainty as to what products or actions are encompassed.

John Oliver is witty, dry, and often downright silly – and it is for those reasons that millions of people are drawn to his humor and his show.  For those of us inclined to think that America’s tradition of strong patent protection has led us to be the most innovative country in the world, this particular story drew our attention for different reasons. His reporting posited the idea that the Innovation Act, H.R. 9, working its way through the House of Representatives, would solve most of the problems he identified in our patent system.  Far from providing the solutions its proponents claim, that legislation would do little or nothing to limit the sending of bogus demand letters to unsophisticated targets in hopes of extracting nuisance value settlements – a practice that many decry as the most egregious example of patent abuse.  Further, Mr. Oliver seems unaware that the last several years have seen judicial action and legislation that address the costs of patent litigation and the vagueness of software patents.  Whether these measures are sufficient without additional legislation is up for debate, but John Oliver’s hypothesis is weakened by his reliance on outdated and largely irrelevant facts and data.

In the interest of making sure truth isn’t sacrificed for the sake of a few good laughs, there are several points we would like to raise.

  • Not every patent owner that licenses its patents rather than practicing them is a “patent troll” deserving of punishment or deterrence.
  • Patent litigation is decreasing, and its costs are overstated.
  • With the America Invents Act of 2011, Congress has already taken steps to reduce the cost of patent litigation.
  • The Supreme Court has also recently addressed the costs of litigation.
  • The Supreme Court addressed vague software patents as well.

For a more thorough analysis, take a look here, where we share statistics and data that show that steps already taken by Congress (passing the America Invents Act) and the Supreme Court (decision in Alice Corp. v. CLS Bank International and others) have gone a long way to easing the issues of concern enumerated by Mr. Oliver, driving down patent litigation (both in volume and expense) and improving the quality of patents, particularly, software patents.

Petitioners Must Present Sufficient Evidence to Establish Inherency

Posted in Inter Partes Review, Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

Last Friday the Patent Trial and Appeal Board (PTAB) denied four Sandoz Inc. petitions for instituting inter partes review (IPR) of U.S. 8,455,524 (IPR2015-00005), U.S. 7,612,102 (IPR2015-00006), U.S. 7,659,290 (IPR2015-00007), and U.S. 7,659,291 B2 (IPR2015-00008) (referred to herein as the “EKR Patents”).  The EKR Patents are assigned to EKR Therapeutics, a wholly owned subsidiary of Chiesi USA, Inc.  The PTAB concluded that the “Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim.”  See, e.g.IPR2015-00005 at 2. The PTAB reached this conclusion based, in part, on Sandoz’s failure to “present sufficient evidence” in support of its arguments that the challenged claim elements in the four patents were inherent. Continue Reading

Helping U.S. Patent Applicants Get Speedy Examination

Posted in United States Patent and Trademark Office (USPTO), US patent prosecution

U.S. patent applicants often have an interest in expediting the patent examination process.  The desire to speed examination can result from issues related to the availability of an inventor, possible infringing activity by a third party, business conditions or the advantageous nature of the technology that require a clear understanding of a stake holders patent rights, or other factors.  The U.S. Patent and Trademark Office (USPTO) has multiple official initiatives aimed to expedite examination of patent applications.  There are also a variety of unofficial ways an applicant can help advance prosecution at strategic points throughout prosecution.  These official and unofficial procedures can provide benefits such as examination of applications out of turn, minimized prosecution time, and removal of typical delayed steps. Continue Reading

Does the AIA Have a Prior Art Exception You Can Use?

Posted in United States Patent and Trademark Office (USPTO)

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published.  Thus, it is a good time for applicants to consider filing U.S. patent applications that can be patentable over applications that otherwise would be considered prior art.  The AIA provides for such a prior art exception in 35 U.S.C. § 102, although it comes with drawbacks and risks that applicants may generally wish to avoid, as discussed further below.

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