We first covered the Supreme Court’s grant of certiorari in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017), a case with the potential to substantially alter the patent litigation landscape, back in June. On Monday, November 27, 2017 the Court heard oral arguments on whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) since September 16, 2012 to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum and without a jury.

Advocates and commentators on both sides of the argument weighed in extensively prior to Monday’s argument, culminating in almost 60 amicus curiae briefs, the most of any case this term. Parties urging the Court to reject Oil States’ argument included, for example, the Alliance of Automobile Manufacturers, GE, Apple, the Internet Association (which represents Amazon, Facebook and Google), and the current Solicitor General of the United States, Noel Francisco. On the other side, inventors, venture capitalists, law professors, the Pharmaceutical Research and Manufacturers of America, and the Biotechnology Innovation Organization, amongst others, urged the Justices to abolish inter partes review.  Protesters, including some organized by websites such as www.usinventor.org, gathered outside the Court on Monday to support Oil States armed with signs stating “PTAB Kills American Dreams” and “Innovation: Don’t Kill it!”

Continue Reading Supreme Court Hears Oral Arguments in Oil States Regarding Constitutional Challenge to Inter Partes Review

In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality issued patent. However, this work product represents only half of the overall patent prosecution effort, since the patent prosecutor works with a patent examiner sitting on the other side at the U.S. Patent and Trademark Office (USPTO). Given that, have you ever wondered how a patent examiner’s work product is reviewed to help improve patent quality? In its most recent Patent Quality Chat on November 14, 2017, a panel of USPTO quality experts provided insight on this topic in a presentation entitled “How is an Examiner’s Work Product Reviewed?”, highlights of which are provided in this article. The USPTO has provided the presentation slides and webinar video at their website.

Continue Reading Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?

Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent agents before the Patent Trial and Appeal Board (“PTAB”).   For context, the originally proposed amendment sought to resolve ambiguity as to when privilege extends to USPTO patent practitioners during PTAB discovery proceedings in light of prior Federal Circuit, District Court and PTAB decisions.  The now-published rule codifies the PTAB’s intent to protect communications between patent agents and clients from discovery, stating that:

“communication[s] between a client and a USPTO patent practitioner or a foreign patent practitioner that is reasonably necessary and incident to the scope of the patent practitioner’s authority shall receive the same protections of privilege under Federal law as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions[;]”

“USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners.”

Continue Reading USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

On November 1, 2017 the U.S. Patent and Trademark Office (USPTO) implemented an expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and ended earlier in 2017, to expedite prosecution of related applications at the USPTO and the Japanese Patent Office (JPO) or Korean Intellectual Property Office (KIPO).  The original CSP is discussed in the Global IP Matters article Expediting Patent Prosecution with the New Collaborative Search Pilot Program.  The new expanded CSP eases some requirements for participation in the program and increases the number of grantable CSP petitions per year, which should make the free CSP more attractive to applicants having patent applications co-pending at the USPTO and the JPO or KIPO.

Continue Reading Expediting Patent Prosecution with the New Expanded Collaborative Search Pilot Program

On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing follow-on inter partes review (IPR) petitions.  In response to five concurrent requests for rehearing, a panel of seven administrative patent judges reviewed the factors articulated in NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9 (PTAB May 4, 2016) and, in doing so, denied all five requests.  While acknowledging that multiple petitions challenging the same patent may be permitted based on specific facts of each case, the Board explained that follow-on petitions run the risk of undue inequities and prejudices to patent owners, and petitioner’s submission of multiple, staggered petitions constituted “an inefficient use of the inter partes review process and the Board’s resources.”

Continue Reading General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors for Follow-On Petitions

This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent.  Here we highlight takeaways from a USPTO Inventor Info Webinar (the “Webinar”) held on September 21, 2017, that focused on design patent drawing requirements, as well as on other issues on design patents. The Webinar’s slides can be found here.

As a brief recap, 35 U.S.C. § 171 states that “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”  Thus, the statute requires that a design be for an article (i.e., rather than a disembodied design, a design per se) and that the article have one or both of some surface ornamentation and configuration that differs this article from others.

Continue Reading Recap on Design Patent Drawings

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications.  While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this article addresses how the filing of various papers during prosecution can affect PTA.  In particular, Requests for Continued Examination (RCEs), terminal disclaimers, and information disclosure statements (IDSs) can all cause adverse PTA effects if not carefully considered.

General Overview

Typically, U.S. patent term is 20 years from the earliest effective filing date, regardless of how long it takes the United States Patent and Trademark Office (“USPTO”) to examine and issue the patent.  In an effort to minimize the possibility of shortened patent term, Congress created the system of PTA, codified at 35 U.S.C. § 154(b), that allows, in certain circumstances, the effective patent term to be extended past 20 years from an application’s earliest effective filing date.  But as with many rules, there are exceptions.

Continue Reading Calculating Patent Term Adjustment: Part 2

On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme Court’s Nautilus standard.

A Tale of Two Standards

Under 35 U.S.C. § 112(b), the specification must conclude with “one or more claims particularly pointing out and distinctly claiming the subject matter” regarded as the invention. This definiteness requirement “secure[s] to the patentee all to which he is entitled” and “apprise[s] the public of what is still open to them.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996).

During examination, the Patent Office applies the broadest reasonable interpretation of a claim and thereafter determines indefiniteness using the In re Packard standard, in which a claim is indefinite when it contains words or phrases whose meaning is unclear. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014)(per curium).

Continue Reading Am I Being Clear Enough? – PTAB Reaffirms Lower Pre-Issuance Threshold for Indefiniteness in Ex Parte McAward

In a first of its kind decision with important ramifications for patentees, the U.S. International Trade Commission (“ITC”) denied a petition to suspend or temporarily rescind remedial orders issued in Investigation No. 337-TA-945 pending appeal of the Patent Trial and Appeal Board’s (“PTAB”) separate finding that the patent claims at issue are invalid.  The ITC has therefore decided to continue to exclude products it found to be infringing certain patents, regardless of the PTAB invalidating the very patents the exclusion order is based upon in separate IPR proceedings.  While this decision aiding patentees may surprise some, it is consistent with the ITC’s practices regarding stays and of giving little deference to IPR proceedings.

Continue Reading ITC Denies Suspension or Temporary Rescission of Remedial Orders After PTAB Invalidates Patents at Issue

On June 19, 2017, the U.S. Patent and Trademark Office (USPTO) announced that it would be extending the Cancer Immunotherapy Pilot Program, which permits patent applications pertaining to cancer immunotherapy to be examined in an expedited fashion.  As earlier discussed in this blog, the Pilot Program was established in support of the Obama White House’s National Cancer Moonshot initiative.  The goal of the Pilot Program is to complete examination of an application within 12 months of special status being granted.  Patent applications that qualify for the Pilot Program will be advanced out of turn for examination without meeting all the current requirements for accelerated examination.

Continue Reading Extension of U.S. Patent and Trademark Office’s Cancer Immunotherapy Pilot Program