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Category: Post-grant proceedings


PTAB Makes Broadest Interpretation on Estoppel in IPRs
November 12, 2018
Post by Oliver P. Couture, Ph.D.
Drafting post grant proceeding petitions needs to be done carefully due to their limited space. Last week, the Patent Trial and Appeal Board (PTAB) further increased the pressure to use the limited number of words effectively when Kingston Technology Company, Inc. v. Spex Technologies, Inc. (Case IPR2018-01002) was entered. Kingston, the petitioner, attempted to file a second IPR based on different groun.......
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Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court
April 24, 2018
Post by Jonathan L. Kennedy
The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment. The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigni.......
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Patentability and Patent Protection: Is the Pendulum Starting to Swing Back?
March 23, 2018
Post by Oliver P. Couture, Ph.D.
The latest US Chamber of Commerce Global Innovation Policy Center’s International IP Index still places the US on top overall for intellectual property. However, this is due to strength in enforcement of copyrights and trademarks, and improvements in identifying counterfeit goods before they enter the country. According the to Index, the US has dropped to 12th place out of 50 economies in recent years. T.......
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USPTO Heightens Post-Registration Requirements for Trademarks
March 16, 2017
Post by Brandon W. Clark
The U.S. Patent and Trademark Office (USPTO) has recently made changes to the post-registration requirements for U.S. trademark registrations. Effective March 21, 2017, the USPTO will implement a post-registration audit program intended to obtain additional evidence and ensure accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed in the registrati.......
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Post-Grant Reviews under the America Invents Act
January 05, 2017
Post by Blog Staff
The America Invents Act implemented the Post-grant Review (PGR) process as a new means of challenging existing patents. PGR differs from Inter Partes Review (IPR) in that PGR allows for a wider array of invalidity challenges. One example of a new challenge allowed under PGR is the ability to challenge the claims as being indefinite. However, Post-grant Review is only available for patents filed on or afte.......
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USPTO Data Visualization Center
November 10, 2016
Post by Jonathan L. Kennedy
Jonathon L. Kennedy Have you ever wondered how long the typical time before a first Office Action in a pending patent or trademark application is?  Or am I the only one waiting for some months after filing an RCE to have my patent application reexamined?  Or what is the average length of time a patent application or trademark application is examined before allowance?  The USPTO Data V.......
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USPTO Issues Rule Amendments for Trials Before PTAB
April 07, 2016
Post by Blog Staff
The United States Patent and Trademark Office issued finalized amendments to the rules for trials before the Patent Trial and Appeal Board. The updated rules were issued in a Federal Register Notice on April 1, 2016, which may be found here. The rules put into final form most of the amendments proposed on August 20, 2015, which pertain to inter partes review (IPR), covered business .......
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Reminder: Are You Monitoring Your Competitors' Patents for Post-Grant Review?
November 22, 2015
Post by Jill N. Link, Pharm.D.
Jill N. Link, Pharm.D. There were many changes implemented by the USPTO as a result of the America Invents Act ("AIA"or generally Patent Reform). One these is the post-grant procedure (also referred to as Post-Grant Review (PGR)) for challenging the validity of a competitor's patent. However, there is a very limited time frame during which this useful procedure can be employed - withi.......
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Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional Application
September 10, 2015
Post by Blog Staff
Paul S. Mazzola Can an idea that has already been conceived (and published) still be patented? The scenario appears possible based on a recent holding from the United States Court of Appeals for the Federal Circuit. Many know that nearly all publicly available information with a publication date prior to the filing date of a patent application can constitute a prior .......
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Oral Arguments Held in Appeal of First IPR
November 18, 2014
Post by Jonathan L. Kennedy
By Jonathan Kennedy On November 3, 2014, a three-judge panel of the Federal Circuit heard oral arguments in In re Cuozzo—the appeal from the first inter partes review ("IPR") instituted by the USPTO. As noted in our previouspost, the appeal presents a number of interesting procedural and substantive issues. While the oral argument did not address all of the issues on appeal, the arguments from.......
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Federal Circuit Weighs in on Stays for Post-Grant Review
July 24, 2014
Post by Blog Staff
The Federal Circuit has issued an opinion in VirtualAgility Inc. v. Salesforce.com, Inc., providing clarification regarding how court should properly determine whether to stay litigation during later-requested post-grant PTO proceedings. Under the America Invents Act, a district court is permitted, but not required, to grant such a stay. The statute also provides a list of four factors that the district court is.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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