PTAB Makes Broadest Interpretation on Estoppel in IPRs 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 […] Continue Reading →
Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court 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 […] Continue Reading →
Patentability and Patent Protection: Is the Pendulum Starting to Swing Back? 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 […] Continue Reading →
USPTO Heightens Post-Registration Requirements for Trademarks 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 […] Continue Reading →
Post-Grant Reviews under the America Invents Act 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. […] Continue Reading →
USPTO Data Visualization Center 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 […] Continue Reading →
USPTO Issues Rule Amendments for Trials Before PTAB 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, […] Continue Reading →
Reminder: Are You Monitoring Your Competitors’ Patents for Post-Grant Review? 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 […] Continue Reading →
Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional Application 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 […] Continue Reading →
New Changes Proposed for PTAB Trial Proceedings Rules USPTO Director Michelle K. Lee discussed proposed rule changes in herblog post for Wednesday, August 19. The first set of rules governing inter partes review, post-grant review, and covered business method patent proceedings was issued in 2012 and a number public comment sessions were held to gather feedback on these rules. In March of 2015, […] Continue Reading →