Posts Tagged: "patent office"

On Wednesday, July 5, the United Kingdom Intellectual Property Office (UKIPO) released a summary of the responses it has received to its request for views on whether the country’s system for standard essential patents (SEP) is functioning properly. The goal of the request for comments and the subsequent report is to determine whether the UK government needs to make policy changes in this area. The Office received comments on a variety of topics related to SEPs, including the balance of the system, competition, transparency, patent litigation, and more. While both SEP holders and implementers reported problems in the system, the UKIPO found that there was little consensus among stakeholders as to the efficiency of the system and whether government intervention was needed.

The United States Patent and Trademark Office (USPTO) has released an update to its study on multiple Patent Trial and Appeal Board (PTAB) petitions that it says demonstrates that serial and parallel petition practice at the PTAB has been decreasing since 2016, when the Office first issued guidance on the subject. Serial petitions are characterized as petitions filed to challenge the same patent more than 90 days after the initial petition, while parallel petitions are those filed 90 days or fewer apart. The report determined the total number of challenges in each fiscal year by looking at how many times a particular petitioner challenged claims of a particular patent.

Less than one week after a bipartisan group of senators introduced the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) Act of 2023, the House yesterday introduced a companion bill. The bill is also sponsored on a bipartisan basis by Representatives Ken Buck (R-CO) and Deborah Ross (D-NC). Following the introduction of the PREVAIL Act by Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL) and Mazie Hirono (D-HI) last week, Jamie Simpson, who is the Council for Innovation Promotion’s (C4IP) Chief Policy Officer and Counsel and Former Chief Counsel for the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, told IPWatchdog that it will be important to monitor whether the House introduces companion legislation in the coming weeks. She noted that “it’s really promising that the Chair and Ranking Member of the Senate IP Subcommittee are behind these bills. We’re getting closer to a chance of something happening.”

Yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Medytox, Inc. v. Galderma S.A. affirming a final written decision by the Patent Trial and Appeal Board (PTAB) invalidating Medytox’s patent claims covering methods for treating patients with botulinum toxin and denying a revised motion to amend patent claims. On appeal, the Federal Circuit rebuffed several challenges, including an Administrative Procedures Act (APA) challenge to the PTAB’s motion to amend pilot program, holding that the PTAB’s change in claim construction was not arbitrary or capricious, nor did it prevent Medytox from litigating construction issues.

Public comments on the United States Patent and Trademark Office’s (USPTO) Advanced Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices continued to be posted this week, following the June 20 deadline. The USPTO is currently processing the 14,000+ comments, many of which are duplicative, and periodically publishing them online. The Office announced the ANPRM in April. Broadly, the ANPRM is part of a strategy from the USPTO to restructure patent proceedings in an effort to curb abusive actions. A host of stakeholders, including IP law firms, academics, and advocacy groups, have weighed in on the various proposals in the rulemaking package, offering a mix of praise and criticism. We have covered several in two previous posts; here are some more.

On the same day the Patent Eligibility Restoration Act of 2023 was introduced by Senators Chris Coons (D-DE) and Thom Tillis (R-NC), the two senators, along with their colleagues, Dick Durbin (D-IL) and Mazie Hirono (D-HI), introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act today. The bill’s aim is to reform the Patent Trial and Appeal Board (PTAB) and would build upon Coons’ STRONGER Patents Act, introduced in 2019.

As of the morning of June 20, which was the deadline for public comment on the U.S. Patent and Trademark Office’s (USPTO’s) advanced notice of proposed rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices, the agency had received nearly 14,000 comments. On either side of the debate, the USPTO’s proposed “compelling merits” standard for circumventing Fintiv discretionary denials generated a great deal of feedback. The following comments from well-known thought leaders and companies encapsulate many of the issues that the USPTO must navigate as it contemplates changes to PTAB practices.

The impact of the long-awaited launch of the Unified Patent Court (UPC) is hard to overstate. While litigators and patent portfolio managers are immediately feeling the impact in Europe, surprisingly, they should also expect an impact on information disclosure statement (IDS) strategy for U.S. patent applications. To understand the impact, this article provides a background on how the European Patent Office (EPO) and UPC consider earlier national rights, how patent applicants can address earlier national rights to prevent invalidation at the UPC, how earlier national rights identified in a European patent application can affect a U.S. application and should be addressed in an IDS, and how this information can be used for monetization and litigation.   

With the comment period set to close on June 20, more than 11,000 comments had been filed as of Friday, June 16, in response to the U.S. Patent and Trademark Office’s (USPTO’s) Advanced Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices. Only 265 of those had been posted as of Friday, however. The ANPRM was…

The United States Patent and Trademark Office (USPTO) yesterday republished its Request for Comments (RFC) on the establishment of an additional USPTO Regional Office in the southeast region and four new community outreach offices. The original RFC included a bad link for the comments form, so the Office published a new link and also extended the deadline for comments from July 11, 2023, to July 17. The RFC is in response to provisions of the Unleashing American Innovators Act of 2022 (UAIA), which was introduced in September 2021 and signed into law in December 2022, and requires the Director of the United States Patent and Trademark Office (USPTO) to establish another satellite office within three years of the bill’s enactment somewhere in the Southeastern region of the nation, which the bill specifically defines as Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas.

Parus Holdings, Inc. was unsuccessful today in its bid to the U.S. Court of Appeals for the Federal Circuit (CAFC) to reverse two Patent Trial and Appeal Board (PTAB) decisions invalidating its patent claims for voice recognition technology. The CAFC in part said in a precedential decision authored by Judge Lourie that since Parus violated the U.S. Patent and Trademark Office’s (USPTO’s) regulation against arguments incorporated by reference, the PTAB did not have to consider evidence related to those arguments.

Prioritized examination, known sometimes as “Track One,” has been in place at the United States Patent and Trademark Office (USPTO) for the past 12 years. The program, launched in September 2011 provides applicants with greater control over how quickly a patent application will be examined and offers a fast-track to an issued U.S. utility or plant patent that would be otherwise unattainable. For those wishing to obtain a patent quickly, prioritized examination is the answer—perhaps the only answer. Prioritized examination gives an application special status enjoyed throughout the life of the application in exchange for the payment of an additional fee due at the time of filing. This payment for special treatment as a prioritized application moves the application to the front of the examination line, regardless of whether the application is an originally filed nonprovisional patent application, a continuation application, a continuation-in-part, a divisional application or even a request for continue examination (RCE). The additional fee puts the application on fast track, guaranteeing a final decision from an examiner within one year, typically within six months or less.

There is no question that artificial intelligence (AI) has led to a monumental shift in intellectual property law and strategy. Most companies and attorneys are familiar with the current unsettled legal landscape as it relates to inventorship laws for intellectual property—namely, that inventions and works that are created through AI may or may not be eligible for patent or copyright protection, depending on the circumstances. But quietly in the background, AI has already been changing—and continues to change—how IP portfolios are created and managed. Below are five key ways that AI is changing how companies handle their IP portfolios. 

This week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued two precedential decisions that provide additional guidance for those participating in inter partes review (IPR) proceedings. These decisions are Medtronic, Inc. v. Teleflex Innovations S.a.r.l., cases 21-2357 and 21-2359. In total, they address six IPR proceedings challenging five patents related to various advances in guide catheter technology. The decisions raise a number of issues that suggest some tips for practice going forward.