Posts Tagged: "aia"

PTAB Seeks Comments on Proposed Changes to Motion to Amend Practice in AIA Trials

The United States Patent and Trademark Office (USPTO) has published a Request for Comments (RFC) about a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively AIA trials) before the Patent Trial and Appeal Board (PTAB).  In essence, the proposal includes:  providing the parties with the Board’s initial assessment of the proposed amendment early in the process; providing meaningful opportunity to revise, and oppose, proposed amendments; and ensuring that the amendment process concludes within the 12-month statutory timeline. The proposal is based upon six years of experience conducting AIA trials during which time more than 350 motions to amend have been filed.

Supreme Court asked to apply Multiple Proceeding rule to end harassing validity challenges

The Multiple Proceedings rule has become the essence of uncertainty. What exactly does it mean? §325(d) gives the PTO Director the authority to refuse a petition when “the same or substantially the same prior art or arguments” were previously presented. For IPRs like this one to proceed despite numerous prior rulings in various fora upholding a patent’s validity is a travesty. The facts of this case underscore the mischief that can befall a patent owner under the current practice of the PTAB, enabled by the Federal Circuit… I recently wrote, “[t]he fight goes on to invalidate claims until the patent owner loses and the claims are invalidated.” But that is precisely what the § 325(d) Multiple-Proceedings rule was intended to prevent. And this needs to stop.

Patent Office Updates the Trial Practice Guide

The Patent Office has begun a planned series of updates to the Practice Guide, with the first such update having been released in August 2018. The August 2018 Practice Guide updates are intended to bring the Practice Guide into conformance with the Patent Office’s current view on best practices. Importantly, these updates do not generally reflect new practices, but rather appear to gather in one place the analysis used by existing PTAB decisions in determining commonly disputed procedural issues.

Webinar: Patent Prosecution Strategies for the Realities of AIA

Join Gene Quinn on Thursday, September 27, 2018, for a free webinar discussion on the important topic of streamlining the patent prosecution process and stretching a patent budget efficiently. Joining Gene will be Stuart Recher, Vice President of IP Services for Clarivate Analytics.

The Updated PTAB Trial Practice Guide – Not Quite There Yet

While the changes to the Trial Practice Guide begin to move the rules in the right direction, more is needed before post-grant proceedings will be accepted as neutral to all parties.  The PTAB should endeavor to adopt the time-honored burdens, presumptions and procedures used in the district courts for trying patent cases whenever reasonably possible.  Petitioners should be required to prove that the art upon which they rely is not cumulative to that previously before the USPTO, a patent owner’s Preliminary Response presenting evidence raising genuine issues of material fact should be treated as it would be if presented in opposition to a summary judgment motion brought in the courts, and the presiding panel should determine witness credibility by hearing testimony and cross examination live.