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Posts Tagged: "appeals rules"

Rule 36 Judgment: The growing problem of one word affrimance by the Federal Circuit

In PCT International, Inc. v. Holland Electronics, LLC, the use of a Rule 36 judgment is particularly disconcerting because the Federal Circuit upheld the issuance of a permanent injunction by the district court. Since the Supreme Court’s decision in eBay v. MercExchange over a decade ago it has become increasingly difficult, indeed at times impossible, for victorious patent owners to enjoy exclusive rights once they have prevailed in a patent infringement litigation. Issuing a Rule 36 judgment where the patent owner was victorious and a permanent injunction stands robs the patent owner community of vital Federal Circuit precedent that could otherwise be used to inform district courts on the appropriateness of this extraordinarily important remedy.

Patent Bar Blues: New Rules, Old MPEP Make for Difficult Study

The unfortunate thing is that all of these individuals were getting this question incorrect and anyone who relied on this information moving forward would get the question incorrect. The MPEP section that points to one answer as correct cites an old version of the Rule. The Rule was modified in a Federal Register Notice, which is a testable document and supersedes the MPEP. The new language of the Rule has not yet made it into the MPEP section. The moral of the story is that you have to be very careful when you rely on these forum sites and take advice from someone who is either studying or just passed the exam. They may be giving you good information, but they may be leading you astray.

Recent Patent Related Federal Register Notices

At this time of the year many attorneys and agents are not paying all that much attention to the rules and requests for comments coming out of the Patent Office. Truthfully, with the number of changes that have taken place under the Kappos run Patent Office and the enormity of the America Invents Act many patent attorneys, including myself, are worn out! Add to that the typical end of the year matters for clients and our own businesses and it is easy to miss announcements in November and December.

U.S. Patent Office Finalizes New Appeal Rules

By eliminating certain briefing requirements the PTO hopes to reduce the number of non-compliant appeal briefs and the number of non-compliant examiner’s answers. Non-compliant briefs and non-compliant examiner’s answers needlessly delay consideration of an appeal by the Board, which contributes to the long delays applicants on the appeals track face. Delays due to non-compliant briefs and answers are particularly unconscionable given the average pendency for an application that must proceed to appeal, which as of October 2011 stands at 81.8 months! That is nearly 7 years from the filing of an application to resolution if action by the Board is required. When the non-compliance is minor or relates to information the Board could well obtain for itself right in the Office files it is downright nonsensical to interject delay by kicking non-compliant briefs and examiner answers. Hopefully these new rules will help at least a little bit for some applicants.

US Patent Office Seeks to Modify Appeals Rules… Again

The United States Patent and Trademark Office earlier today announced in the Federal Register that they will once again attempt to modify the rules of practice and procedure in ex parte appeals before the Board of Patent Appeals and Interferences (BPAI). Many will undoubtedly remember that just over one year ago, on December 9, 2008, the Office of Management and…

Patent Office Finally Announces Rule Delay

The United States Patent & Trademark Office finally posted on its website an announcement that the new appeals rules that were to go into effect today, December 10, 2008, have been held up and will not go into effect.  Here is the announcement on the Patent Office website: In the December 10, 2008 edition of the Federal Register, the USPTO…