Gibbons Law Alert
Companies accused of patent infringement have a number of basic alternatives to contemplate: settle the matter; defend the suit; or consider resort to a post grant patent proceeding at the United States Patent and Trademark Office (USPTO). With an eye towards cost, risk and accurate resolution, inter partes review (IPR) proceedings are an attractive alternative to settling or defending.
As we previously reported, the US Patent and Trademark Office (USPTO) and the European Patent Office (EPO) jointly launched the Cooperative Patent Classification System (CPC) with the aim of producing a common classification system for technical documents and the promise of transparent and harmonized global classification for patent documents.
Upon the passage of the America Invents Act (“AIA”) and in an effort to help individuals and corporations who are unable to afford legal advice relating to intellectual property, the USPTO has recently announced two additional pro bono assistance programs in California and the District of Columbia. With the addition of these two programs, the USPTO has created four intellectual property pro bono programs across the United States and is forecasting an additional ten by the end of 2013.
On July 26, 2012, the U.S. Patent & Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA effective March 16, 2013. The notices set an initial comment deadline date of October 5, 2012. In response to requests for additional time to submit comments, the USPTO recently extended the comment deadline date to November 5, 2012.
The United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) jointly launched the Cooperative Patent Classification System (CPC) and released a finalized set of CPC definitions. The CPC is operational at both the EPO and USPTO. The USPTO and EPO developed the CPC with the collaborative aim of producing a common classification system for technical documents. The CPC brings the promise of transparent and harmonized global classification for patent documents.
As we previously discussed, the new inter partes review (IPR) procedures went into effect September 16, 2012, along with several other significant changes. The IPR procedure replaces the previous inter partes reexamination and applies to any patent issued before, during, or after September 16, 2012. This removes one of the hurdles of the previous inter partes reexamination which applied only to applications filed after November 29, 1999. The PTO will only accept a valid IPR petition nine months after a patent issues. As in inter partes reexamination, the IPR permits the petitioner to challenge claims as being anticipated or obvious in view of published prior art references. Also, like the previous inter partes reexamination, IPR carries with it an estoppel effect barring the IPR petitioner from asserting the invalidity of any challenged claim on the same arguments and references in any district court action.
35 U.S.C. § 122(e), adopted last fall as part of the Leahy-Smith America Invents Act (“AIA”), conditions third party submissions to the USPTO for consideration and inclusion in an application file. Recently, the USPTO published the final rules regulating these submissions by third parties: Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (2012). That is to say, the USPTO provided the requirements and guidance to anyone wishing to have the Office consider patents, published patent applications, or other printed publications of potential relevance during the examination of a pending application. The new rules pave the way for a third party to limit the scope of a pending patent application, particularly a competitor’s application, in a meaningful way.
On July 2, 2012, the United States Patent and Trademark Office announced that it will be expanding its regional office program to include Dallas, Texas, Denver, Colorado and San Jose, California. The first regional office, the Elijah J. McCoy United States Patent and Trademark Office, in Detroit, Michigan, is scheduled to open on July 13 of this year. Section 23 of the America Invents Act required the USPTO to establish at least 3 additional satellite offices by September 2014.
The Supreme Court on Monday denied Research & Diagnostics Systems Inc.’s petition for a writ of certiorari to consider the degree of deference that should be afforded administrative decisions of the PTO on appeal to Federal District Court when new evidence is presented. Streck Inc. sued R&D Systems, a blood test technology company, for patent infringement in Federal District Court. A Nebraska jury held R&D Systems liable for infringement following a finding that it had failed to establish a claim of priority over the disputed patents. In a parallel interference proceeding, the PTO awarded priority to R&D Systems. Streck appealed the PTO ruling in District Court under 35 U.S.C. § 146, where a patent holder may appeal a PTO determination concerning priority made pursuant to an interference proceeding.
The United States Patent and Trademark Office (“USPTO”) has issued a warning notice advising trademark owners to beware of third party communications that “mimic the look of official government documents” and request payment of fees. That notice was issued after a number of owners reported to the USPTO that they had made payments in response to such requests, believing that they were for official fees and then learned that they were not.