Tagged: USPTO

Upcoming Gibbons Institute Event – “USPTO Patent Post-Issuance Proceedings Under the America Invents Act” – May 6

On Tuesday, May 6, the Gibbons Institute of Law, Science & Technology will host, “USPTO Patent Post-Issuance Proceedings Under the America Invents Act: Considerations Impacting the Healthcare and Technology Sectors,” at 5:00 pm in the Metropolitan Room of the Newark Club. In-house patent counsel from Pfizer, Johnson & Johnson, IBM, and Alcatel-Lucent are among the featured panelists.

IP Practitioners — Get Ready for the Global Patent Prosecution Highway!

Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway (“GPPH”): Australia (IP), Canada (CIPO), Denmark (DKPTO), Finland (NBPR), Japan (JPO), Korea (KIPO), Nordic Patent Institute (NPI), Norwegian Patent Office (NIPO), Portugal (INPI), Russia (ROSPATENT), Spain (SPTO), United Kingdom (IPO), and USA (USPTO). Unfortunately, the European Patent Office has not signed on to the GPPH yet.

Gibbons Directors Robert Rudnick & Thomas Bean to Serve on Panel for Upcoming Gibbons Institute of Law, Science & Technology Event

Robert E. Rudnick and Thomas J. Bean, Directors in the Gibbons Intellectual Property Department, will serve as panelists at the upcoming Gibbons Institute of Law, Science & Technology event, “USTPO Patent Post-Issuance Proceedings Under the American Invents Act — a New Frontier” on April 23. Mr. Rudnick and Mr. Bean, along with Kenneth Corsello of IBM and other industry and academic leaders, will address post-grant proceedings under the American Invents Act (AIA), from both the patent owner’s and challenger’s perspectives, as well as discovery and other new rules of practice before the Patent Trial and Appeal Board (PTAB). CLE credits for New Jersey and New York will be offered.

Limitations on Discovery in Inter Partes Review Proceedings

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.

The USPTO Sets Up Two Additional Pro Bono Assistance Programs in California and D.C.

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.

USPTO Extends Deadline for Commenting on First Inventor to File Provisions of the AIA to November 5, 2012

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.

Patent Classification Harmonization

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.

Inter Partes Review Under AIA is Underway …

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.

Implementation of USPTO Rules Under the AIA is Underway: Preissuance Submissions

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.