On March 5, 2019, the USPTO hosted a rare and special event in recognition and celebration of female inventors and the contributions of women in science, technology, engineering, and mathematics (“STEM”). The celebration commenced with opening remarks from Laura A. Peter, Deputy Director of the USPTO, followed by keynote speeches from Congresswoman Martha Roby, Secretary
Caitlin M. Wilmot
Amendments on Amendments: USPTO Proposes Changes to the Motion to Amend Practice in AIA Trials
The United States Patent and Trademark Office (“USPTO” or the “Office”) recently proposed new AIA trial procedures aimed at boosting the success rate of patent owner motions to amend.[1] The new procedures, if made effective, would allow patent owners to preview the Board’s analysis of a motion to amend and to then revise their…
Voluntary Dismissal Without Prejudice Does Not Nullify § 315(b)’s Time Bar
On August 16, 2018, the en banc Federal Circuit held that 35 U.S.C. § 315(b) unambiguously triggers the one-year time bar to file an inter partes review (IPR) petition after a complaint is served, regardless of what may follow. In its decision, Click-to-Call Technologies, LP v. Ingenio, Inc., __ F.3d __, 2018 WL 3893119 (Fed.…
USPTO Proposes Narrower AIA Claim Construction Standard to Match District Courts
On Wednesday, May 9, 2018, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register[1], announcing its plans to change the claim construction standard used in America Invents Act (“AIA”) reviews to the standard applied in the federal district courts and International Trade Commission (“ITC”) proceedings. Under…
Patent Examiners Will Get a Head Start with Automated Prior Art Searches
On Thursday, March 15, 2018, Commissioner for Patents, Andrew Hirshfeld, announced that the USPTO is making progress on its “Access to Prior Art Project,” which will serve as an automated tool to identify relevant prior art early in the review process.[1] The goal of the project is to increase patent examination quality and efficiency…
USPTO Trims the Regulatory Fat
On Friday, January 19, 2018, in a Federal Register notice, the USPTO identified four regulations that it is proposing to abolish.[1] The proposals comply with Executive Order 13777, signed by President Trump in February of 2017, which require federal agencies to review all existing regulations and identify those that should be repealed, replaced, or…
PTAB Issues Guidance on Motions to Amend in View of Aqua Products
On November 21, 2017, the PTAB issued guidance on motions to amend in view of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).[i] The decision, a compilation of five separate opinions totaling 148 pages, left much to be analyzed and digested. However, as…
How Many References Is Too Many for Challenging a Patent on Obviousness?
The PTAB does not appear to have weighed in, one way or another, on the question of how many references is too many for an obviousness challenge under 35 U.S.C. § 103—at least not explicitly. Implicitly, the PTAB has regularly instituted inter partes review of patents where four or more references have been used to…
PTAB’s Discretion to Deny Institution under 35 U.S.C. § 325(d)
Under 35 U.S.C. § 325(d), the Patent Trial and Appeal Board (“Board”) may “take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[1] From seven Informative Decisions, in which the Board used its discretion under § 325(d)…
Overburdened: Federal Circuit Reverses Based On PTAB’s Improper Shifting Of Burden To Patent Owner
On July 25, 2016, in In re Magnum Oil Tools Int’l, Ltd., Case No. 2015-1300, the Federal Circuit clarified the respective burdens carried by both the petitioner and the patentee in an inter partes review proceeding. The court reversed the Board’s decision that the challenged claims of U.S. Patent No. 8,079,413, directed to oil…