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
Implications of PTAB’s Transition to the Phillips standard for Claim Construction
By Derek F. Dahlgren on
Posted in About the PTAB
The PTAB will soon implement a change in its claim construction standard in post-issuance reviews, moving from the broadest reasonable interpretation (“BRI”) standard to the standard articulated in the Federal Circuit’s opinion, Phillips v. AWH Corp.[1] We previously covered this on our blog here. The effects of the change may be significant in…
Bye-Bye BRI: PTAB to Apply District Court Claim Construction Standard in AIA Proceedings
By Martin M. Zoltick & Michael H. Jones on
Posted in About the PTAB
On October 11, 2018, the United States Patent and Trademark Office (USPTO) announced a change in the claim construction standard used for inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) review. For these proceedings, the claim construction standard will be changed from the broadest reasonable interpretation (BRI) standard to the standard…
USPTO Issues an Update to the AIA Trial Practice Guide
By Benjamin R. Holt on
Posted in About the PTAB
The USPTO first published its AIA Trial Practice Guide (“TPG”) in August 2012.[1] The TPG provides practitioners with guidance on typical procedures and times for taking action in AIA trials before the Patent Trial and Appeal Board (“the Board”), including inter partes reviews, post-grant reviews, covered business method reviews, and derivation proceedings. The TPG…
USPTO Proposes Narrower AIA Claim Construction Standard to Match District Courts
By Caitlin M. Wilmot on
Posted in About the PTAB
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…
Do Nidec Motor Corp. and Wi-Fi One Foreshadow an End to Self-Joinder in Inter Partes Review Proceedings?
By D. Lawson Allen on
Posted in About the PTAB
Section 315(c) of the America Invents Act (“AIA”) provides that if the Director of the U.S. Patent and Trademark Office (“USPTO”)
institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the…
PTAB Issues Guidance on Motions to Amend in View of Aqua Products
By Caitlin M. Wilmot on
Posted in About the PTAB
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…
The Potential Impact of the Supreme Court’s Decision in Oil States
By Jennifer P. Nock & Nicole M. DeAbrantes on
Posted in About the PTAB
On November 27, 2017, in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Supreme Court will hold oral argument to determine the constitutionality of the inter partes review (“IPR”) process implemented by the America Invents Act. Clearly, this case has the potential to drastically alter the patent litigation landscape if IPR…
Fees for PTAB Post Grant Proceedings to Jump in January
By Aydin H. Harston on
Posted in About the PTAB
- Inter Partes Review Request Fee to Jump 72%
- Post-Grant or Covered Business Method Review Request Fee to Jump 33%
The U.S. Patent & Trademark Office (“USPTO”) announced a new fee structure set to take effect on January 16, 2018. Notably, fees for PTAB proceedings will increase significantly. The USPTO explains that the fee increases are…
PTAB Institutes Post-Grant Review of Pharmaceutical Patent
By Nicole M. DeAbrantes on
Posted in PTAB Decisions
In an effort to combat pharmaceutical patent holders, several companies are now filing petitions for post-grant review on the theory that the claims are unpatentable for lacking sufficient written description and enablement. Although the number of post-grant review proceedings remains fairly small in comparison to inter-partes review proceedings, the recent increase in filings by generic…