On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) lifted a stay that he issued on May 1, 2020, pausing all activity in PTAB cases that were remanded to PTAB from the Federal Circuit under Arthrex.[1] Within the order lifting the stay,
On May 27, 2020, the U.S. Patent and Trademark Office (“USPTO”) proposed amendments to its rules governing post-grant proceedings, addressing three topics. First, petitions for post-grant proceedings would require institution of all claims or denial of the petition. Second, patent owners would be permitted to file sur-replies to principal briefs. Third, the rules would eliminate
On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]
Specifically, the Federal Register
Making up only around 7% of post-grant trials at the PTAB (according to statistics released by the USPTO from February 2018), the number of petitions for Covered Business Method (“CBM”) reviews has experienced a decline every year since its peak in 2014. With 34 filings in 2017,[1] the 16 filed so far this year
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
Given the Patent Trial and Appeal Board’s (“PTAB” or “Board”) reluctance to grant motions to amend claims during AIA post-grant proceedings, patent owners faced with post-grant challenges have attempted to circumvent the challenge of amending claims by filing reissue applications of challenged patents. By doing so, the patent owner attempts to create two parallel proceedings
A difference between post-grant proceedings (i.e., inter partes review and covered business methods) and its predecessor (i.e., ex parte and inter partes reexaminations) is the ability for parties in post-grant proceedings to settle and request termination of the proceedings. Both federal statutory authority and USPTO rules govern the nature of settlements