The United States Patent and Trademark Office (USPTO) has published an Advance Notice of Proposed Rulemaking (ANPRM) in the Federal Register, seeking public comment regarding a variety of issues relating to proceedings before the Patent Trial and Appeal Board (PTAB). The deadline to comment is June 20, 2023, and the USPTO has signaled that no one should anticipate any additional time or grace period for late comments.

The ANPRM, which is an unusual additional step in rulemaking, has some ideas that are likely not to be very controversial, but other ideas on which there will likely be great difference of opinion. Ranging from ideas like streamlining Fintiv factors, to excluding PGR filings from discretionary denial based on ongoing parallel litigation, to requiring the disclosure of join defense agreements, to expanding the “compelling merits” standard to 314(a), to possibly putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent where there is no clear relation to the patent, there is something for everyone to love and something for everyone to hate.

On Thursday, June 1, 2023, at 12:00 PM ET, join Gene Quinn, twice named one of the 50 most influential people in Intellectual Property, for a wide-ranging conversation about the proposed rule ideas. Joining Gene will be Scott McKeown, a partner at Ropes & Gray, the author of PatentsPostGrant.com, and the most active PTAB trial attorney in the U.S. who has handled some of the most noteworthy cases, and James Carmichael, former Administrative Patent Judge and year after year one of the winningest attorneys for patent owners at the PTAB since its inception.

Materials

PTAB Rule Ideas – The Good, The Bad, & The Ugly

Salesforce Reexams Vacated Because It Was Real-Party-in-Interest in RPX IPR

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