Posts Tagged: "patent office"

Parus Holdings, Inc. was unsuccessful today in its bid to the U.S. Court of Appeals for the Federal Circuit (CAFC) to reverse two Patent Trial and Appeal Board (PTAB) decisions invalidating its patent claims for voice recognition technology. The CAFC in part said in a precedential decision authored by Judge Lourie that since Parus violated the U.S. Patent and Trademark Office’s (USPTO’s) regulation against arguments incorporated by reference, the PTAB did not have to consider evidence related to those arguments.

Prioritized examination, known sometimes as “Track One,” has been in place at the United States Patent and Trademark Office (USPTO) for the past 12 years. The program, launched in September 2011 provides applicants with greater control over how quickly a patent application will be examined and offers a fast-track to an issued U.S. utility or plant patent that would be otherwise unattainable. For those wishing to obtain a patent quickly, prioritized examination is the answer—perhaps the only answer. Prioritized examination gives an application special status enjoyed throughout the life of the application in exchange for the payment of an additional fee due at the time of filing. This payment for special treatment as a prioritized application moves the application to the front of the examination line, regardless of whether the application is an originally filed nonprovisional patent application, a continuation application, a continuation-in-part, a divisional application or even a request for continue examination (RCE). The additional fee puts the application on fast track, guaranteeing a final decision from an examiner within one year, typically within six months or less.

There is no question that artificial intelligence (AI) has led to a monumental shift in intellectual property law and strategy. Most companies and attorneys are familiar with the current unsettled legal landscape as it relates to inventorship laws for intellectual property—namely, that inventions and works that are created through AI may or may not be eligible for patent or copyright protection, depending on the circumstances. But quietly in the background, AI has already been changing—and continues to change—how IP portfolios are created and managed. Below are five key ways that AI is changing how companies handle their IP portfolios. 

This week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued two precedential decisions that provide additional guidance for those participating in inter partes review (IPR) proceedings. These decisions are Medtronic, Inc. v. Teleflex Innovations S.a.r.l., cases 21-2357 and 21-2359. In total, they address six IPR proceedings challenging five patents related to various advances in guide catheter technology. The decisions raise a number of issues that suggest some tips for practice going forward.

Today, the U.S. Patent and Trademark (USPTO) published a pair of documents in the Federal Register regarding due dates on new document formatting requirements for patent applications filed with the Office. The USPTO’s decision to delay the implementation of new filing fees for non-DOCX patent applications highlights issues that the agency has had in complying with the terms of the Paperwork Reduction Act by failing to properly represent to the Office of Management and Budget the burden that the USPTO’s proposed rule changes will have on agency stakeholders.

In two separate precedential decisions authored by Chief Judge Moore today, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered victory for Teleflex Innovations, S.À.R.L. when it upheld Patent Trial and Appeal Board (PTAB) rulings that found Medtronic, Inc. had failed to prove Teleflex’s patent claims for catheter technology used in interventional cardiology procedures unpatentable. The court issued a related decision last month, authored by Judge Lourie, also finding for Teleflex. Chief Judge Moore joined Lourie’s opinion, while Judge Dyk dissented.

Former Director of the U.S. Patent and Trademark Office (USPTO) Andrei Iancu, who is now a partner with Irell & Manella, told attendees of an Orrin G. Hatch Foundation webinar today that many of the proposals in the USPTO’s recent Advance Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices should be legislated by Congress. Particularly on issues that were statutorily prescribed, such as the standard patents are reviewed under at the PTAB versus the courts, the timing for filing petitions, and who can bring an inter partes review (IPR) proceeding, Iancu said the better route to certainty is through Congress.

One of the most intriguing, and frankly long overdue, reforms the United States Patent and Trademark Office (USPTO) needs to consider is putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent. This practice has recently been called into question by the USPTO through an Advance Notice of Proposed Rulemaking (ANPRM) published in the Federal Register. The ANPRM, among many other things, raises the question whether the Office should discretionarily deny post grant proceedings filed by for-profit, non-competitive entities that in essence seek to shield actual real-parties-in-interest (RPIs) and privies from the statutory estoppel provisions contained within the America Invents Act (AIA). And two recent decisions from the Office of Patent Legal Administration (OPLA) provide even more hope that the USPTO will take a reasonable approach going forward when it comes to RPIs.

The U.S. Solicitor General recommended Tuesday that the United States Supreme Court deny Apple, Inc.’s petition asking the Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. concerning Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent).

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that Medtronic, Inc. failed to show the challenged claims of five patents covering catheter technology unpatentable. The CAFC specifically upheld the Patent Trial and Appeal Board’s (PTAB’s) finding that the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented, arguing that the prior art reference had been shown to qualify as prior art, and thus could support a determination of anticipation or obviousness.

The U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) yesterday made public a Sanctions Order against a patent owner that resulted in the cancellation of all 183 claims of five patents challenged in separate inter partes review (IPR) proceedings. The PTAB order said that Longhorn Vaccines & Diagnostics “committed an egregious abuse of the PTAB process” by “selectively and improperly” withholding “material results that were inconsistent with its arguments and the patentability of both original and proposed substitute claims.”

The U.S. Patent and Trademark Office (USPTO) today published a request for comments (RFC) in the Federal Register seeking public input on the pilot program for motion to amend (MTA) practice before the Patent Trial and Appeal Board (PTAB). The Office is considering whether to make the MTA pilot program permanent for patent validity trials under the America Invents Act (AIA) and seeks input on the PTAB’s authority to raise grounds sua sponte during the MTA process. The deadline for public comments in response to this RFC is currently set for July 24, 2023.

The U.S. Patent and Trademark Office (USPTO) published a Federal Register Notice today implementing the suggestions it received on expanding the patent bar following its October 18, 2022, request for public input on the topic. The USPTO last year requested public comment on two FRNs that attempted to expand opportunities to practice in front of the agency. The Office said at the time it planned to “expand the admission criteria of our patent bar to encourage broader participation and to keep up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.”

The United States Patent and Trademark Office (USPTO) today published a Notice of Proposed Rulemaking (NPRM) to the Federal Register that proposes a separate design patent practitioner bar. Design patent practitioners would only be able to participate in design patent proceedings. The USPTO is seeking public comments on the changes through August 14, 2023. Currently, there is only one patent bar that oversees those who practice in patent matters before the USPTO, including utility, plant, and design patents. Those already registered to practice in patent matters before the USPTO would not be impacted by the change.