As I’ve written before, inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.) has been a sticking point in patent reform. Some practitioners have complained that the current process for amending claims is too complicated and unfair, pointing to the tiny number of amendments that have been granted.
Whether we on the pro-reform side agree with the complaints isn’t relevant here. The reality is that some compromise is necessary to get the changes we need to deal with patent trolls. The PATENT Act left the Judiciary Committee containing unacceptable language on how to handle amendments during IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. and a promise to keep working on it. And the Senate Judiciary Committee staff came up with a creative solution.
The way it currently works is that a patent owner can propose a new claim to replace a challenged claim if the Patent Trial and Appeals Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) invalidates it. If the original claim goes down, the PTAB considers the motion to amend. Alternatively, the patent owner can cancel a claim and propose a substitute.
In addition, a patent owner can request a separate reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new of its patent. One problem with reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new is that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. can stay the reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new until the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. is complete, leaving things in limbo. Another is that because examiners don’t have to pay attention to what’s happening in the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., there’s a possibility of conflicting or inconsistent results with the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. doing one thing and an examiner doing another.
Overall, it’s a complicated and difficult process for petitioners and patent owners.
For petitioners, there are a number of problems. Because IPRs move so quickly, they don’t have much time to respond to motions to amend. They also need to find as much prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. as possible, because the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. can’t search. Worse is the fact that a petitioner is barred from challenging new claims in any future case if it “reasonably could have raised” some other grounds. And for a petitioner that’s been sued, there’s a one-year time bar that runs from the when the complaint is served; generally an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. will take at least a year, meaning that in practice the petitioner will be time-barred from challenging any new claims that come out of the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected..
For patent owners, what complicates matters is that the burden is on the patent owner to prove that its new claim is patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature.. This is different from the way amendments work in patent prosecutionPatent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO. and patent reexaminations. In those cases, a patent examiner has to demonstrate that a proposed claim is unpatentable while considering the broadest reasonable interpretation of the claims. Patent attorneys have expressed confusion and frustration over having to prove something is patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature.; patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. over what? Over all prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed.? Over the art at issue in the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.? Over every piece of art that’s been identified in the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.? (The PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. has tried to clarify which art is relevant, but questions remain.)
There are good reasons in practice for the different standards, the main one being that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. is an adjudicatory body. It does not look for prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. to make sure the new claims are valid. But an amendment process that confounds practitioners isn’t of much use.
In contrast, the proposed compromise streamlines the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. process while at the same time ensuring that new claims are properly examined.
The basic idea is this: instead of having the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. deal with amendments, send them over to the Central ReexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new Unit (these examiners are considered some of the best in the USPTOUnited States Patent and Trademark Office. See also PTO.). That way the judges make the call on validity of the original claims, while patent examiners can consider any proposed new claims. Patent owners can do this now, but they worry that the reexam will be delayed by the PTOPatent and Trademark Office, informally used interchangeably with USPTO. until the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. is finished. So the proposal makes sure that the reexam will keep moving at the same time as the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. And petitioners won’t be prevented from challenging new claims if necessary, because estoppel and the one-year time bar wouldn’t apply to new claims.
A recent article in Law360 (subscription required) has a litany of complaints from patent attorneys about the proposal. The main one seems to be the belief that the proposal is somehow more complicated than the current process.
It’s actually straightforward, because it uses the existing reexam procedure as the model and simplifies IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected..
Once an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. is instituted, if the patent owner wants to be able to amend challenged claims, it can request the PTOPatent and Trademark Office, informally used interchangeably with USPTO. to examine them. That will essentially trigger a reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new of the requested claims, with a requirement that the patent examiner move quickly. The result of this examination is treated just as if the patent owner had separately requested reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, but the examiner must consider any decisions by the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. as part of her work.
The IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. continues on the challenged claims as it normally would, but without the amendment process that’s been the bane of patent owners and terrifies petitioners. Unlike amendments that come out of IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., petitioners can challenge any amendments coming out of this process in a future IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. And if petitioners are sued on the amended claims they will be able to defend themselves fully in court, something that the estoppel prevents now.
The end result is a process that’s faster and fairer to both sides, as well as much easier for practitioners.
You can read the proposed changes here.