News & Analysis as of

America Invents Act

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -

USPTO Adjusts Fees for PTAB IPR Proceedings

by Jones Day on

On November 14th, the USPTO issued a final rule setting and adjusting patent fees during fiscal year 2017. The new fees, set to take effect January 16, 2018, include upward adjustments of fees for requesting Inter Partes...more

Perspectives on the PTAB Newsletter - November 2017

The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more

What if IPRs are Found Unconstitutional in Oil States?

On November 27, the Supreme Court will hear arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. The issue is: - Whether inter partes review, an adversarial process used by the Patent and Trademark...more

October 2017: Patent Litigation Update

What’s at Stake in the Oil States Case? Supreme Court Granted Cert. to Review Constitutionality of Patent Office IPR Proceedings. This term, the Supreme Court will hear a challenge to the constitutionality of inter partes...more

USPTO Announces Fee Increases Effective January 16, 2018

by Brooks Kushman P.C. on

United States Patent and Trademark Office has published final rules increasing certain fees relating to patent examination and post grant proceedings (Please click here to see the USPTO’s table showing the fee changes...more

AIA Trial Fees to Increase Substantially

On November 14, 2017, the United States Patent and Trademark Office (USPTO) published a final rule on fee increases that will take effect on January 16, 2018. 82 Fed. Reg. 52,780. The USPTO has substantially increased the...more

USPTO Finalizes Rule For Privileged Communications In Trials Before The PTAB

by Weintraub Tobin on

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the...more

Increasing Role of Objective Indicia of Nonobviousness in AIA Proceedings

by WilmerHale on

During inter partes review (IPR) proceedings, a patent owner facing a challenge to a patent’s claims on the basis of obviousness may seek to counter this challenge by presenting evidence of objective indicia of...more

Oil States Energy and SAS Institute: SCOTUS to Review Inter Partes Reviews

by Revision Legal on

As we recently discussed with respect to the proposed STRONGER Patents Act of 2017, legal debate continues to swirl around inter partes reviews. The US Supreme Court has entered the ring recently by accepting certiorari on...more

Expanded PTAB Panel Explains Exercise of Discretion on Second-Bite Petitions

by McDermott Will & Emery on

A rare expanded panel (including the chief judge) of the Patent Trial and Appeal Board (PTAB or Board) issued an precedential decision denying requests for rehearing of decisions denying institution in five inter partes...more

With Sovereign Immunity, the McCaskill Bill, and Oil States, Big Changes Might Be in Store for Inter Partes Review

When the American Invents Act was passed in 2011, most of us saw the inter partes review process as a streamlined, relatively inexpensive procedure that would permit accused infringers, especially those accused by...more

PTAB Should Have Given Credit to Inventor Corroborating Evidence

by McDermott Will & Emery on

Addressing the issue of whether the patent owner had provided sufficient evidence of prior conception to establish inurement by third-party activity, the US Court of Appeals for the Federal Circuit reversed and remanded a...more

The PTAB Establishes Standards for Exercising Discretion to Deny Institution Under § 314(a) and § 325(d)

In AIA post-grant proceedings, petitioners occasionally present challenges based on prior art or argumentation that was previously presented to the Patent Office. In some cases, the Patent Trial and Appeal Board (PTAB) has...more

The Board Gives Section 325(d) Sharp Teeth

This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter. Congress granted the...more

Perspectives on the PTAB Newsletter - October 2017

The PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides of the “v” with an...more

Aqua Products Levels the Playing Field at the PTAB

by Latham & Watkins LLP on

By giving patent owners a more effective tool for amending claims during an IPR proceeding, the Federal Circuit’s latest en banc decision changes the way stakeholders approach these proceedings. Key Points: - The burden...more

Federal Circuit Shifts Burden of Demonstrating Patentability for Amended Claims in Post-Grant Proceedings

by Alston & Bird on

Since the enactment of the America Invents Act (AIA), the USPTO’s Patent Trial and Appeal Board (PTAB) has required patent owners to bear the burden of proving the patentability of substitute claims in post-grant motions to...more

Financial Times to "the Patent Troll Narrative" -- Much Ado About Nothing

On October 16, 2017, the Financial Times (London) published an article by Rana Foroohar entitled "Big Tech vs. Big Pharma: the battle over US patent protection." If the article can be encapsulated in a word, that word would...more

Federal Circuit Clarifies Petitioner in AIA Reviews has Burden to Prove Unpatentability for Amended Claims

On October 4, 2017, the Federal Circuit provided some relief to patent owners by holding that petitioners seeking to cancel patent claims through inter partes review proceedings (“IPRs”) under the Leahy-Smith America Invents...more

IPR and CBM Statistics for Final Written Decisions Issued in September 2017

by Finnegan – AIA Blog on

The Patent Trial and Appeal Board issued 33 IPR and CBM Final Written Decisions in September, cancelling 501 (87.28%) instituted claims while declining to cancel 53 (9.23%) instituted claims. Patent owners conceded 20...more

Hatch Hints At Changes To Patent Law

by Orrick - IP Landscape on

A Look Forward on Patent Reform, Senator Orrin Hatch, October 2, 2017 - Patent law reform legislation reminds us of a horror movie zombie: it’s never truly dead. A recent post from Utah Senator Orrin Hatch is the latest...more

Federal Circuit Finds That Petitioners Have Burden Of Persuasion Of Unpatentability Of Claims Amended During An IPR Proceeding,...

by Shook, Hardy & Bacon L.L.P. on

In a much anticipated decision, the Federal Circuit has narrowly decided that a patent owner moving to amend claims during an inter partes review (IPR) does not have the burden of persuasion that the claims are patentable....more

Federal Circuit Shifts Burden of Proof for Amendments in Post-Grant Proceedings

by Hogan Lovells on

On October 4, 2017, the Federal Circuit, sitting en banc, issued a ruling in Aqua Products, Inc. v. Matal, placing the burden of persuasion on the petitioner to prove the invalidity of amended claims in post-grant...more

Federal Circuit Shifts Burdens for Motions to Amend

On October 4, 2017, the Federal Circuit, sitting en banc, issued its long-awaited decision in Aqua Products, Inc. v. Matal. Appeal No. 2015-1177. The court was fractured in its analysis, issuing five opinions. Seven judges, a...more

Federal Circuit Rejects Some USPTO Requirements For Amending Claims During IPR Proceedings

by Brooks Kushman P.C. on

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision rejecting certain procedures adopted by the Patent Trial and Appeal Board (PTAB or Board) limiting a patent owner’s ability to...more

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