September 2013

In September of 2012, the old inter partes reexamination system gave way to the new inter partes review proceedings. The America Invents Act (AIA) gave the US Patent Office authority to set the fees for IPR proceedings at level reasonable related to the anticipated costs of these new, more robust, proceedings. Not surprisingly, the IPR fees were set substantially higher than those for the old inter partes reexamination system.

However, along with this change and accompanying fee differences, the Patent Office also raised the filing fees for ex parte reexaminations dramatically. (Ex parte reexamination, as the name suggests, provides a mechanism for challenging patents with very limited opportunities for the challenger to participate.  Originally, ex parte reexamination was the only option for third parties to request review of issued patents.  The AIA largely left this system untouched.)  As the Patent Office’s fiscal year comes to a close, we have an opportunity to examine how the first year of higher fees affected filings of ex parte reexaminations and inter partes reviews.
Continue Reading In For a Penny – Are Fee Increases Reducing the Number of Ex Parte Reexamination Filings?

August was another busy month for the USPTO’s Patent Trial and Appeal Board with nearly seventy new petitions filed challenging issued patents.

Last week at ceremonies in Washington, D.C. commemorating the second anniversary of the America Invents Act (AIA), Chief Administrative Patent Judge James Smith of the PTAB noted that over 500 hundred petitions had

The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results.
Continue Reading Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

The USPTO’s final rules for petitions and motion practice impose limits on page lengths of various submissions in post grant proceedings under the America Invents Act (AIA). These rules are set forth in 37 C.F.R. 42.20 – 42.25. Perhaps most notable is the 60 page limit for petitions to initiate inter partes review and the 80 page limit on post grant review petitions in section 42.24. In addition, section 42.6 requires that all papers be double spaced and be in 14 point font characters. Although the rules provide for relief when necessary in “the interests of justice,” so far, the Patent Trial and Appeal Board (PTAB) has insisted upon strict adherence to the rules.
Continue Reading Beware of PTAB Rules Against Lengthy Submissions