Archive for the ‘AIA Patent Reform’ Category

Takeaways from Chisum Patent Academy’s 2016 Seminars

Tuesday, August 16th, 2016

A guest post from Chisum Patent Academy.

On August 4-5 and 8-9, 2016 the Chisum Patent Academy held two advanced patent law roundtable seminars at the historic Mayflower Park Hotel in Seattle, Washington. In addition to covering recent “blockbuster” court decisions, our primary focus was “The Brave New World of IPR.” We emphasized repeatedly that the law and procedure of inter partes review is a moving target. The Federal Circuit reaffirmed that on Friday, August 12, when it granted rehearing en banc in one of the IPR claim amendment cases analyzed during our seminar, In re Aqua Products, 823 F.3d 1369 (Fed. Cir. May 25, 2016).


USPTO Publishes Extensive Examination Guidelines for 35 U.S.C. 102 and 103

Thursday, February 14th, 2013

On February 14, 2013, the PTO published extensive Examination Guidelines for examination of applications filed after March 16, 2013, under 102 and 103 as amended by the AIA. Given the debates, if not confusion, that arose following the publication of the proposed rules with public comments regarding certain provisions of 102, these guidelines should provide some clarity as we prepare to go “out of the gate” after March 16th. Pay particular attention to the last section, which discusses “transition applications.” Happy Valentine’s Day!

Examination Guidelines

USPTO Publishes Rule Package on AIA Administrative Trials

Tuesday, August 14th, 2012

While this is primarily a biotechnology patent law blog, the USPTO’s high level of rule making activity deserves attention, as it will affect us all after the September 16th deadline for implementing many of the new features of the AIA passes. Today, the PTO publishes over two hundred pages of regulations, guidelines and “Rules of Practice’ regarding Inter Partes Review, Post-Grant Review, the Transitional Program [to attack] Business Method Patents, Supplemental Examination (to “purge inequitable conduct”) and the new procedures by which a person having rights to the invention can file an application in lieu of the inventor(s).

Below are links to the six USPTO Federal Register Notices –

Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, etc.

Changes to Implement Inventor’s Oath or Declaration Provisions of Leahy-Smith America Invents Act

Changes to Implement Supplemental Examination Provisions of Leahy-Smith America Invents Act and Revise Reexamination Fees

Office Patent Trial Practice Guide

Rules of Practice for Trials before Patent Trial and Appeal Board and Judicial Review of Decisions

Transitional Program for Covered Business Method Patents: Definitions of Covered Business Method Patent and Technological Invention

Will Universities Benefit from their Micro Entity Applicants?

Monday, June 11th, 2012

In an introductory post on the USPTO’s proposed rules: “Changes to Implement Micro Entity Status for Paying Patent Fees,” 77 Fed. Reg. 31806 (May 30 2010), my partner, Gary Speier, spent some time on new 35 USC 123(a), which defines a micro entity as an applicant (an “individual”) who qualifies as a small entity under 37 CFR 1.27; has not been named as an inventor on more than four previously filed applications, not counting foreign filings or provisionals, did not, in the year previous to the year in which the fee is paid, have a gross income greater than three times the median household income of the preceding year, and has not assigned and is not under an obligation to assign to a higher income entity.

Micro entities will receive a 75% reduction in fees related to filing, searching, examining, issuing and appealing patent applications and maintaining patents. Remember, micro entities are individual inventor-applicants but, in a situation in which they are university employees, and assign to their universities, it is the universities who will be paying the patent fees, and that will benefit from the micro entity status of their employees. Or will they?