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February 2012 Archives

PTO Proposed Rules: Definition of Technological Invention

By Timothy J. Maier on February 29, 2012 8:52 AM | No Comments | No TrackBacks

Section 18 of the America Invents Act enacts the "transitional post grant review proceeding," which offers broader measures for reviewing the validity of "covered business method patents."  Section 18 offers a definition of patents qualifying as "covered business method patents," but explicitly excludes "technological inventions" from the scope of coverage.

The USPTO's recently proposed rules offer further guidance by defining a technological invention:

  • In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole (1) recites a technological feature that is novel and unobvious over the prior art; and (2) solves a technical problem using a technical solution.

We anticipate the USPTO and courts will have difficulties interpreting this definition.  Thus, we expect many patentees to challenge a Section 18 petition as directed to a patent for a "technological invention."

PTO Proposed Rules: Practice Guide for Proposed Trial Rules

By Timothy J. Maier on February 24, 2012 2:52 PM | No Comments | No TrackBacks

Next on the list of PTO Federal Register notices relating to the implementation of the America Invents Act ("AIA") is the Practice Guide for Proposed Trial Rules.

The AIA establishes four new trial proceedings to be conducted by the Patent Trial and Appeal Board: (1) the Inter Partes review, (2) the post-grant review, (3) a transitional program for covered business method patents, and (4) derivation proceedings.  This article will provide a general overview of the general procedure and the statutory requirements of these new proceedings...

Continue reading PTO Proposed Rules: Practice Guide for Proposed Trial Rules.

PTO Proposed Rules: Rules of Practice for Trials Before the PTAB and Judicial Review of PTAB Decisions

By Timothy J. Maier on February 16, 2012 1:50 PM | No Comments | No TrackBacks
Last week, we introduced a list of PTO Federal Register notices relating to the implementation of the America Invents Act ("AIA"). This post will present a break-down of the first item on that list, namely, the Rules of Practice for Trials Before the PTAB and Judicial Review of PTAB Decisions, published on February 9, 2012.

This Notice summarizes certain provisions related to the Board and judicial review of Board decisions. The following is an outline of this Notice, highlighting selected portions:

  • Patent Trial and Appeal Board: This section summarizes the AIA's amendments of 35 U.S.C. 6(a) and (b), defining "administrative patent judges" and specifying the duties of the PTAB. New paragraphs (c) and (d) are also added, providing, for example, that at least 3 members of the Board hear each appeal, derivation proceeding, post-grant review, and inter partes review.

  • Judicial Review of Patent Trial and Appeal Board Decisions: The AIA changes the current Board's name from "Board of Patent Appeals and Interferences" to "Patent Trial and Appeal Board," and performs various textual substitutions in Title 35 of the United States Code. For example, references to interferences are eliminated, and the word "interference" is sometimes replaced with "derivation proceeding."

  • Discussion of Specific Rules: The AIA proposes new Parts 42 and 90 to Title 37 of the Code of Federal Regulations. This Notice discusses proposed Parts 42 and 90 in depth. New Part 42 would not cover interference proceedings. Part 41 would continue to remain in effect, not to disrupt any ongoing interference proceeding. New Part 90 would  permit consolidation of rules relating to court review of Board decisions and simplify reference to such practices. It would also implement the AIA provisions associated with judicial review of agency actions addressed by the AIA.

We will continue to keep you informed about the America Invents Act. Stay tuned for the next PTO Notice summary next week.

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PTO Publishes Proposed Rules

By Timothy J. Maier on February 10, 2012 5:06 PM | No Comments | No TrackBacks
Earlier this week, the USPTO published a number of notices in the Federal Register containing proposed rules implementing the America Invents Act.  Next week we will begin breaking down these notices and explaining their potential impacts on patent practice.

The Federal Register notices published this week cover:

  • Rules of Practice for Trials Before the PTAB and Judicial Review of PTAB Decisions 
  • Practice Guide for the Proposed Trial Rules
  • Transitional Program for Covered Business Method Patents: Definition of Technological Invention
  • Changes to Implement Transitional Program for Covered Business Method Patents
  • Changes to Implement Post-Grant Review Proceedings
  • Changes to Implement Inter Partes Review Proceedings 
  • Changes To Implement Derivation Proceedings 
The text of the notices can be found here.

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