Intellectual Property Lawyers

Ergo Licensing, LLC v. CareFusion 303, Inc and the validity of computer-implemented means-plus-function claims

2012-05-16T14:35:54Z

Ergo Licensing, LLC v. CareFusion 303, Inc, No. 11-1229 (Fed. Cir. Mar. 26, 2012) provides Federal Circuit precedent for showing the invalidity of computer-implemented means-plus-function claims.

Ergo's U.S. Patent No. 5,507,412 (the "'412 patent") describes an infusion system for metering and delivering fluids from multiple sources into a patient's body. The metering is accomplished using adjusting means that are associated with each fluid source and coupled to a central control device. In the claims, the terms "control means" and "programmable control means" are used to refer to this control device.

The Federal Circuit affirmed the district court's holding that the terms "control means" and "programmable control means" are indefinite for failure to disclose a corresponding structure.

The court rejected Ergo's argument that the corresponding structure for a "control means" is the recitation of a "control device" in the specification. The court reasoned that the term "control device" is synonymous with "control means," thereby failing to provide structural disclosure. Further, the presence of "memory" in the "control device" did not suffice to provide a "structure capable of performing the function of 'controlling the adjusting means.'"

The court further relied on Ergo's expert testimony to determine that a "control device" could refer to three different types of control devices commonly available at the time. That a PHOSITA may have been able to find a structure that would work does not suffice under § 112 ¶ 6, under which "a patentee is only entitled to 'corresponding structure . . . described in the specification and equivalents thereof,' not any device capable of performing the function."

The court also rejected Ergo's argument that a "control device" is synonymous with a computer. Computer-implemented, means-plus-function terms are limited to algorithms disclosed in the specification. Since the claimed function requires more than merely plugging in a general-purpose computer, the disclosure an algorithm in the '412 patent is needed, and lacking.

Dissenting, Judge Newman focused on "established protocols of claim drafting." Judge Newman emphasized the importance of the expactations of patentees, given the thousands of patented claims with similar language in today's world of "electronic cyber-assisted technologies."

Judge Newman further stressed the limits in the expertise of judges when invalidating a patent on formalistic grounds. Judge Newman noted that the patent examiner had not deemed the claims invalid for lack of described structure for "control means," and stated that "PTO expertise in such matters as patent examination for statutory compliance warrants deference."

We will monitor the practical impact of Ergo Licensing v. CareFusion 303 on computer-implemented means-plus-function claims. Keep checking PostGrant.com for future updates on the matter.

Federal Circuit finds Inequitable Conduct for the first time since Therasense

2012-04-16T22:03:32Z

The Federal Circuit recently issued an opinion in Aventis Pharma v. Hospira, an important patent case involving inequitable conduct. We last discussed this issue in the context of the Federal Circuit's landmark opinion in Therasense, Inc. v. Becton, Dickinson, & Co., in which the court drastically narrowed the standards used to determine inequitable conduct.

In order to prove inequitable conduct, an alleged infringer must satisfy a two-pronged test, showing both that the patentholder intentionally withheld or misrepresented information, and that the information was material. Under the old standard, "material" was defined as any information that a reasonable examiner would have wanted to know about. The two prongs of the test were balanced against each other -- an alleged infringer could make up for a weak materiality showing with a strong showing of intent, and vice versa.

Therasense drastically altered this framework in several key ways. First, the necessary intent was narrowed to specific intent -- not that the information was withheld knowingly, but that it was withheld with the actual intention of deceiving the USPTO. Second, the materiality standard was raised to a "but-for" standard, in which information is material only if the patent would not have issued but for its omission. Finally, the Federal Circuit explicitly rejected the materiality-intent balancing approach. These shifts led to worry among many commentators that the doctrine of inequitable conduct had been left effectively gutted, and that the new standard would allow applicants to engage in increasingly unsavory behavior.

In Aventis, the Federal Circuit found a patent unenforceable due to inequitable conduct for the first time since Therasense. In this case, the applicant failed to notify the USPTO about a known reference that impacted patentability. With resepect to the materiality prong, the court found that several of the claims were invalid as obvious over the withheld reference, and that this fact alone was enough to show materiality. Regarding the intent prong, the court held that specific intent to deceive can be proven by inference, but only if that inference is the single most reasonable inference that is able to be drawn. Here, the inventor argued that the reference was not disclosed because it only explained failed experiments. However, the Federal Circuit affirmed the trial court's ruling that the inventor lacked credibility and that the inventor appeared to have learned valuable information from the reference.

Post Grant Review and Estoppel under the AIA

2012-03-30T18:03:39Z

Starting September 16, 2012, the Post Grant Review (PGR) option of the America Invents Act will be implemented. Within nine months of issue, PGR will offer third parties the opportunity to petition the Patent Office to review an allowed patent. Under the new system, one of the main attractions for potential petitioners is the expanded bases on which patents may be challenged. However, PGR also includes a significant estoppel provision for challengers.

Under 35 U.S.C. 325(e), a challenger whose petition for PGR results in a final decision (settlement during PGR will not apply) will be estopped from later asserting a claim is unpatentable or invalid on any ground the challenger raised or reasonably could have raised during PGR. The provision applies for future actions at the USPTO, the district court, and the ITC, thus offering a substantial counter to the expanded review opportunities under PGR.

Supreme Court decides Mayo v. Prometheus

2012-03-20T17:41:37Z

Today the Supreme Court issued its opinion in Mayo v. Prometheus, an important intellectual property case. As we discussed when the Court heard oral arguments, the case mainly concerned the status of the machine-or-transformation test when determining patent eligibility:

On remand, the Federal Circuit characterized the central question as whether Prometheus's claims are drawn to a natural phenomenon, the patenting of which would entirely preempt its use, or whether the claims are only drawn to a particular application of the phenomenon. Mayo argued, before the Federal Circuit and again this past week before the Supreme Court, that this was the sole controlling standard, and that Bilski stood for the proposition that, while the machine-or-transformation test is a helpful clue, it cannot be outcome-determinative in this analysis. According to Mayo, even if the claims passed the machine-or-transformation test, more analysis, such as a robust preemption analysis, would be necessary to make a subject-matter eligibility determination. Prometheus, on the other hand, argued that the Bilski ruling only meant that patents which did not satisfy the machine-or-transformation test were not necessarily unpatentable, but did not go so far as to say that some patents that do satisfy the test are unpatentable.

This question -- whether passing the machine-or-transformation test means that an invention is per se patent-eligible -- is one of the central questions left open by the Supreme Court in Bilski v. Kappos. Today the court seemingly closed that question by finding the invention in Prometheus to be ineligible for patent protection.

According to Justice Breyer, writing for the unanimous Court, the "administering" and "determining" steps are "not themselves natural laws but neither are they sufficient to transform the nature of the claim." These steps simply tell doctors to engage in well-understood, routine, conventional activity already engaged in by scientists in the field, and are not sufficient to transform a law of nature into a patentable application of that law.

The Court was careful to reaffirm that the machine-or-transformation test remains an "important and useful clue" to patentability. However, the Court noted that "we have neither said nor implied that the test trumps the 'law of nature' exclusion," and that "the test fails here."

As a result, it appears that the machine-or-transformation test is no longer dispositive, and that moving forward even claims involving a machine or a transformation will have to be carefully drafted to avoid running afoul of the "law of nature" exclusion as well.

PTO Proposed Rules: Changes to Implement Transitional Program for Covered Business Method Patents

2012-03-12T14:10:52Z

Next in our series on the PTO Federal Register notices relating to the implementation of the America Invents Act ("AIA"), today we will take a look at Changes to Implement Transitional Program for Covered Business Method Patents.

The America Invents Act creates a post-grant review process for all granted patents, under which a petitioner seeking to invalidate a patent can request a review for nine months after the grant of the patent. In most cases, once that nine-month window is closed, the only option available is the more onerous inter partes review. However, §18 of the AIA establishes a special set of conditions under which a defendant charged with infringement of a covered business method patent can file a petition for a transitional post-grant review proceeding during an 8-year period of time beginning one year after enactment of the AIA.

In order to implement this process, Title 37 of the Code of Federal Regulations, Chapter I, Part 42, Subpart D, entitled ''Transitional Program for Covered Business Method Patents'' is proposed to be added as follows:

Section 42.300:

Proposed § 42.300 would set forth policy considerations for covered business method patent review proceedings. Specifically, Proposed § 42.300(a) would provide that a covered business method patent review is a trial and subject to the rules set forth in subpart A and also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200, 42.201, 42.202, and 42.204. Proposed § 42.300(b) would provide that a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears. Proposed § 42.300(c) would provide a one-year timeframe for administering the proceeding after institution, with a six-month extension for good cause.Proposed § 42.300(d) would provide that the rules in subpart D are in effect until September 15, 2020, except that the rules shall continue to apply to any covered business method patent review filed before the date of repeal.

Section 42.301:

Proposed § 42.301 would provide definitions specific to covered business method patent reviews. Specifically, Proposed § 42.301(a) would adopt the definition for covered business method patents provided in § 18(d)(1) of the AIA. The proposed definition would provide that covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. Pursuant to § 18(d)(2) of the AIA, the Office in a separate rulemaking is proposing the definition of a technological invention, which would be set forth in proposed § 42.301(b).

Section 42.302:

Proposed § 42.302 would identify who may file a petition for a covered business method patent review. Specifically, Proposed § 42.302(a) would provide that a petitioner may not file a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner's real party in interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Proposed § 42.302(b) would provide that a petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner's real party in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.

Section 42.303:

Proposed § 42.303 would provide that a petition for a covered business method patent review may be filed at any time prior to or after the time a petition for a post-grant review of the patent would satisfy the requirements of 35 U.S.C. 321(c).

Section 42.304:

Proposed § 42.304 would provide for the content of petitions to institute a covered business method patent review. Specifically, Proposed § 42.304(a) would provide that a petition under this section must demonstrate that the petitioner has grounds for standing. To establish standing, a petitioner, at a minimum, would be required to certify that the patent is available for covered business method patent review and that the petitioner meets the eligibility requirements of § 42.302. Proposed § 42.304(b) would require that the petition identify the precise relief requested for the claims challenged. Proposed § 42.304(c) would provide that a petitioner seeking to correct clerical or typographical mistakes could file a motion to correct the mistakes. The proposed rule would also provide that the grant of such a motion would not alter the filing date of the petition.

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

PTO Proposed Rules: Definition of Technological Invention

2012-02-29T13:52:01Z

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

2012-02-24T19:52:17Z

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...

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General Procedure: The purpose of the AIA proposed trial rules is to ensure the just, speedy, and inexpensive resolution of a proceeding, allowing for the rules to be modified to further these goals. A proceeding will generally begin with the filing of a petition which identifies any challengeable claim and puts forth supporting evidence on a claim-by-claim basis. The patent owner has a two month window to file an optional preliminary response prior to review by the Board. Within three months of the time the preliminary response is filed -- or in the absence of a filing, after the deadline for filing preliminary response -- the Board will determine whether to move forward with the proceeding. If the Board decides to move forward, it will narrow the issues for final decision and decide on which grounds the trial will proceed. At this point, a party may request a rehearing on issues and support not included by the Board. Finally, the Board will enter a Scheduling Order to institute the proceeding. A party dissatisfied with a decision may file a request for rehearing before the Board, but the Board's determination on whether to institute a trial is final and nonappealable.

Statutory Threshold Requirements for the Proceedings:

An inter partes review will be instituted only if the petitioner shows that there is a reasonable likelihood of prevailing with at least one claim. This standard is somewhat flexible and allows for significant exercise of judgement by the judge.
The Director will not allow a petitioner for a post-grant review to move forward unless the petitioner can demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The petition must also raise a "novel or unsettled legal question that is important to other patents or patent applications."
In order for a transitional program for covered business method proceeding to move forward, the petitioner or the party represented by the petitioner must have been sued for infringement of the patent. Covered business method patents do not include patents for technological inventions.
Finally, the petition for a derivation proceeding must state with particularity the unauthorized basis for the finding that a named inventor in the earlier application derived the claimed invention from an inventor named in the petitioner's application.

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

2012-02-16T18:50:00Z

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

2012-02-10T22:06:14Z

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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Trademarking the senses: smell marks and other non-traditional marks

2012-01-18T16:30:00Z

When thinking of trademarks, logos, symbols and slogans are typically the first things that come to mind. Such visual marks have been the oldest and most accepted way to represent the sources of goods and services, with the first registered trademark being issued to Bass Ale in 1875. Indeed, the Lanham Act defines a trademark as "any word, name, symbol, or device, or any combination thereof."

Recently, however, companies have found other means to distinguish their products -- and to obtain trademark protection for those means. In some countries, businesses have even attempted to register animations, sounds, smells, and even tastes as trademarks for their products.

In the United States, color was determined to meet the legal requirements for trademark protection, in the 1995 case Qualitex Co. v. Jacobson Products Co., Inc. The Qualitex Company had been using a particular green-gold color on its dry cleaning pads, and registered the color as a trademark in 1991. After Qualitex brought a trademark infringement suit against competitor Jacobson Products, the Supreme Court held that color could be a valid trademark, as the particular color of Qualitex's pads had acquired a secondary meaning over time, sufficient to identify Qualitex as the source of the green-gold pads.

Non-visual stimuli have also been registered as trademarks. In 2009, the Argentine Trademark Office registered its first smell mark -- a fragrance of various fruits, which will be applied to containers. A total of five such marks were issued to L'Oréal. While the Argentine trademark law does not expressly cover scents, it does provide for a broad interpretation of distinctive signs, allowing for the registration of smell marks.

As smell is one of the strongest type of human memory, having potential to evoke distant images and emotions, it may even be that a distinctive scent is one of the most potent and effective ways to distinguish one's products from others on the market. Other smell mark registrations, in various countries, have included the "scent of fresh cut grass" for tennis balls, "a floral fragrance reminiscent of roses as applied to tyres," and plumeria scented sewing thread.

To be continued...

Kodak mulls Bankruptcy, looks to sell Patents

2012-01-06T21:17:08Z

In the past week it has come to light that Eastman Kodak Co. has begun preparations to file for Chapter 11 bankruptcy, a move which would mark a new low point in the storied company's slow decline. Over the past decade, as Kodak watched its core product, film, slowly vanish from the marketplace, it made the strategic decision to target the inkjet printer market, a decision that has failed to pay off.

The one asset that may allow Kodak to avoid bankruptcy is its intellectual property holdings. Kodak has been trying to follow the example of Nortel, a company that also fell behind the technological edge but was able to auction off its patent portfolio for more than $4 billion. Some experts have estimated Kodak's portfolio to be just as valuable as Nortel's, and argue that it represents the struggling company's most valuable asset.

This demonstrates once again the enormous importance of intellectual property to any company. When a business is on the cutting edge technologically, patents can provide a defense against competitor encroachment, and a lack of protection can have disastrous results, such as the nightmare scenario that Google recently avoided. Patents remain just as important, however, when a company such as Kodak falls behind the technological edge, serving as an important store of value and providing a tangible representation of a company's intangible investment in research and development.

Patent Bar Scheduled to Start Testing AIA

2011-12-14T15:14:46Z

On or around January 31, the patent bar will be updated to include some of the new laws implemented in accordance with the American Invents Act. While changes to the patent bar usually result in an increase in test takers, we do not think this update should be cause for concern. Notably, the update will only include additions which regard the rules which: "a) permit prioritized examination of patent applications (Track I) and (b) revise the standard for granting inter partes reexamination requests. Additionally, the registration examination will include questions concerning the November 22, 2011 rules governing practice ex parte appeals before the Board of Patent Appeals and Interferences."

From a practical viewpoint, it is wise to start learning the law which is currently in existence, but from a strictly test-taking viewpoint, these updates are relatively small and simple. Please keep reading for an overview of the updated rules.

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]]> Prioritized Examination: The key here is that any inventor may request prioritized at the time of filing an application upon payment of a $4800 fee ($2400 for small entities) in addition to the normal filing fees. Another key is to recognize that this is different from accelerated examination.

Inter Partes Reexamination Requests: The only inter partes update to the test regards the standard for granting a request inter partes reexamation. In accordance with the AIA, the standard has been changed from "substantial question of patentability" to "reasonable likelihood that the requester would prevail," which should increase the burden on requesters who desire inter partes reexamination.

(Note: As of September 16, 2012, inter partes reexamination will be elimated in favor of inter partes review. However, inter partes review is not being tested on the updated test, the patent bar will strictly test the standard for inter partes reexamination for requests made prior to September 16, 2012.)

Ex Parte Patent Appeals: The update regarding ex parte patent appeals will probably be where you want to spend your time. The rules have been updated to remove several briefing requirements from appeal briefs, allow the board earlier jurisdiction over appeals, and generally smoothline the appeals process. As we discussed in an earlier post, many of the updated rules are very logical and remove burdensome aspects of the process that many practitioners were frustrated with. If you do not have time to learn all of the new rules, try to pick the answer which reflects a logical, streamlined process. If you are interested in learning in all of the nuances, please check back soon, as we are preparing a comprehensive review of the new BPAI rules.

So if you are planning on taking the patent bar and can't find an open seat before January 31, 2012, don't be too worried.

Supreme Court Hears Oral Argument on Mayo v. Prometheus: §101 Issues

2011-12-09T15:43:36Z

Earlier this week, the Supreme Court heard oral arguments in Mayo v. Prometheus, an important case that deals with many of the same §101 issues as were present in Bilski earlier this year.

Briefly, Prometheus concerns patents on a method for determining optimal dosage levels for drugs used to treat autoimmune diseases. In the claimed process, a particular drug is administered to a patient, and the levels of the drug's metabolites present in the patient are then determined. The process also includes steps wherein presence of a metabolite at certain levels indicates a need to increase or decrease the amount of drug administered in the future.

This case first came to the Federal Circuit after it had decided In re Bilski, but before the Supreme Court issued its decision in Bilski v. Kappos. As a result, the Federal Circuit applied the machine-or-transformation test as the definitive test under §101, and found the claims to be patent-eligible. According to the Federal Circuit, the administering and determining steps were transformative and therefore satisfied the second prong of the test, and as a result the claims did not wholly preempt the use of the correlations between metabolite levels and therapeutic efficacy or toxicity.

After Bilski v. Kappos, the Supreme Court vacated this case and remanded it to the Federal Circuit for reconsideration, giving that court one of its first opportunities to attempt to apply and interpret Bilski. On remand, the Federal Circuit characterized the central question as whether Prometheus's claims are drawn to a natural phenomenon, the patenting of which would entirely preempt its use, or whether the claims are only drawn to a particular application of the phenomenon. Mayo, argued, before the Federal Circuit and again this past week before the Supreme Court, that this was the sole controlling standard, and that Bilski stood for the proposition that, while the machine-or-transformation test is a helpful clue, it cannot be outcome-determinative in this analysis. According to Mayo, even if the claims passed the machine-or-transformation test, more analysis, such as a robust preemption analysis, would be necessary to make a subject-matter eligibility determination. Prometheus, on the other hand, argued that the Bilski ruling only meant that patents which did not satisfy the machine-or-transformation test were not necessarily unpatentable, but did not go so far as to say that some patents that do satisfy the test are unpatentable.

The Federal Circuit ultimately agreed with Prometheus. Does this conception of patent-eligible subject matter comport with the result in Bilski? In Bilski, the Court never mentioned the machine-or-transformation test as anything other than a useful tool, and a helpful clue in patent-eligibility analysis. And, as noted by the Federal Circuit, in Benson the Supreme Court stated that "[t]ransformation and reduction of an article to a 'different state or thing' is the clue to the patentability of a process claim that does not include particular machines." So, while the Supreme Court does support the machine-or-transformation test as useful, it has never explicitly ruled that a claim that passes the test is also per se not preemptive. However, by the same token, it has never explicitly found a claim that does pass the test to be unpatentable. So, while this line of reasoning in Prometheus does extend somewhat beyond current Supreme Court precedent, it is at least not inconsistent with that precedent. It will be interesting to see, when the decision in this case finally comes down, whether the Supreme Court is willing to stretch as far as the Federal Circuit.

Petition Thresholds for Post Issuance Matters under the America Invents Act

2011-11-30T18:08:11Z

The new "Inter partes review" proceedings adjudicated before the newly created Patent Trial and Appeal Board, and the new "post-grant review" process will be implemented with the Group 2 Rules of the America Invents Act. While the USPTO is still accepting comments on the Group 2 Rules, one of the major changes in these post issuance matters is the threshold for review of a petition filed under either process.

The "substantial new question of patentability" threshold previously required for inter partes reexaminations will be replaced with a "showing that there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged." Meanwhile to initiate the post grant review process, a petition must show that "it is more likely than not that at least one claim challenged is patentable."

While the USPTO has indicated that the two standards are in fact different, the ultimate interpretation of each remains to be seen. However, interested parties should take note that the new thresholds will represent a higher showing than pre-AIA standards.

USPTO publishes new set of BPAI Final Rules

2011-11-25T20:46:26Z

Due to a mounting backlog of cases to be decided before the Board of Patent Appeals and Interferences, the Patent and Trademark Office has published a new set of rules that are expected to streamline ex parte appeals before the BPAI. The modified rules include several measures intended to simplify and expedite appeals practice, including:

Changes to several aspects of the content of the appeal brief, such as the removal of the requirements to state the status of claims and amendments, the grounds of rejection to be reviewed, and the evidence and related appeals appendices.
The presumption that the appellant is appealing all rejected claims in the application, obviating the necessity for an explicit statement of the claims being appealed.
Removal of the requirement for the Examiner to acknowledge the appeal brief, allowing the Board to have jurisdiction over the appeal upon filing of the brief.
Changes to the factual situations that constitute a new ground of rejection by the Examiner.

The full content of the changes to the BPAI Final Rules may be found in the Federal Register. The rules are to go into effect on January 23, 2012.

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