Recent Blog Posts

  • Post-Grant Buzz Spring 2017 Upcoming CLE, Director Change & New Rules  The chatter around the USPTO's Alexandria campus is the ongoing efforts of the Secretary of Commerce, Wilbur Ross, to select a new USPTO Director. With interviews progressing, some of the bigger names have seemingly fallen out of the picture.  The focus appears to have shifted to attorneys in private practice. Current favorites include a patent litigation partner in DC, the other a patent prosecution focused partner from the West Coast.  Stay tuned.  As noted previously,... More
  • Denied Petition Grounds May Be Relevant to PTAB Trial CAFC Emphasizes that Art of Denied Petition Grounds Can Come Back to Haunt Patentees  It is not uncommon for an AIA Trial Proceeding, such as Inter Partes Review (IPR), to be instituted on a subset of unpatentability grounds presented in the petition. For example, IPR is currently granted on a claim-by-claim basis.  That is, petition grounds can be accepted or denied based upon the Patent Trial & Appeal Board's (PTAB) conclusions as to whether a reasonable likelihood of prevailing is shown... More
  • ITC Shows Interest in PTAB Record Technical Findings of PTAB Increasingly Leveraged in Parallel Court Proceedings  Patent challenge proceedings of the USPTO's Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court or International Trade Commission (ITC) is left to make the ultimate resolution on validity. Yet, as I discussed last year, closed AIA trial records are being leveraged by the courts to aid... More
  • USPTO to Conduct Trade Secret Symposium Symposium to Assess Trade Secrets  In tomorrow's Federal Register, the USPTO is announcing a public symposium on issues relevant to the protection of trade secrets, and to assess recent developments such as the Defend Trade Secrets Act (DTSA). The symposium will be held on May 8, 2017, from 9 a.m. to 4 p.m. EDT.  Under U.S. law, trade secrets comprise commercially valuable information not generally known or readily ascertainable to the public, that are subject to reasonable measures to maintain confidentiality. In May 2016, the Defend... More
  • USPTO Soliciting Ideas on PTAB Procedural Reform PTAB Procedural Reform Initiative  Today the USPTO announced its PTAB Procedural Reform Inititative. The initiative seeks feedback on the nearly five years of historical data and user experiences to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review (IPR) proceedings. The purpose of the initiative is to ensure that the proceedings are as effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of the patentability of patent claims after... More