Recent Blog Posts

  • Related Applications & PTAB Trials: Post-Grant Pilot Results Patent Examiners Leverage AIA Trial Data  Back in April, the USPTO launched the Post Grant Outcomes Pilot, which focused on pending patent applications that are related to patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). The agency now reports that the Post Grant Outcomes Pilot has succeeded in making examiners aware of trials related to applications they are examining, and in turn has facilitated the timely and effective examination of applications.  The idea... More
  • CAFC Defines Outer Boundaries of CBM Eligibility "Incidental to" or "Complementary to" Financial Products/Services is Not Enough  Since 2012, the Patent Trial & Appeal Board (PTAB) has reined in its definition of a covered business method (CBM) patent under Section 18 of the AIA. In early CBM decisions, it was enough for the patent specification to reference some incidental or complimentary financial service aspect for the PTAB to find CBM eligibility. Since those early decisions, the PTAB has recalibrated its CBM eligibility analysis. Today, the Board increasingly seeks... More
  • Tuesday Webinar to Update P3 & After-Final Practice After Final Practice (P3) - November 2016  Some patent prosecution CLE is available this week.  This Tuesday (1-3PM EST), Strafford Publications presents a special encore presentation of: After-Final Practice: Navigating Expanding PTO Options to Compact Patent Prosecution.  The webinar program will cover efficient patent prosecution practices in view of the expanding after-final landscape at the USPTO. Topics include Post-Prosecution Pilot Program (P3), After-Final Consideration Pilot 2.0, Pre-Appeal Conference Requests & Appeal. The webinar will provide updates on P3, closed art units, and perceived efficacy... More
  • CAFC Invites En Banc Review of IPR Appeal Bar Court Questions Reasoning in Achates Publishing  Today, in Click-To-Call Techs. v. Oracle Corp., (here) the Federal Circuit reconsidered its earlier decision (GVR Order) in light of the 35 U.S.C. § 314(d) discussion in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).  In its earlier Click-to-Call decision, the Court found that issues arising under 35 U.S.C. § 315(b) (i.e,, one year time bar) could not be appealed, pursuant to 314(d).  In today's non-precedential decision, the Court found that it could not... More
  • Are Partial AIA Trial Institutions a Good Thing? Dispute Over AIA Trial Institution Practices ...Be Careful What You Wish For  Since the advent of AIA trials, opponents of the system have attempted to unravel them.  First, BRI was challenged, then 7th amendment constitutionality, and a host of other administrative issues; all have failed to date. Yet, a few challenges to fundamental AIA trial practices persist. Earlier this week, the Federal Circuit denied en banc review in one such remaining challenge, in SAS Institute Inc., v. ComplemenSoft LLC.    As previously discussed, SAS challenged... More