PTAB Rolls Out Final Rules Package for “Quick Fixes”

Author: Maureen D. Queler
Editor: Kimberly D. Braslow, Ph.D.

As promised, the USPTO has released a final rules package containing amendments to the rules governing PTAB trials. Among other things, this amendment increases the page limits for motions to amend to twenty-five pages, exclusive of any claims appendix. The rule package also clarifies that routine discovery includes the cross-examination of only affidavit testimony prepared for the PTAB trial proceeding. The rules package can be found at 80 Fed. Reg. 28561- 66 (May 19, 2015), and a detailed breakdown of the rules can be found as an IP Update on Finnegan’s website.

 

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Patent Owners Proposing Fewer Substitute Claims During IPR Proceedings

Authors: Daniel F. Klodowski, Jonathan R.K. Stroud
Editor: Aaron L. Parker

To date, patent owners have struggled to obtain substitute claims for patents reviewed by the Patent Trial and Appeal Board in IPR proceedings. Through May 1, 2015, only 22 (6.16%) of proposed substitute claims evaluated by the Board have been granted.

PTAB-STATS--IPR_Substitute_Claim_5.15

The number of patent owners pursuing substitute claims appears to be decreasing over time. In the period from January 1, 2014, through December 31, 2014, the PTAB considered 299 proposed substitute claims, and granted 22 such claims across three IPR proceedings: Int’l Flavors & Fragrances, Inc. v. United States, IPR2013-00124, Paper 12 (P.T.A.B. May 20, 2014), Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00402, Paper 35 (P.T.A.B. Dec. 30, 2014), and Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00403, Paper 33 (P.T.A.B. Dec. 30, 2014).

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Timeline of Declaration Filing/Using an ADS

Author: Adriana L. Burgy
Editor: Michele C. Bosch

Timeline of Declaration Filing Using an ADS - 2015

The chart above and the information below provide guidance for filing an inventor’s oath or declaration and submitting an Application Data Sheet (ADS). The information is meant to illustrate different scenarios and as such, one should consult the specific regulations based on any particular scenario.

Click here to read a full explanation of the chart above.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.

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