Category: AIA FYI

Derivation in 2015: Still No Instituted Proceedings

Author: Anthony A. Hartmann
Editor: Aaron L. Parker

The Leahy-Smith America Invents Act (AIA) replaced interference proceedings with derivation proceedings for patent applications having a claim with an effective filing date on or after March 16, 2013. While several petitions have been filed under 37 C.F.R. § 42.400 et seq., including two in 2015, to date not a single petition has led to an instituted derivation proceeding.

In November, the PTAB dismissed the petition in Estate of L. Gerber et al. v. Cornell Univ. et al., DER2015-00011 (November 9, 2015) (Paper 5) because Petitioners failed to “cite to a pending application which they have placed on file at the United States Patent and Trademark Office.” Paper 5 at 2.  Petitioners had sought a “determination from the Director that they are the joint-inventors and/or joint-owners of the pending Patent assignment for [application 14/352,350].” Estate of Gerber et al. v. Cornell Univ. et al., DER2015-00011 (October 5, 2015) (Paper 1) at 1. In denying the petition, the PTAB explained that the Office’s records did not show Gerber et al. having an ownership interest; that, even if they had, a derivation proceeding “contemplates the existence of a contest between two applications;” and a claim of joint ownership or joint inventorship does not address the requirement for a claim of derivation. Paper 5 at 4.

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Podcast: The Success and Future of the PTAB in the Automotive Industry

The creation of the Patent Trial and Appeal Board (PTAB) has significantly changed how U.S. patents are challenged and litigated. Companies are utilizing PTAB proceedings as a more cost-effective alternative to district court litigation. In particular, the automotive industry has seen a rise in patents being challenged at the PTAB. In this podcast, we discuss the types of automotive cases that are currently dominating the PTAB, as well as expected future trends. Listen to the full podcast here.

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PTAB Proposes Amendments to its Rules of Practice

Author: James D. Stein
Editor: Aaron J. Capron

On Wednesday, the U.S. Patent and Trademark Office (USPTO) released a much-anticipated proposed rule package in response to public feedback, making what it calls “more involved” changes to the rules governing Patent Trial and Appeal Board trial proceedings. 80 Fed. Reg. 50720 (Aug. 20, 2015). Some of the proposed changes may benefit patent owners, like allowing submission of new testimonial evidence before institution and replacing petition page limits with word count limits. The new rules would also expressly define a duty of candor and good faith for all parties and practitioners appearing before the Board. The proposed changes also codify some of the Board’s current practices, such as applying the broadest reasonable interpretation to patent claims that will not expire before a final written decision and requiring the parties to serve demonstratives with more time to work out disputes before oral hearing.

The USPTO is soliciting comments on the proposed rule package until October 19, 2015. A detailed breakdown of the rules can be found as an IP Update on Finnegan’s website.

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