Tagged with Post-Grant

Generic Claim Terms and Broad Specification Led to No CBM Review

Author: Jonathan J. Fagan
Editor: Aaron J. Capron

In Twilio, Inc. v. Telesign Corp., CBM2016-00099, Paper 13 (Feb. 27, 2017), the Board refused to institute a covered business method (CBM) review because the Petitioner failed to show that the patent at issue qualified to be a covered business method patent.

In this case, the patent at issue claimed a process for validating a registrant on a website, giving the registrant access to a “service,” and then sending the registration a notification upon the occurrence of a predetermined “notification event.” The specification disclosed both financial (e.g., a notification for a bank account withdrawal) and nonfinancial (e.g., news alerts sent to a phone) embodiments. Continue reading

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IPR, EPO Opposition and UK Litigation

Author:  Leythem A. Wall
Editor:  Anthony C. Tridico, Ph.D.

We report here on what appears to be one of the first IPR cases to have corresponding validity challenges in other jurisdictions, namely Europe at the European Patent Office (EPO) and in the UK courts. The decisions, despite being the same patent family differ remarkably.

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Comparison of Timelines with Europe

Author:  Leythem A. Wall
Editor:  Anthony C. Tridico, Ph.D.

While we have previously compared and contrasted European Patent Office (EPO) oppositions with the new US post grant challenges (http://www.aiablog.com/global-harmonization/ipr-and-pgr-they-are-not-american-oppositions/), what has not been looked at as closely is the respective timings of different stages in the proceedings. The Post Grant Review (PGR) strikes the most similarities with the EPO opposition timeline as these have to be filed within 9 months of the patent granting. The Inter Party Review (IPR) and PGR take up to 18 months for the final written decision to be issued. While traditionally the EPO has 18 to 30 month turnaround time, more and more we are seeing cases resolved with the oral decision being issued within a 15 to 24 month timeline, hence not too dissimilar to the US procedures.

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