Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePingTABs No. 34
In This Issue:
· Taking Stock of AI Petitions
· Developments in the Law
· In the News
Jill M. Browning
Taking Stock of AIA Petitions
The PTAB reports a total of 9170 AIA petitions filed through September 30, 2018. Of that number, 92% or 8,476 are inter partes review (“IPR”) petitions; 560 Covered Business Method (“CBM”) petitions and 134Post-Grant Review (“PGR”) petitions.
PGR petitions continue to grow in number, as the number of patents eligible to participate in these proceedings continues to grow. The number of CBM petitions appears to be tapering off.
Institution rates for all proceedings have declined to 60%. In FY14, the institution rate was 75%, in FY15 it was 68%, in FY16 it was 67% and FY17, it was 63%.
Post-institution settlements is about 24%. This rate has hovered between 22 and 24% for the past two years.
Recent Developments In The Law
Mean plus-function claim format for life science patent
Ex parte Gleave, Appeal 2012-4973 (PTAB Jan. 22, 2014). During the prosecution of the application that issued as U.S. Pat. No. 8, 722, 872, the applicant submitted a preliminary amendment that introduced “means for” claim limitation and specifically informed the Examiner that the applicant wished to invoke 35 USC §112, sixth paragraph. The independent claim reads as follow:
33. (new) A pharmaceutical composition comprising a
(a) means for reducing the amount of active hsp27 in cancerous cells by sequence specific interaction with Seq. ID No. 91 and
(b) a pharmaceutically acceptable carrier.
The examiner rejected the claims, finding that the claims lacked basis in the two provisional applications and further that the specification did not describe any means for reducing the amount of active hsp 27, other than by antisense oligonucleotide or RNAi inhibition and further does not describe any structure that corresponds to the claimed function.
In response, applicants pointed out that the examiner has noted two means for accomplishing the claimed task and, thus, that the examiner has failed to properly construe the claims as mean plus-function format as instructed in MPEP §2181.
This went on for quite some time until the PTAB heard the case on appeal. The PTAB reversed the examiner’s rejection based on In re Donaldson and other precedent, citing MPEP 2181 and concluding that the specification discloses structures having the function recited in the claims (e.g., the specific antisense oligonucleotides and the specific RNAi molecules).
Means-plus-function is generally disfavored and certainly not often used in the life sciences patent applications. However, it is worth noting that this type of claim language, while it limits the applicants to the structures actually disclosed in the specification -- can lead to more clear and accurate claim.
In the News
PTAB Adopted New Rules For Claim Construction
The U.S. PTO has adopted a rule changing the standard for interpreting claims before the PTAB. The standard will change from the broadest reasonable interpretation to the Phillips standard – the same standard used to construe claims by district courts and the International Trade Commission (ITC). The new rules will apply to petitions filed after November 18, 2018.
According to the new rules, the PTAB also will be obligated to consider any relevant claim constructions that have been issued in district courts or ITC proceedings, provided they are timely made of record.
PTAB: New Revised Standard Operating Procedures
In an effort to enhance the uniformity, predictability and transparency to the operation of the USPTO, the agency recently released new versions of Standard Operating Procedures (“SOP”) 1 and 2.
Revised SOP1 explains the new procedure for panel assignment and informing parties if there is panel change. It also explains the process for forming a panel with more than 3 judges. It notes that the expanded panel is a rare case and is formed under the approval of the Director. SOP1 ends the practice of expanding a panel without providing notice to the parties.
Revised SOP1 also addresses conflicts of interest that can arise for the APJ’s handling cases. It instructs the APJs to avoid conflicts of interest and requires each judge to provide a list of conflicts and to update the list upon becoming aware of additional conflicts. The goal is to prevent the paneling of an APJ on a case having a conflict.
Revised SOP2 creates a Precedential Opinion Panel (POP) made up of the Director, the Commissioner for Patents and the Chief Judge of the PTAB. The POP serves two functions. First, it may rehear matters on issues of exceptional importance. Second, it may help the director identify those prior PTAB decisions that should be designated as “precedential” or “informative”. In fact, SOP2 makes clear that no decision will bear any such designation without the approval of the Director.
New PTAB Procedures for Motions to Amend
The USPTO released, on October 26, 2018, a request for comments on Motion to Amend practice. The deadline for providing comments is December 14, 2018, after which the amended procedures will be implemented on a trial basis.
The revised procedures permit the patent owner to file a motion to amend after the proceeding is instituted. The petitioner would respond to the motion, after which the PTAB would issue a preliminary decision (that is not binding on the PTAB) addressing whether the motion is acceptable. If the preliminary decision is not favorable to the patent owner, the patent owner can file a reply or a revised motion to amend and the petitioner would be able to respond to that paper.
If the preliminary decision is favorable to the patent owner (such that the patent owner may amend the claims), then the petitioner may file a reply to which the patent owner may respond.
The PTAB may ask a patent examiner for assistance, who would submit a non-binding advisory report on the patentability of the amended /substitute claims.