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Greenblum
& Bernstein, P.L.C. REEXAMINATION AND POST-GRANT PRACTICE GROUP NEWSLETTER keePingTABs No. 34 |
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November 2018
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In This Issue: · Taking
Stock of AI Petitions · Developments
in the Law · In
the News Contact Us: Jill M. Browning www.gbpatent.com JBrowning@gbpatent.com 703-716-1191 (phone) |
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. |
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