Archives for 3월 2015

USPTO Announces Proposed Rules for AIA Trials

In her blog , USPTO Director Michelle Lee described potential changes to the AIA trial rules to be introduced in proposed rules beginning this spring.

The first “quick fix” proposed rules are expected to be released this spring and include increasing page limits for a patent owner’s motion to amend from 15 to 25 pages (with a commensurate amount of additional pages for the opposition and reply briefing).  The proposals will also provide for a claims appendix and increase of the page limit for a petitioner’s reply brief to 25 pages. Although these quick fix proposed rules have not yet been issued, they will take effect immediately through PTAB scheduling orders.

Additional proposed rules to be issued in the summer may also address more substantive issues.  For example, the USPTO is considering a proposed rule to relax the burden for amending claims.  Currently, a patent owner must establish that a proposed replacement claim in a motion to amend is patentable over the prior art that is in the record, as well as prior art that is not in the record but is known to the patent owner.  This has been a difficult burden for patent owners to meet. Under a proposed rule change that the USPTO is considering, the patent owner will only be required to establish that the amended claims are patentable over prior art that is part of the record.

As part of the summer-issued proposed rules, the USPTO is contemplating making discovery regarding the petitioner’s requirement to identify real parties in interest easier.  The PTAB has denied petitions for failing to properly identify a real party in interest. So it can be an important basis upon which a patent owner can challenge a petition.  Currently, the PTAB does not necessarily permit discovery about the identity of the interested parties in the petition.  And such information is often something patent owners cannot figure out without discovery.

The USPTO is also considering launching a pilot program where only one judge of the three-judge panel will decide whether the petitioner has met the burden to institute a review, and then the remaining two judges will join the trial, if initiated, to conduct the full review.  This program is intended to address the perception that PTAB judges deciding the reviews may be biased towards unpatentability once they have already determined that the petitioner has met the burden to institute the trial.

The Effect of Alice Corp. v. CLS Bank Int’l: Recent Developments in the “Abstract Idea” Exception to Patent Eligibility Under 35 U.S.C. §101

What is an abstract idea?

  • The Court did not provide any clear guidance and expressly declined to “delimit the precise contours of the ‘abstract ideas’ category.”
  • The Court stated that the claims at issue in the Benson, Flook, and Bilski decisions recited abstract ideas.
  • The claims at issue in Alice were held to be abstract because they were similar to Bilski in that intermediated settlement is also “a fundamental economic practice long prevalent in our system of commerce.”
  • The Court rejected Alice’s proposal that the “abstract idea” exception should be limited to “pre-existing fundamental truths that exist in principle apart from any human action.”

If the claim is directed to an abstract idea, does it contain an inventive concept that is sufficient to transform the idea into a patent-eligible application of an idea?

  • Is there an “inventive concept” that amounts to “to significantly more than a patent upon the [ineligible concept] itself.”
  • The Court explained this step in view of its prior decisions.
  • The Mayo claims did not supply a transformative inventive concept because they only appended conventional steps to an abstract idea, which were specified at a high level of generality.

To read more, please click the link below.

The Effect of Alice Corp. v. CLS Bank Int’l: Recent Developments in the “Abstract Idea” Exception to Patent Eligibility Under 35 U.S.C. §101

International Registration of Industrial Designs (Hague Agreement)

The United States Patent and Trademark Office (USPTO) announced on February 13, 2015 that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement). By depositing the instrument of ratification, the United States fulfilled the last requirement for membership in the Hague Union. The treaty will take effect on May 13, 2015.

As discussed in our January 2, 2013 Special Report (entitled “United States Implements Treaties Facilitating Design and Utility Patent Filings”), once the Hague Agreement enters into force in the United States, U.S. applicants will be able to apply for design protection in each of the 64 member territories participating in the Hague Agreement through the filing of just one standardized English-language international design application in the USPTO. In addition, international design applicants in other participating territories will be able to designate the United States in an international design application.

The Final Rules governing USPTO processing and examination of international design applications filed pursuant to the Hague Agreement will soon be published in the Federal Register. Once the Final Rules have published, Oliff PLC will issue a Special Report discussing the new procedures and their impact on design patent procedures.


*The Final Rules published on April 2, 2015.  To view the new rules, please click here.  Oliff PLC has issued a Special Report, USPTO ISSUES FINAL RULES IMPLEMENTING THE HAGUE AGREEMENT,  discussing the new rules, as well as our recommendations for addressing them.