On May 26, 2020, the U.S. Patent and Trademark Office (USPTO) issued proposed amendments to the America Invents Act (AIA) trial rules for institution and responsive briefing. The proposed changes stem from the Supreme Court of the United States’ ruling in SAS Institute v. Iancu, which held that when the Patent Trial and Appeal Board (PTAB) institutes an inter partes review (IPR), it “must decide the patentability of all the claims the petitioner has challenged.” The new amendments would require that all trials for instituted PTAB proceedings address all challenged claims and on all grounds of unpatentability. Intellectual Property Magazine contacted Finnegan attorney Arpita Bhattacharyya for her insight.
Arpita said, “Public comments are unlikely to change the office’s proposed rule changes regarding all-or-nothing institution and the scope of patent owner responses, replies, and sur-replies because these changes simply codify the office’s current practices. However, the office may consider some revisions to its rule change regarding eliminating the presumption favoring petitioner at institution. If the public comments bear it out, the board may, for example, allow limited pre-institution discovery on discrete issues, such as a reference’s status as printed publication."
Bhattacharyya added, "However, the most likely revision to the office’s proposal will not be to the substance of the rules, but how the changes are implemented—for example, whether these changes would be applied to all pending proceedings, to those in which a patent owner’s preliminary response is filed on or after the effective date of these rule changes, or whether the changes would apply only to petitions filed after the effective date."
Read the full article here.
Press Release
Finnegan Secures Another Patent Victory for BMW Group in the District of Delaware
February 27, 2024
Press Release
February 13, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.