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Saturday, October 8, 2016


    The United States Patent and Trademark Office (“the Office”) has a new procedure for applicants who receive a final rejection. The procedure is called Post-Prosecution Pilot ("the program").

   Applicants who receive final rejections to nonprovisional utility applications filed may file the Request to participate in the program. Design, plant, reissue, and reexamination proceedings are prohibited from participating in the program.

   To begin, the applicant completes (1) a Request Form ("Certification and Request for Consideration under the Post-Prosecution Pilot Program") filed electronically within two months of the mailing date of the final rejection; and (2) a statement that the applicant is willing to participate in a conference; (3) a response with a maximum of five pages of arguments, exclusive of any amendments; and (5) optionally, a proposed non-broadening amendment to one or more claim(s).

The requirements to participate are:

   1. fortunately, there is no fee to participate in the program;

   2. only one request per application is allowed; and

   3. the examiner may request an additional response(s). 

   An applicant is not allowed to file any of the following:

     1. a notice of appeal;

     2. request for Continued Examination (RCE);

     3. an express abandonment;

     4. a request for the declaration of interference or;

     5. a petition requesting the institution of a derivation proceeding.

   The Office will contact the applicant to schedule the conference. There will usually be a conference within ten calendar days. The applicant will make an oral presentation to the panel of examiners no longer than 20 minutes and the conference will have the following rules:

      a) claim amendments, affidavits or other evidence included as part of the presentation materials;

      b) applicant can only present appealable, not petitionable, matters;

      c) applicant may present arguments directed to the patentability of the amended claim(s) as proposed.

   Then the panel will discuss the proposed findings and prepare a written decision.

   The applicant will be informed of the panel’s decision. The decision will be one of the following:

   1. Continue prosecution; a notice of decision indicating reopen prosecution will state that the rejection(s) is/are withdrawn and a new Office action will be mailed.

   2. Confirm the final rejection:

     a) If proposed amendment(s) were included with the Request, then the status of such amendment(s);

     b) the time period for taking further action in response to the final rejection expires on (1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later. To avoid abandonment, the applicant must file a notice of appeal or RCE within the statutory period for response to the final rejection. Extensions of time may be obtained.

     c) the Office will not grant a petition seeking reconsideration of a panel decision upholding a final rejection.

   3. Notice of Allowance.

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Saturday, July 9, 2016

Challenging Issued Patents by Post Grant Review Proceedings

Challenging Issued Patents by Post Grant Review Proceedings

Granted Patents may be challenged within the USPTO any time before nine (9) months after issuance, without filing a lawsuit in Federal District Court.  The United States Patent and Trademark Office (USPTO) regulations allow for a procedure to challenge patents. This is called a Post Grant Review Proceeding (PRG) for patent applications filed on or after 19 March 2013 or Inter Partes Review proceeding for those applications filed before 19 March 2013.
In either case, the third party challenger may attempt to invalidate one or more claims as unpatentable on any ground relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).
The government filing fee varies, and ranges from $9000.00 to $18,000.00.
Attorney fees can range from $50,000.00 to $280.000.00, which is less than the average attorney’s fees for lawsuits filed in Federal District Court.
A party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.
Of course, if you are beyond the nine (9) month post issuance time period, the patent can be challenged by filing a Declaratory Judgement Action in Federal District Court.
Call Robert J. Sayfie at 1-888-468-0444
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