NEWS
PATENT OFFICE CATCHING UP ON PTAB APPEALS
Although the length of time that PTAB appeals are pending has only gone down slightly over the last three years, the number of new appeals has steadily declined. This seems to be the case for both inter-partes and ex-parte appeals.
It’s not clear why that has happened. One theory is that the relatively lower cost of IPRs and other appeals has made patent holders more likely to settle with a potential competitor – to avoid a relatively high chance of the patent rights being voided.
POTENTIAL PROBLEMS WITH FILING A SECOND PROVISIONAL APPLICATION
US Provisional Applications: Duration and Abandonment
Provisional applications in the US last only one year. If no utility or international application is filed during that one-year window, the provisional is abandoned. At that point it cannot be used to claim priority. Sometimes applicants are not ready to file a utility or international application during that year, so they re-file the provisional.
Risks of Re-Filing a Provisional
The problem arises if the re-filed provisional is submitted while the earlier provisional is still pending. Priority claims to the re-filed provisional may then fail in later national or regional phase applications.
Paris Convention Requirements for Priority Claims
Article 4(c)(4) of the Paris Convention states that a later-filed priority application can only claim priority over an earlier one if certain conditions are met. One condition is that no rights remain from the earlier application when the later one is filed.
European Patent Office: Re-Establishment Requests
In the European Patent Office (EPO), a request for re-establishment can be filed up to two months after the one-year window of the earlier provisional. If granted, rights from the earlier provisional remain, and priority to the later application would fail.
Best Practices for Provisional Filings
Best practice: if a re-filed provisional will serve as priority for a PCT application, the earlier pending provisional should be expressly abandoned first.
Kudos to Terri Shieh-Newton, PhD of Mintz-Levin for pointing out this problem.
2020 UPDATE ON PATENT OFFICE APPEALS
Patexia is a terrific resource for statistics regarding intellectual property. Earlier this week Patexia reported that there has been a 20% drop in IPR (Inter-Partes Review) petitions since 2019. Their 4th Annual IPR Intelligence Report, which can be purchased for $1495, breaks out IPRs handled by each law firm during the last five years, including a gauge of success rate.
Fish IP has represented both petitioners and patent owners in over 10 post-grant proceedings before the Patent Trials and Appeals Board (“PTAB”), including both Inter Partes Reviews (“IPR”) and Covered Business Method (“CBM” reviews). Fish IP has achieved over a 90% success rate before the PTAB, and 100% success rate on appeals to the Federal Circuit.
Fish IP’s work included winning one of the first ever CBM trials, and – at the time – one of only six (6) successful patent owner motions to amend (as cited by the U.S. Supreme Court). The technologies in Fish IP’s proceedings ranged from financial software to a variety of mechanical and electrical engineering inventions. Fish IP’s work also resulted in several precedential opinions from the PTAB.
USPTO FEES GOING UP OCTOBER 2ND
Fees are going up by an average of about 5%. Basic out-of-pocket costs for filing a utility application will go up to $910 for a small entity, and half that for a micro-entity. Of course, additional charges will still apply for excessive number of claims and excessive number of pages. The patent office is also continuing to disfavor multiple dependent claims, raising the base charge for such claims from $820 to $860. Continuing prosecution costs will also increase, for Continued Examinations (RCEs), extensions, and issue fees. Interestingly, the patent office will begin applying a surcharge for applications filed in formats other than DOCX, but that surcharge will not take effect until Jan 1, 2022. Current fees can be found on the USPTO website.
Standards Essential Patents
What are Standards Essential Patents?
Standards Essential Patents (SEPs) cover technological inventions necessary to satisfy a technical standard. Think, for example, of MP3 music compression technology.
Why Anyone Must Be Able to License SEPs
Essentially, everyone needs to license patents covering aspects of the standard.
Essentially, everyone needs to license patents covering aspects of the standard. So it is critical that everyone has a reasonable opportunity to license the patent at a reasonable, non-discriminatory fee. This is the FRAND license.
Global Licensing Rates
Naturally, some bad actors try to circumvent that arrangement, by seeking excessive rates from potential licensees. And that problem has historically been compounded by different rules in different jurisdictions.
In August 2020 the U.K. Supreme Court took a giant step towards international conformity. It held that English courts have the power to set global licensing rates for multinational patent portfolios under European telecom standards!
FRAND (Fair Reasonable And Non-Discriminatory licensing)
In May, the German Federal Court of Justice recently issued a landmark, 41-page decision that could well make Germany the “go-to” venue for patent owners in future FRAND licensing disputes. In Sisvel v. Haier, the Court held that patent owners could satisfy FRAND requirements even if they provide different rates to competing licensees, at least when dealing with larger, multinational patent portfolios. More information here.
Indian IP Office Extends Deadlines
The Controller General of Patents, Designs and TradeMarks (The Indian IP Office) has extended all trademark deadlines until further notice.