EPO Amended Guidelines to Take Effect 1 March 2022
In an effort to meet the requirement of annual updates, the EPO has announced that new Guidelines for Examination (“Guidelines”) will go into effect as of 1 March 2022. Key changes to the Guidelines have been implemented in Section F-IV, 4.3 – Inconsistencies and Clarity and Section G-II, 3.3.2 – Simulation, design or modelling. READ MORE
Applicants Should Consider the USPTO’s Fast-Track Appeals Pilot Program
The USPTO’s Fast-Track Appeals Pilot Program can reduce the time of an appeal from a final rejection by as much as 50-75% or more. Despite its modest fee, very few applicants have taken advantage of the program. Applicants should consider this procedural option, particularly when minimizing the USPTO prosecution time is important. READ MORE
Effect and Timing of AIA Petitioner Estoppel Clarified; Patent Owner Protections Strengthened
In a pair of February 2022 decisions by the U.S. Court of Appeals for the Federal Circuit, both the broad estoppel effect of 35 U.S.C. Section 315(e) and the timing of that estoppel effect have been clarified, ending a lengthy period of uncertainty and conflicting lower court applications of the estoppel provisions of the America Invents Act. These decisions strengthen the position of patent owners who prevail in inter partes review and post grant review proceedings in the USPTO’s Patent Trial and Appeal Board, substantially protecting winning patent owners from many potential serial validity challenges. READ MORE
Applicant admitted prior art (AAPA) is relied upon in a patent specification to draft a narrative and outline a problem being solved by a disclosed invention. A recent decision by the U.S. Court of Appeals for the Federal Circuit clarifies that AAPA plays only an informative role in Inter Partes Review (IPR) proceedings. While AAPA may inform rationales for combinations of prior art references, AAPA itself may not form the basis of the grounds for an IPR. READ MORE
CAFC Decision Allows Court Challenge of USPTO Director’s Barring Ex Parte Reexamination Due to
IPR Estoppel
On February 24, 2022, in Alarm.com Inc. v. Hirshfeld, the Court of Appeals for the Federal Circuit held that the USPTO Director’s vacatur of ex parte reexamination requests filed by a previously unsuccessful IPR petitioner, on the basis of IPR estoppel, may be challenged in a suit filed under the Administrative Procedure Act. Patent challengers should watch carefully for potential mischief as a result of this decision going forward. READ MORE
OBWB PARTNER JOINS ABA
CANNABIS LAW COMMITTEE
We congratulate Keelin Hargadon on her new position as Vice Chair of the American Bar Association Cannabis Law Committee. Keelin brings a wealth of knowledge and experience to bear in the field of trademarks, branding and enforcement, as well as copyright and litigation.
