AIPLA Newsstand 2017 as appearing in Lexology
|USPTO Seeks Comments on Whether to Retain 'Accelerated Prosecution'
The United States Patent and Trademark Office (USPTO) is
requesting comments from its stakeholders on whether the accelerated
examination program should be retained, according to a January 12, 2017,
Federal Register notice. 82 Fed. Reg. 3758. In an August 16, 2016 notice
updating the program to reflect changes in the law and examination practice,
the USPTO indicated that the number of accelerated examination requests has
been quite low. In particular, in each of the fiscal years 2012-2015, fewer
than 250 applications were accepted into the accelerated examination program.
The USPTO is therefore seeking feedback from its stakeholders on whether the
accelerated examination program provides a sufficient benefit to the public to
justify the cost of implementation. The notice states that written comments
must be received on or before March 13, 2017, to be ensured of consideration,
and that no public hearing will be held.
|Federal Circuit Appeal of PTAB
Decision Requires Proof of Standing
An appellant seeking Federal Circuit review of a Patent Trial
and Appeal Board decision must prove standing by showing an injury in fact that
is fairly traceable to the challenged conduct that is likely to be redressed by
the Federal Circuit decision, according to the appellate court. Phigenix, Inc.
v. Immunogen, Inc., Fed. Cir., No. 2016-1544, 1/9/2017. This requirement applies
even though the Patent Act imposes no standing requirement for the PTAB to
institute an inter partes review proceeding. Since evidence of standing may not
be of record before the PTAB, such evidence must be presented to the appellate
court by affidavit, the court explained, but here the declaration evidence of
competitive injury from the PTAB decision was insufficient. There is no
evidence the patent here has ever been licensed to anyone, much less to
entities that have obtained licenses from the appellee, according to the court.
|En Banc Federal Circuit Will Review Appealability of Decision to Institute IPR
en banc Federal Circuit on January 4, 2017, agreed to reconsider its ruling
that a Patent Trial and Appeal Board decision to initiate an inter partes
review is not appealable where the decision involved time-bar issues under 35
U.S.C. 315(b). Wi-Fi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, en
banc order 1/4/2017. The question posed for briefing is the following: “Should
this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d
652 (Fed. Cir. 2015) and hold that judicial review is available for a patent
owner to challenge the PTO’s determination that the petitioner satisfied the
timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions
for inter partes review?” The Court will consider whether the timeliness
provision is “closely related” to the institution decision or beyond the bounds
of the Section 314(d) ban on appeals.