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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​ ​

The 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.​

​​USPTO Announces Sign-up for March 14-16 STEPP Training

The USPTO on January 3, 2016, invited members of the public to sign up for its three-day Stakeholder Training on Examination Practice and Procedure (STEPP) program, set for March 14-16. The training course on examination practice and procedures will be held at the San Jose, California USPTO regional office. This training is intended for those who have recently passed the Patent Bar and will make use of statutes, rules, and guidelines relevant to practicing before the USPTO. The course is led by USPTO trainers and is based on material developed for training patent examiners and other employees.