Articles & Media

USPTO Addresses Expanded PTAB Panels With New Standard Operating Procedures

»»The USPTO’s Patent Trial and Appeal Board (“PTAB”) has issued two revisions to the Standard Operating Procedures with the stated goal of “increasing transparency, predictability, and reliability across the USPTO”. The first, SOP 1, aims to provide clarity and certainty to the PTAB practice of expanded panels, which has come under criticism in recent years […]

IP5 Unveils New Pilot Program for Collaborative Search and Examination

»»On July 1, 2018, the IP5 (Patent Offices for the US, the EU, Japan, Korea, and China) launched a new pilot program, PCT CS&E, testing collaborative search and examination for the PCT.  The Pilot Program is currently scheduled to take a total of three years. In years one and two the IP5 will be conducting […]

Stephen Kunin Joins Maier & Maier PLLC

»»July 2, 2018 (Alexandria, VA) Maier & Maier PLLC is proud to announce its newest addition to the firm, Stephen Kunin, the former Deputy Commissioner for Patent Examination Policy at the United States Patent and Trademark Office. As an expert in patent law for over 48 years, Mr. Kunin is a highly respected member of […]

Ex Parte Jadran Bandic Sheds New Light On 101 Guidance

»»The Patent Trial Appeal Board (PTAB) recently reversed an examiner’s 101 Alice rejection in Ex Parte Jadran Bandic, and in so doing, provided insight into how the PTO will administer Director Iancu’s 101 Guidance Memo. The PTAB found the examiner’s analysis in Step One of the Alice rejection only considered limited portions of the claim […]

Supreme Court Upholds IPR Proceedings; Rejects Partial Institutions

»»Two Supreme Court Decisions came down April 24, 2018 with potentially significant impacts on patent practice. First, in Oil States v. Greene’s Energy, the Court rejected Oil States’ Article III and 7th Amendment challenges to inter partes review (IPR) proceedings, declaring the proceedings constitutional under the public rights doctrine. Second, the Court ruled that Patent […]

Tribal Sovereign Immunity: Federal Circuit Stays Proceeding after PTAB Cast Doubt On Patent Defense Strategy

»»Last fall, Maier & Maier highlighted a new defense strategy for Patent Owners against IPR (Inter Partes Review) Petitions in an overview of the ongoing Allergan “Tribal Immunity” Proceeding. In sum, Allergan transferred their patent portfolio to the Saint Regis Mohawk Tribe (“Tribe”) in upstate New York, paying them a lump sum and royalties in […]

Tribal Sovereign Immunity: PTAB Decision Casts Doubt On Patent Defense Strategy

»»Last fall, Maier & Maier highlighted a new defense strategy for Patent Owners against IPR (Inter Partes Review) Petitions in an overview of the ongoing Allergan “Tribal Immunity” Proceeding. In sum, Allergan transferred their patent portfolio to the Saint Regis Mohawk Tribe (“Tribe”) in upstate New York, paying them a lump sum and royalties in […]

Federal Circuit Rules on Patent Term Adjustment (PTA) in PCT Cases

»»In Actelion Pharms., Inc. v. Matal, the USPTO granted a Patent Term Adjustment (PTA) of 40 days for Actelion’s patent relating to pyridine derivatives.  The patent at issue was a national stage application filed under the Patent Cooperation Treaty.  Actelion contended that it should have been entitled to either 41 days from the 30-month deadline […]

Federal Circuit Extends §101 to Cover Graphical User Interfaces in Core Wireless v. LG

»»In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 2016-2684, 2017-1922 (Fed. Cir. Jan. 23, 2018), a panel of the U.S. Court of Appeals for the Federal Circuit (Moore, O’Malley, Wallach) upheld patent claims directed to a graphical user interface under 35 U.S.C. §101, concluding that the claims were not directed to a patent-ineligible abstract […]

IPR Time-Bar Institution Decision Is Appealable

»»In Wi-Fi One, LLC v. Broadcom Corp., 15-1944 – 2018-01-08, the Federal Circuit reviewed whether an inter partes review (IPR) Institution Decision can be appealed based on a time-bar under 35 U.S.C. § 315(b).  Sitting en banc, the Federal Circuit ruled Institution Decisions made under 35 U.S.C. § 315(b) are appealable. 35 U.S.C. § 315(b) states […]