Under the America Invents Act, any person who is not the owner of a patent may seek inter partes review or post-grant review in the USPTO, avoiding the jurisdictional case-or-controversy requirement that has limited district court declaratory judgment actions seeking to invalidate patents. The post-grant opposition provisions will transform U.S. patent litigation, by providing an [...]
Read more →My personal comments submitted to the USPTO on the proposed Inter Partes Rules, directed to derivation, interferences, “routine” discovery, the patent owner’s amendment, settlement, page limits of pleadings, protective orders, service of petitions, and pro hac vice representation by counsel who are not registered to practice in the USPTO are as follows: Comments on Proposed [...]
Read more →A generic drug maker who is not the first ANDA applicant to file a ¶ IV certification of invalidity or noninfringement is not entitled to 180-day marketing exclusivity, and may be kept out of the market indefinitely by a first ¶ IV filer who defers commercial launch under a “pay-for-delay” agreement with the patent owner. [...]
Read more →Derivation proceedings under the America Invents Act will provide a powerful administrative remedy for theft of inventions by competitors who are the first to file patent applications for inventions derived from earlier inventors. The proposed rules carve out and preserve from interferences an important protection for the rights of first inventors, whose inventions are misappropriated [...]
Read more →The Trial Rules proposed by the USPTO to implement post-grant oppositions under the America Invents Act would create a new duty of disclosure for parties, that is not limited to the materiality standard for inequitable conduct under Therasense. A violation of the proposed rules could result in sanctions including adverse judgment for the failure to [...]
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