All post-grant proceedings at the United States Patent and
Trademark Office (USPTO) start with the filing of a petition
and progress through two general phases—a pre-institution
phase and a post-institution phase. The USPTO's Patent Trial
and Appeal Board (PTAB) must decide if the petition raises
sufficient grounds to institute trial in view of any arguments
submitted by the patent owner in a preliminary response. While the
rate of institution varies by technology, in general, it ranges
between 55% and 75% on a per-claim basis. In 2016, institution
rates continued to decline compared to the lifetime average.
If the PTAB determines the petition warrants institution, it
issues a written institution decision and initiates trial. At the
conclusion of trial, the PTAB issues a final written decision. To
date inter partes review (IPR), covered business method (CBM), and
post-grant review (PGR) proceedings have strongly favored
petitioners at the expense of patent owners. While survival rates
increased over the course of 2016, this still paints a challenging
picture for patent owners. In this article, Finnegan attorneys
Joshua L. Goldberg,
Daniel F. Klodowski, and David C.
Seastrunk analyze post-grant proceeding statistics from
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
1 Mar 2017, Webinar, Washington, DC, United States
Finnegan partner Eric P. Raciti will participate in a webinar discussion addressing the follow-on decisions citing Schulhauser,providing insight into the varied types of method-claim limitations that have not been given patentable weight, including how to avoid emerging trigger words, such as "carrying out a step upon a threshold being exceeded," "upon," "whet
Panelists will also discuss how these decisions extend Schulhauser's holding to system, machine and apparatus claims without means-plus-function limitations, and will give other relevant practice tips. For additional information, or to register, please visit IPO's website.
Finnegan is a Gold sponsor of the Bay Area Corporate Counsel Awards, hosted by the Silicon Valley Business Journal and the San Francisco Business Times. Finnegan partner Rob McCauley will present the IP Law category.
Though politics ruled the headlines in 2016, the year still brought big changes in intellectual property law and its application, most notably in patent subject matter eligibility, inter partes review institution and appeal and design patent damages.
Chanel, a billion-dollar fashion company that produces and sells luxury consumer products, identifies its products by the "Chanel" trademark and the "CC Monogram" trademark, which consists of two interlocking...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).