Tag Archives: registered patent attorney

Power to the Patent Office! No Judicial Review of IPR Time Bars

Patent applications are routinely a back and forth process between the patent applicant and the Patent Office. In some rare situations, a third party can submit evidence of prior use to the USPTO during the application process. However, the third party cannot actively participate in the application process.

After a patent is granted, third parties are increasingly using inter parties reviews (IPR) to challenge claims to an issued patent. An IPR is conducted at the Patent Trial and Appeal Board (PTAB) where it will review the patentability of one or more claims based on Section 102 (anticipation) or Section 103 (obviousness).

In a recent decision by The Supreme Court of the United States (SCOTUS) in Thryv v. Click-to-Call, the Court was tasked with deciding whether 35 U.S.C. 314(d) permits judicial review of the PTAB’s decision to institute an IPR upon finding that Section 315(b)’s time bar did not apply. Section 314(d) states that “[t]he determination by the Director [of the Patent Office] whether to institute an inter parties review under this section shall be final and nonappealable”. Section 215(b), the time bar, states that “[a]n inter parties review may not be instituted if the petition requesting the proceedings us filed more than one year after that date on which the petitioner … is served with a complaint alleging infringement of the patent”.

Despite the long procedural history, the case boils down to whether there should be judicial review of the PTAB’s decision or is the action is limited to the Director of the Patent Office. In a 7-2 majority opinion written by Justice Ginsburg, the Court held that there is no judicial review of the USPTO’s authority to decide whether a party properly petitioned under the AIA within a year of being sued for patent infringement, or was in privity with a supplier, business partner or other party who had been sued.

The unsettling part of this opinion is that the USPTO admitted that the IPR proceeding should not have been instituted due to the privity of the underlying parties and resulting time bar. However, SCOTUS’ decision says a time bar decision is not judicially reviewable under Sections 314(b) and 315(d). Justice Giunburg stated that the language supports the Patent Office’s goal of removing bad patents.

The result will cede more power to the Patent Office’s Precedential Opinion Panel (POP), where PTO management, including Director Andrei Iancu, exercises discretionary review over panel decisions.

The Intellectual Property team at Assouline and Berlowe includes two Registered Patent Attorneys, Peter Koziol and Greg Popowitz. For any questions about the case or how to handle your patent strategy, please contact our office below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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The Intersection of IP and Technology

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Registered Patent Attorney Greg Popowitz recently filmed a CLE focused on Understanding Intellectual Property (IP) and Attorneys’ use of Technology.  Greg discussed the important distinctions between patents, trademarks, copyrights, and trade secrets, along with the key considerations when attempting to secure protection for your IP.

The second part of the course is directed at what attorneys should look out for as they use technology. Greg discusses attorneys using efiling, the need to redact sensitive information, ediscovery, social media and websites, and cloud computing (confidentiality). The CLE goes over relevant portions of the Florida Rules of Civil Procedure and Florida Rules of Judicial Administration.

To learn more about the CLE and what CLE credits are available in your state, please visit the National Academy of Continuing Legal Education (NACLE) here.  NACLE is seeking technology credit in Florida as the new technology CLE requirement starts January 1 2017.

For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

LinkedIn  ||  Twitter

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

 

 

 

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