Sunday, July 26, 2015

Conducting Inter Partes Reviews (IPRs)

IPRs have a high success rate when used to invalidate patents.  Any party other than the patent owner can request an IPR.  Also, a party who challenged the validity of a patent in a civil suit cannot bring an IPR. 

The requester must challenge the patent using prior art.

The party bringing the IPR cannot request a subsequent proceeding before the office that could have reasonably been brought in the IPR.  In other words, there is an estoppel effect.

Typical legals fees for bringing an IPR have been reported to be around 100k.  Much lower than the cost of determining validity in a civil suit.  An IPR petition must be filed prior to filing a civil action challenging validity of a patent.  Also, an IPR must be filed within one year of being served with a complaint.

Rules relating to IPRs can be found here:
http://www.uspto.gov/sites/default/files/aia_implementation/fr_general_trial.pdf

An IPR is a trial.  Trial practice rules for trials before the Board can be found here:
http://www.uspto.gov/sites/default/files/aia_implementation/trial_practice_guide_48756.pdf

The Patent Review Processing System, the electronic filing system for IPRs can be found here:
http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/patent-review-processing-system-prps-0

Examples of documents filed in other IPRs can be found in the Patent Review Processing System.

Thursday, May 7, 2015

International Registration of Industrial Designs

The Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs (Hague Agreement) goes into effect on May 13, 2015 for the United States.

Beginning May 13, 2015, U.S. applicants will be able to file a design application either with the World Intellectual Property Organization (WIPO) or through the United States Patent and Trademark Office and be able to secure an international filing date.  The filing date will have effect in a large number of countries party to the Hague Agreement.

Similarly, foreign applicants filing international design applications on or after May 13, 2015 will be able to designate the United States for design protection. 

U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term from issuance.