On March 16, 2013, the first-to-file provisions of the America Invents Act take effect. This is one of the biggest changes ever made to U.S. patent law, and completely rewrites what is prior art. Since the AIA was passed, many legal experts have recommended that applicants avoid filing applications under the new law where possible — or file under both the old and new law to keep options open — for fear of being subject to prior art that would not be available under the old law. While avoiding the unknown first-to-file realm has tactical merit, every applicant should carefully consider the pros and cons of filing under each of the regimes before expending time and money to accelerate patent filings to make the March 15 cutoff.
Fish’s Christine Goddard, PhD, wrote this expert analysis article which published in Law360 and addresses the disadvantages and advantages, and the risks and benefits of the new first-to-file provision of the America Invents Act. For more on why first-to-file isn’t new to drug companies, please read this article, “1st-To-File System Isn’t New To Drug Companies.”
Fish’s John Phillips met with Managing Intellectual Property and provided his insight on the first covered business method (CBM) case handled by the USPTO – SAP v. Versata – and the inspiration behind the USPTO introducing CBM review.
To read more about the first CBM review and how a rehearing of CLS v. Alice might clarify uncertainty surrounding business method patents, read Federal circuit and USPTO seek to clarify business method patents.
The Federal Circuit recently surprised many patent reexamination practitioners by holding in Belkin v. Kappos that the Board of Patent Appeals and Interferences (“the Board”) lacked jurisdiction to consider claim rejections proposed by a reexamination Requester that were not adopted by the USPTO because they were deemed not to raise a substantial new question (“SNQ”) of patentability.
Preliminary Responses in Inter Partes Review and Post-Grant Review The January 9, 2013, decision issued by the Patent Trials and Appeals Board (“PTAB”) in SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001, provides insight into the reasons that the PTAB will consider in a patent owner’s preliminary response for purposes of determining whether to institute inter partes review (“IPR”), post-grant review (“PGR”), or covered business method (“CBM”) proceedings.
Written by: John C. Phillips
January 18, 2013
SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001 (PTAB Jan. 9, 2013).
In the very first case brought under the U.S Patent and Trademark Office’s Covered Business Method (“CBM”) review procedure, the Patent Trial and Appeal Board (“PTAB”) provided invaluable guidance in its decision holding that a petition seeking CBM review of a patent warranted institution of a CBM review proceeding. Among other things, the PTAB signaled that it would interpret the requirements for instituting CBM review liberally, thereby enhancing the procedure’s potential value to defendants charged with infringing business method patents.