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In a Rare Move, ITC Applies Public Interest Factors to Exempt Research-Related Microfluidic Devices from Exclusion Order

The U.S. International Trade Commission (“ITC”) has become a popular venue for patent infringement actions, as it provides for fast and powerful exclusionary remedies against infringers in the form of exclusion and cease-and-desist orders, through which the ITC can bar importation of infringing products into the United States. Importantly, the ITC does not apply the equitable “eBay factors” before issuing such relief—instead, it must consider the so-called “public interest factors”: the effect of the orders upon (1) the public health and welfare, (2) competitive conditions in the United States economy, (3) the production of like or directly competitive articles in the United States, and (4) United States consumers.

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First in Three-Part Roll-Out of AIA Rule Changes Announced, Including Page Limits for Petitioner Replies and Patent Owner Motions to Amend


Time to Read: 1 minutes Practices: Intellectual Property, Intellectual Property Litigation, Intellectual Property Transactions, Patent Trial & Appeal Board (PTAB) Proceedings, Patent Strategy

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March 27, 2015 – In a blog post today, U.S. Patent and Trademark Office (“PTO”) Director Michelle K. Lee announced plans for a three-part roll-out of changes to the rules governing America Invents Act (“AIA”) post-grant proceedings, with the first including “‘quick fixes’ – changes of simple scope that will immediately improve the trial proceedings.” According to Director Lee’s announcement, these include increasing the page limits for Petitioner Replies and Patent Owner Motions to Amend filed in connection with AIA proceedings, including covered business method reviews and inter partes reviews. 

The Director stated that the PTO will be increasing the page limits for Petitioner Replies and Motions to Amend from 15 to 25 pages. Although this modification to AIA proceedings will officially issue in a package of “quick fix” rule changes that will be promulgated later this spring, the announcement stated that Administrative Patent Judges of the Patent Trial and Appeal Board will begin implementing them “effective immediately” through scheduling orders. 

The PTO Director’s announcement also confirmed that it expects to issue a second rule-making package this summer. In connection with the second package, the announcement states that the PTO is considering changes to the requirements for motions to amend, modifications to the type of evidence that can be relied on to support the Patent Owner Preliminary Response, and clarification of the claim construction standard applicable to expired patents challenged in AIA proceedings, along with several other changes. 

Director Lee announced that the PTO also expects to revise its Trial Practice Guide, including to “emphasize the availability of live testimony” at oral hearings upon the grant of a motion for such testimony, and the “importance of . . . discovery” about the real-party-in-interest.

Director Lee’s blog post is available here. To discuss further the potential impact of the new rules, please contact your usual Ropes & Gray attorney.


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