One of the most significant changes to patent law in recent years is the post-grant review (PGR) program—an important weapon for companies facing infringement suits by patent owners. So, how does the process work—and is it working as intended?
A roundtable panel of patent experts recently convened to discuss PGR, and most support the changes. The review process is streamlined and much faster, they said, leading to as many petition filings in 2015 as there were inter partes reexamination requests over the previous 13 years.
One panelist, however, believes the playing field is not yet level, and suggests further changes. For example, since only a petitioner can submit a declaration by an expert in the appropriate field, it would be more equitable if the USPTO—which has made the same proposal—could accept similar testimonial evidence in support of a patent owner’s response, since an initial determination by the Patent Trial and Appeal Board (PTAB) is difficult to overcome.
Source: Global Media Business Group
The Leahy-Smith America Invents Act brought significant changes to the patenting process, both pre- and post-grant of patents. The Patent Bar Exam will be updated starting in mid-March as it continues to reflect those changes.
In January, Patent Attorney Emeritus David Meeks completed the updates to the PatBar® Patent Bar PREP review course. David is an expert on the Exam and has advised students for more than 20 years. He says it is important to keep track of the specific dates on which certain practices changed.
“Although we think the OED will be testing mostly the current practice, that may not always be the case—such as the changes to prior art under 35 U.S.C. 102 and 103.
“Concentrate on current practice, but you need be able to easily spot when it is the former practice that is being tested in a question on the exam, and react accordingly.”
A Baltimore, MD, law professor with extensive experience in patent law has written that he’d like to see any US lawyer qualify to sit for the Patent Bar Exam, essentially removing the existing restriction to only those in specific STEM fields. Is that likely to happen? A co-director of the Center for Intellectual Property and Entrepreneurship doesn’t think so.
Writing for Patently-O, University of Missouri School of Law Professor Dennis Crouch says the courts and Congress, together with the USPTO, intentionally shifted focus over the years toward detailed technological improvement, rather than a more abstract notion of an invention.
“My experience is that a technology-savvy patent attorney will be better able to cost-effectively understand the important technological details,” Crouch writes. “The technological-education requirement of the patent bar places one hurdle in that framework, but the market continues to operate in this area as well. For instance, many companies only hire patent attorneys with relevant experience in the appropriate technological area and don’t simply rely upon the ‘patent attorney’ status as a total qualifier.”
Bio Careers® for post-graduate Life Scientists says there is a “substantial need” among pharmaceutical and biotech companies for professionals who are registered to practice before the USPTO.
J. G. Hilton specialist Robert Hagan says some scientists prefer to prepare for and take the Patent Bar Exam before they attend law school. “For those who pass and become patent agents,” Hagan writes, “it provides a good opportunity to experience the practice of patent law before making the decision to attend law school.” If patent agents then choose to pursue the law degree, “it may provide a great opportunity to work part-time during law school, or even work full-time while attending law school on a part-time basis.”
Hagan says a good home-study course like PatBar® Patent Bar PREP is particularly beneficial for students with existing work and school schedules, allowing them to digest the material and prepare at their own pace to sit for the Exam.