Unified Patents

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Webinar Materials - The Results Are In: The USPTO’s Request for Comments on Discretionary Denials

Speakers:

Ashraf Fawzy – Legal Head - SEP, Unified Patents

Joshua Landau — Patent Counsel - Computer & Communications Industry Association (CCIA)

Joe Matal — Partner, Haynes and Boone, LLP

We reviewed one of the most closely monitored rule changes in the AIA's history. The USPTO recently issued a request for comments regarding policy-based discretionary denials of PTAB proceedings. Such policy-based discretion included the PTAB's recent rise in considering: (a) parallel litigation (Fintiv Factors/NHK Spring); (b) parallel petitions; and (c) serial petitions when deciding whether to institute. We spoke about the proposed rule, the policy and practical considerations involved, and the competing interests which resulted in over 800 comments being submitted from stakeholders.

Thank you to our panelists for leading a great discussion!

To listen to the recorded webinar, click here: https://vimeo.com/492542852

The slide presentation from this webinar can be seen below, along with some accompanying materials — the collection of submitted comments that were mentioned; Apple's Arthrex Brief; and the request for comments.

https://www.unifiedpatents.com/insights/2020/5/13/ptab-procedural-denial-and-the-rise-of-314

Please join us at our next webinar, The Trial Before the Trial — Eliminating Presumptions and Other Recent USPTO Rule Changes on January 28th at 12p ET. For more information, visit our website.

Alliance for Automotive Innovation (AAI)

Association for Accessible Medicines (AAM)

American Bar Association (ABA)

Apple

Apple Arthrex Brief

Biotechnology Innovation Organization (BIO)

Computer & Communications Industry Association (CCIA)

Cisco, GM, and Verizon

Clearing House

Comcast

Edwards Lifesciences Corp

Engine Advocacy

Intellectual Property Owners Association (IPO)

Josh Malone

Motion Picture Association (MPA)

National Marine Manufactures Association (NMMA)

Pharmaceutical Research and Manufacturers of America (PhRMA)

PTAB Bar Association

Smith & Nephew, Inc.

TiVo

Taiwan Semiconductor Manufacturing Company (TSMC)

United for Patent Reform (UFPR)

Unified Patents

USPTO Request for Comments

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