Patent Reform

'The State Bar of Michigan - The Mentor' (2019)

3 Pages Posted: 17 Jul 2019

Date Written: May 13, 2019


As of March 19, 2019 there is a new sheriff in town and his name is Chief Judge Scott Boalick. After a hearing or trial he has the power to invalidate your patent.

The U. S. Patent Trial & Appeal Board a component of the U. S. Patent & Trademark Office is based in Alexandria, VA. The Patent & Appeal Board is the newest "Rocket Docket" for intellectual property disputes. The duties of the board are:

1. On written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a);

2. Review appeals of reexaminations under section 134(b);

3. Conduct derivation proceedings under section 135; and

4. Conduct inter partes reviews & post-grant reviews under chapters 31 and 32.

The first satellite office of the USPTO is in Detroit, Michigan, named after Elijah J. McCoy, an African American inventor, who has 57 U.S. Patents. His automatic lubricator was patented in 1872. The Detroit Public Library is the Patent & Trademark Resource Center.

On May 22, 2017 in TC Heartland LLC v Kraft Foods Brands LLC, the U. S. Supreme Court reversed the federal circuit. It held that the word "resides" in the patent statute, 28 USC Section 1400(b) refers to the State of Incorporation of the alleged infringer. The ruling will bar many patent owners from filing cases in the Eastern District of Texas, a patent friendly jurisdiction. Also patent trolls should be impacted by this decision.

The Patent Trial & Appeal Board conducts inter partes review (IPR) & post-grant review (PGR) of U.S. Patents. The Patent & Appeals Board corrects errors - patents that should not have been issued in the first place. There is no money if you win at the patent board. You simply get confirmation that your patent is valid.

Keywords: Patents, U.S. Patent & Trademark Office, USPTO Trial & Appeal Board, Inter Partes Review (IPR), Post Grant Review (PGR)

Suggested Citation

Johnson, James A., Patent Reform (May 13, 2019). 'The State Bar of Michigan - The Mentor' (2019), Available at SSRN:

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