Patent Office to Hold Remote Meetings ‘Until Further Notice’ (1)

March 13, 2020, 2:07 PM; Updated: March 13, 2020, 10:11 PM

The U.S. Patent and Trademark Office said that all in-person meetings will be conducted remotely “until further notice.”

Affected events include trials on the validity of patents or discussions between applicants and examiners. Meetings and hearings will be done either through telephone calls or video conferences, the agency said Friday.

The patent office’s announcement comes as government agencies and courts overseeing patent disputes brace for disruption due to the potential spread of Covid-19. The patent office’s statement didn’t mention the new coronavirus, but governments around the world are curbing activities to try to limit the spread of the virus.

The International Trade Commission postponed all Section 337 cases, which mostly involve patents, that were scheduled to take place within the next 60 days. The U.S. Court of Appeals for the Federal Circuit, which handles all patent appeals, is holding some of its April arguments via telephone.

Among the cases scheduled for trial before the agency’s Patent Trial and Appeal Board are ones in which Microsoft Corp. and Apple Inc. are appealing rejections of patent applications, and an inter partes dispute between Agilent Technologies Inc. and Bio-Rad Laboratories Inc. over a patent for clinical testing equipment.

Electronic Processing

The PTO, headquartered in Alexandria, Va., also has offices in Detroit, Dallas, Denver and San Jose.

The change wouldn’t affect core operations, like filing applications or paying maintenance fees. The agency has moved to mandatory electronic filing for all trademark applications, and most patent filings are electronic as well.

The patent office’s decision will likely have limited impact, particularly on validity trials before the agency’s PTAB, attorneys say.

“I think the PTAB is uniquely situated to handle this, because already so many of the hearings involve at least one judge participating remotely. I can’t remember the last argument we had where all three judges were in the room,” Erika Arner, partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, said.

“For practitioners, we’re accustomed to arguing for people who aren’t physically in the room,” she said.

Judges are already set for video conferencing, said Alex Yap, a partner in Morrison & Foerster LLP’s intellectual property group and a former administrative patent law judge at the agency.

“All PTAB judges have video conference capable laptops and many PTAB judges are already able to conduct video or telephonic conferences remotely,” Yap said.

Nathan Kelley, Perkins Coie LLP partner and former chief PTAB judge, noted that the board “already conducts its motion practice via conference calls.”

But the final in-person oral hearing that happens at the end of an inter partes review “is going to be an absolute mess,” said Michelle Armond, co-founder of the intellectual property litigation firm Armond Wilson LLP.

Attorneys using demonstrative exhibits in a PTAB proceeding could have trouble getting a point across, Armond said.

In telephonic disputes, people “talking over each other” could make having an orderly proceeding difficult, she said.

Attorneys may have to change their strategy for telephonic proceedings, Armond said. “For most attorneys, this is going to be a big challenge,” she said.

((Updated with additional reporting throughout.))

To contact the reporter on this story: Susan Decker in Washington at sdecker1@bloomberg.net and Ian Lopez in Washington at ilopez@bloomberglaw.com.
To contact the editor on this story: Roger Yu in Washington at ryu@bloomberglaw.com

To read more articles log in. To learn more about a subscription click here.