Reissue vs. Reexamination in IPR and PGR Practice - Patents: Post-Grant Podcast
Never Surrender? Recapturing Subject Matter in Reissue Proceedings
Takeaways: 1. Patent owner statements present both risks and limited opportunities. 2. Waiving the patent owner statement shortens overall reexamination proceeding pendency. Every third party requester ex parte...more
Takeaways: - Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue. - To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory...more
Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more
The requirement for disclosure, candor, and good faith between an applicant/patent owner and the U.S. Patent and Trademark Office (USPTO) serves an important public interest. Succinctly, each individual associated with the...more
One of the advantages of filing a reissue application within two years of the original patent’s grant is the ability to seek broader claims. More often than not, however, a broadening Reissue will be rejected by the CRU...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Takeaways: -Not all patent errors are correctible via Reissue. - Restriction practice applies to Reissue applications. 1. Non-Elected Invention Recapture: A reissue application cannot add claims directed to a...more
Hosted by American Conference Institute, the 20th Annual Paragraph IV Disputes & the 40th Anniversary of the Hatch-Waxman Act returns for another exciting year with curated programming that will take a retrospective look at...more
A perennial challenge in patenting is to both cover your product and block design-arounds. It is understandably frustrating to incur the expense and disclosure requirements of the patent process only to find that a...more
The Federal Circuit appeal in Merck Sharp & Dohme B.V., Merck Sharp & Dohme, LLC v. Aurobindo Pharma USA, Inc. et al., concerns whether patent term extension (PTE) for regulatory delay, in particular delay for FDA drug...more
Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the fourth installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more
A reissue application may be filed by a patent owner to correct an error in a patent. Reissue applications are useful to correct substantive errors that cannot be corrected with a certificate of correction. ...more
The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
The USPTO issued guidance regarding procedures to stay when reissue or reexaminations are pending during a parallel AIA proceeding. The basic factors that will be considered are...more