Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more
11/7/2024
/ America Invents Act ,
Bayh-Dole Act ,
Central Reexamination Unit (CRU) ,
Ex Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
USPTO
This month we take a deeper dive into petitions practice for cases handled by the Central Reexamination Unit (CRU). As noted in our previous article, issues of first impression sometimes arise in cases before the CRU where...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
8/28/2024
/ Allergan Inc ,
Intellectual Property Protection ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Patent Expiration ,
Patent Litigation ,
Patent Ownership ,
Patent Re-Examination ,
Patent Reissue Applications ,
Patent Term Extensions ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Reissue Patents ,
USPTO
As mentioned in last month’s IP Practice Tips, reissue applications are subject to additional legal doctrines founded in requirements of 35 U.S.C. § 251. One doctrine that has been operative since the first reissue statute...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
6/21/2024
/ Central Reexamination Unit (CRU) ,
Confidential Information ,
Duty to Disclose ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Reissue Applications ,
Patents ,
Post-Grant Review ,
Reissue Patents ,
USPTO
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
Takeaways:
-A requester can have a voice in ex parte reexamination prosecution.
- Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument.
The...more
A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more
4/19/2024
/ America Invents Act ,
Disclosure Requirements ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Patent Examinations ,
Patent Litigation ,
Patent Ownership ,
Patents ,
Prior Art ,
Supplemental Examination ,
USPTO
In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow.
Jason D. Eisenberg is a director...more
The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more
2/19/2024
/ America Invents Act ,
Ex Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Term Adjustment ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patentability Search ,
Patents ,
USPTO
This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more
2/12/2024
/ America Invents Act ,
Corporate Counsel ,
Ex Partes Reexamination ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Standard Essential Patents ,
USPTO
Recently, in an effort to increase transparency and predictability, the new USPTO Director Vidal published “Interim process for PTAB decision circulation and internal PTAB review.” This initiative was included in a May 24th...more
On Friday May 27, 2022, the Federal Circuit added another opinion to the Arthrex line of cases. As a short refresher, Arthrex was back at the Federal Circuit after being remanded to the Board for Director Review after Patent...more
6/6/2022
/ Appeals ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Federal Vacancies Reform Act ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Separation of Powers ,
USPTO
As post grant review allows for on sale bar assertions, and thus experimental use defenses, we wanted to highlight a recent case addressing these issues.
Sunoco sued Venture and U.S. Oil Co. for infringement of U.S. Patent...more
6/3/2022
/ Claim Construction ,
Clear and Convincing Evidence ,
Damages ,
Evidence ,
Experimental Use Exception ,
Inventions ,
Inventors ,
On-Sale Bar ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Post-Grant Review ,
Section 102 ,
Vacated
In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more
6/2/2022
/ Appeals ,
Evidence ,
Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Motivation to Combine ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand ,
Substantial Evidence Standard ,
USPTO ,
Vacated
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
6/1/2022
/ Appeals ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Claim Construction ,
Clear and Convincing Evidence ,
Constitutional Challenges ,
Damages ,
Director of the USPTO ,
Evidence ,
Experimental Use Exception ,
Expert Testimony ,
Federal Vacancies Reform Act ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Motivation to Combine ,
Obviousness ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Post-Grant Review ,
Prior Art ,
Remand ,
Section 102 ,
Separation of Powers ,
Substantial Evidence Standard ,
USPTO ,
Vacated
The USPTO is extending their pro bono efforts to allow those establishing a need to retain voluntary pro bono ex parte examination appeal counsel and eventually pro bono counsel for all proceedings conducted at the Board....more
4/4/2022
/ Entrepreneurs ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inventors ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Pro Bono ,
Trademarks ,
USPTO
The Federal Circuit issued two cases this week providing more clarity to when a functional claim feature should be considered a de facto means-plus-function claim that requires structural detail to meet the indefiniteness...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
3/31/2022
/ Entrepreneurs ,
Ex Partes Reexamination ,
Indefiniteness ,
Intellectual Property Protection ,
Inventors ,
Means-Plus-Function ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Pro Bono ,
Remand ,
Reversal ,
Trademarks ,
USPTO
Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more
3/23/2022
/ America Invents Act ,
Estoppel ,
Ex Partes Reexamination ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 325(d) ,
USPTO
[co-author: Jamie Dohopolski]
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
3/7/2022
/ §315(e) ,
35 U.S.C. § 285 ,
America Invents Act ,
Attorney's Fees ,
Biologics ,
Biosimilars ,
Biotechnology ,
Chemical Compounds ,
Claim Construction ,
Collateral Estoppel ,
Constitutional Challenges ,
Corporate Counsel ,
Credibility ,
Declaration ,
Depositions ,
Enhanced Damages ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Exceptional Case ,
Expert Testimony ,
Expert Witness ,
Final Written Decisions ,
Hatch-Waxman ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventors ,
Life Sciences ,
Motion to Amend ,
Obviousness ,
Orange Book ,
Parallel Proceedings ,
Patent Applications ,
Patent Cancellation ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Printed Publications ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
Testimony ,
USPTO ,
USPTO Pilot Program ,
Vacated ,
Written Descriptions
The Leahy-Smith America Invents Act granted the Patent Office authority to issue “regulations . . . establishing and governing inter partes review.” 35 U.S.C § 316(a)(4). For the Patent Trial and Appeal Board (“Board”) to...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
12/1/2021
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Notice and Comment ,
Oral Argument ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Subject Matter Jurisdiction ,
USPTO ,
Writ of Mandamus
We previously published an article discussing patent owner’s due process challenges based on alleged pecuniary interests of the Office and Administrative Patent Judges instituting cases to meet production goals and increase...more
11/2/2021
/ Administrative Patent Judges ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Due Process ,
Evidence ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents
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
11/1/2021
/ Administrative Patent Judges ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Appointments Clause ,
Biden Administration ,
Constitutional Challenges ,
Due Process ,
Evidence ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Presidential Nominations ,
USPTO