News & Analysis as of

Patents Supplemental Examination

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

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

Troutman Pepper

Supplemental Examination: A Tool Worth Further Consideration - Patents: Post-Grant Podcast

Troutman Pepper on

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the second installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more

Morgan Lewis

Supplemental Examination

Morgan Lewis on

Supplemental examination may be requested by a patent owner in order to have the US Patent and Trademark Office (USPTO) consider, reconsider, or correct information that the patent owner believes is relevant to the patent. ...more

Troutman Pepper

Did You Know About Supplemental Examination?

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The America Invents Act (AIA) ushered in an era of Patent Office trials to adjudicate the validity of issued patents. The AIA, however, created an additional, lesser used, avenue to address patent validity. This procedure is...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - November 2019: Patent Law Amendments in Singapore - Closure of Reliance on the Foreign Examination...

A recent change in Singapore has done away with the ability of an applicant to rely on a positive foreign examination result or the international preliminary report on patentability (IPRP) to request supplementary...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2019: Graphical Snapshot of Supplemental Examination

Supplemental Examination was born out of fixing potential inequitable conduct issues before they are raised in a court proceeding. 35 U.S.C. § 257(a); 27 CFR § 1.601; M.P.E.P. § 2800. The stated goal is to improve patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2019

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

Polsinelli

Comparison of Post-Grant Proceedings

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Please see Charts below for more information....more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 14, Issue 3

Supplemental Examination: Potential Benefits vs. Guaranteed Risks - The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supplemental Examination: Potential Benefits vs. Guaranteed Risks

The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable inequitable conduct litigation and improve patent quality. As codified, 35...more

Foley & Lardner LLP

USPTO Offers Guidance on Supplemental Examination

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The USPTO has published “Tips for Filing a Compliant Supplemental Examination Request” on its AIA Implementation Web page. According to the notice, the USPTO has received six requests for Supplemental Examination, but...more

King & Spalding

Intellectual Property Newsletter - December 2012

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In This Issue: ..News From the Bench: - Clarification of the “Vitiation Test” when applying the Doctrine of Equivalents. - The “Success More Likely Than Not” and “Ordinary Observer” Standards for a...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

America Invents Act: Supplemental Examination

What is Supplemental Examination? A supplemental examination proceeding permits a patent owner to request additional examination of a patent by the United States Patent and Trademark Office (“Office”) so that the...more

Troutman Pepper

Be Prepared: America Invents Act Will Be Changing in the U.S. from ‘First-to-Invent’ to ‘First-to-File’ System

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September 16, 2012 marked the second wave of implementations of the America Invents Act. The first wave of implementations took place a year ago, September 16, 2011, and included changes to false marking, fees,...more

Foley & Lardner LLP

USPTO Issues Final Rules for America Invents Act Provisions That Take Effect September 16, 2012

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As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication...more

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