Takeaways -
- Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination.
- “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to...more
3/10/2025
/ America Invents Act ,
Central Reexamination Unit (CRU) ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Litigation ,
Patent Reissue Applications ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reissue Patents ,
USPTO
The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more
2/4/2025
/ §315(e) ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Corporate Counsel ,
Director of the USPTO ,
Final Rules ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Rulemaking Process ,
Section 102 ,
Statistical Analysis ,
Statutory Interpretation ,
Technology ,
USPTO
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
One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more
7/22/2024
/ America Invents Act ,
Ex Partes Reexamination ,
Filing Requirements ,
New Regulations ,
Patent Ownership ,
Patent Re-Examination ,
Patent Re-Issue ,
Patents ,
Post-Grant Review ,
Public Comment ,
Regulatory Requirements ,
Section 304
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
Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more
4/17/2024
/ America Invents Act ,
Design Patent ,
Director of the USPTO ,
Inter Partes Review (IPR) Proceeding ,
Patent Ownership ,
Patent Re-Examination ,
Patent Re-Issue ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO ,
Utility Patents
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
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
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
9/1/2021
/ America Invents Act ,
Claim Construction ,
Design Patent ,
Evidence ,
Extrinsic Evidence ,
Inter Partes Review (IPR) Proceeding ,
Intrinsic Evidence ,
Inventions ,
Nexus ,
Nonobvious ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand ,
Reversal ,
Substantial Evidence ,
USPTO ,
Utility Patents ,
Vacated ,
Written Descriptions
From the beginning of AIA proceedings, Petitioners that have lost at institution decision phase have tried using Mandamus to circumvent the statutory lack of appeal from institution decisions. Mylan Laboratories Ltd. v....more
4/1/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Denial of Institution ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
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
3/31/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Demand Letter ,
Denial of Institution ,
Due Process ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO ,
Willful Infringement
As a follow up to our May 2020 article, and taking no side in this article, I write to remind the bar that on November 19, 2020 the Comment period ends for the latest Federal Register Notice on maybe the hottest topic at the...more
On June 15, 2020, the Supreme Court issued an Order in Emerson Elec Emerson Electric Co., Petitioner v. SIPCO, LLC, Case 19-966, stating “Petition GRANTED. Judgment VACATED and case REMANDED for further consideration in light...more
6/26/2020
/ America Invents Act ,
Covered Business Method Patents ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Petition for Writ of Certiorari ,
Remand ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
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
6/25/2020
/ § 315(b) ,
America Invents Act ,
Covered Business Method Patents ,
Delays ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Judicial Review ,
Jury Trial ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Petition for Writ of Certiorari ,
Remand ,
Reversal ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
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
3/3/2020
/ Administrative Patent Judges ,
America Invents Act ,
Estoppel ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
The only real answers we are hearing from the patent community is that no one knows what to do or what might happen next --- post Arthrex.
As a quick reminder – the Federal Circuit ruled (1) the current PTAB judges were...more
2/5/2020
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Administrative Proceedings ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Denial of Certiorari ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Remand ,
Severability Doctrine ,
Split of Authority ,
USPTO
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
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