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
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