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
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
2/26/2025
/ Central Reexamination Unit (CRU) ,
Intellectual Property Protection ,
Inter Partes Reexamination ,
Patent Applications ,
Patent Expiration ,
Patent Invalidity ,
Patent Litigation ,
Patent Reissue Applications ,
Patents ,
Prior Art ,
Reissue Patents ,
Supplemental Examination ,
USPTO
Takeaways -
- Requestor submissions in reexamination proceedings are exempt from triggering IDS size fees.
- Correcting filing benefit claims in reissue triggers the new continuing application fee.
As we noted in our...more
2/12/2025
/ Application Fees ,
Fees ,
Intellectual Property Protection ,
Inter Partes Reexamination ,
Patent Applications ,
Patent Litigation ,
Patent Reissue Applications ,
Patents ,
Regulatory Requirements ,
Reissue Patents ,
USPTO
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
2/3/2025
/ Ambiguous ,
Central Reexamination Unit (CRU) ,
Fees ,
Indefiniteness ,
Intellectual Property Protection ,
Patent Applications ,
Patent Litigation ,
Patent Reissue Applications ,
Patent Trial and Appeal Board ,
Patents ,
Regulatory Agenda ,
Reissue Patents ,
USPTO
Patent Examiners rely upon the Manual of Patent Examination Procedure (MPEP) to instruct application of the law to the most common patent prosecution situations. The MPEP’s forward refers to itself as a “guidance document”...more
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. 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
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
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
Takeaways:
- Patent owner requested reexaminations are not an admission of claim unpatentability.
- Patent owners can and should control the reexamination request narrative.
Patent owners must consider the pros and...more
From time to time, a patent owner may become aware of an error in her patent. Some errors may be minor, and the patent owner may seek correction of minor errors via a USPTO Certificate of Correction (CoC). With a CoC, the...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