Takeaways -
- Expired patents may be eligible for reexamination.
- Owner’s options during reexamination of an expired patent are severely limited.
Similar to reexamination practice, which has long allowed reexamination...more
3/12/2025
/ Administrative Proceedings ,
Central Reexamination Unit (CRU) ,
Claim Construction ,
Director of the USPTO ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
Patent Expiration ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Revocation ,
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
According to recent U.S. Patent and Trademark Office (Office) data, the Office receives a burdensome number (13%) of information disclosure statements (IDSs) having in excess of 50 total items of information. 89 Fed. Reg....more
12/3/2024
/ Ex Partes Reexamination ,
Information Disclosure Statement ,
Patent Applicants ,
Patent Examinations ,
Patent Fees ,
Patent Litigation ,
Patent Ownership ,
Patent Re-Issue ,
Patent Reissue Applications ,
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
11/27/2024
/ Central Reexamination Unit (CRU) ,
Ex Partes Reexamination ,
Information Disclosure Statement ,
Inter Partes Review (IPR) Proceeding ,
Manual of Patent Examining Procedure (MPEP) ,
Patent Applicants ,
Patent Examinations ,
Patent Fees ,
Patent Litigation ,
Patent Ownership ,
Patent Re-Issue ,
Patent Reissue Applications ,
Patents ,
Prior Art ,
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
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
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
Takeaways:
1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings.
2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more
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
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
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
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
5/20/2024
/ Central Reexamination Unit (CRU) ,
Claim Construction ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Ownership ,
Patent Reissue Applications ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
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
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
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
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
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 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
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