Estoppel certification in reexamination prevents relitigation of resolved issues....more
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
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
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
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:
- 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
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