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
4/3/2025
/ Food and Drug Administration (FDA) ,
Hatch-Waxman ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Re-Examination ,
Patent Term Extensions ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Reissue Patents ,
USPTO
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
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
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
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
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
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
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
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
The USPTO is extending their pro bono efforts to allow those establishing a need to retain voluntary pro bono ex parte examination appeal counsel and eventually pro bono counsel for all proceedings conducted at the Board....more
4/4/2022
/ Entrepreneurs ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inventors ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Pro Bono ,
Trademarks ,
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
3/31/2022
/ Entrepreneurs ,
Ex Partes Reexamination ,
Indefiniteness ,
Intellectual Property Protection ,
Inventors ,
Means-Plus-Function ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Pro Bono ,
Remand ,
Reversal ,
Trademarks ,
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
Petitioners and Patent Owners alike have started filing stipulations in district court and at the International Trade Commission to leverage the Fintiv factors in their favor on the issue of discretionary denial at the Patent...more
8/4/2021
/ Denial of Institution ,
Evidence ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Statutory Deadlines ,
Stipulations
[co-author: Jay Bober, Summer Associate]
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...more
8/2/2021
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Appointments Clause ,
Burden of Proof ,
Claim Construction ,
Denial of Institution ,
Evidence ,
Executive Branch ,
Executive Powers ,
Intel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Oral Hearings ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition For Rehearing ,
Prejudice ,
Prior Art ,
Qualcomm ,
Remand ,
SCOTUS ,
Statutory Deadlines ,
Stipulations ,
Sua Sponte ,
United States v Arthrex Inc ,
USPTO ,
Vacated
Claim construction is the heart of validity and infringement for almost every patent proceeding. Yet, at least two recent cert petitions brought from separate cases by Intel and Akeva have argued the Federal Circuit has two...more
[co-author: Yuke Wang, Patent Agent]
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...more
4/27/2021
/ Claim Construction ,
Evidence ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition for Writ of Certiorari ,
Prior Art ,
Reversal ,
Split of Authority
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
Most readers have been following the impact of the Federal Circuit’s decision in Arthrex and know that an earlier and less developed Arthrex I case is on cert to the Supreme Court asking the Court to address the appointments...more
Since arriving at the USPTO, Director Iancu has tried to bring clear messages and consistency to the Office. For purposes of this article, we concentrate on the new POP procedures for Board case law and rules, and how the...more