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 -
- 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
Short answer: Yes, but…
Short answer: Yes, but… Many practitioners in sensitive technology areas file patent applications with non-publication requests or may abandon their applications if examination is not going well...more
9/12/2024
/ Artificial Intelligence ,
Databases ,
Internet ,
Notice of Allowance ,
Office Actions ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Policies and Procedures ,
Prior Art ,
Search Engines ,
Technology ,
USPTO ,
Websites
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
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
6/1/2022
/ Appeals ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Claim Construction ,
Clear and Convincing Evidence ,
Constitutional Challenges ,
Damages ,
Director of the USPTO ,
Evidence ,
Experimental Use Exception ,
Expert Testimony ,
Federal Vacancies Reform Act ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Motivation to Combine ,
Obviousness ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Post-Grant Review ,
Prior Art ,
Remand ,
Section 102 ,
Separation of Powers ,
Substantial Evidence Standard ,
USPTO ,
Vacated
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 Federal Circuit issued two cases this week providing more clarity to when a functional claim feature should be considered a de facto means-plus-function claim that requires structural detail to meet the indefiniteness...more
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
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
Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...more