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
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
The Federal Circuit recently held that clarifying and §112-based amendments are allowed in addition to narrowing amendments used to overcome prior art teachings in Motions to Amend during PTAB proceedings.
In American...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
In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more
6/2/2022
/ Appeals ,
Evidence ,
Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Motivation to Combine ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand ,
Substantial Evidence Standard ,
USPTO ,
Vacated
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
Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more
3/23/2022
/ America Invents Act ,
Estoppel ,
Ex Partes Reexamination ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 325(d) ,
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
In a non-precedential decision, Baker Hughes Oilfield Operations, LLC v. Hirshfeld, the Federal Circuit held that, under the Administrative Procedures Act, once the Board decided Ground 3 was too imprecise and would not be...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
9/29/2021
/ Administrative Patent Judges ,
Administrative Procedure Act ,
AIPLA ,
Evidence ,
Final Written Decisions ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Mootness ,
Obviousness ,
Oral Argument ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Professional Development ,
USPTO ,
Young Lawyers
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
9/1/2021
/ America Invents Act ,
Claim Construction ,
Design Patent ,
Evidence ,
Extrinsic Evidence ,
Inter Partes Review (IPR) Proceeding ,
Intrinsic Evidence ,
Inventions ,
Nexus ,
Nonobvious ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand ,
Reversal ,
Substantial Evidence ,
USPTO ,
Utility Patents ,
Vacated ,
Written Descriptions
[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
In Olaplex, Inc. v L’Oréal USA, Inc. the Federal Circuit addressed, among other issues, PGR estoppel in subsequent district court litigation. Here, the Court addressed the timing to raise estoppel regarding written...more
6/8/2021
/ Claim Construction ,
Estoppel ,
Final Written Decisions ,
L'Oreal ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Post-Grant Review ,
Prior Art ,
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
6/3/2021
/ Claim Construction ,
Estoppel ,
Final Written Decisions ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Inventors ,
IP License ,
L'Oreal ,
Obviousness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Philip Morris ,
Post-Grant Review ,
Prior Art ,
Remand ,
RJ Reynolds ,
Section 337 ,
USPTO ,
Vacated ,
Written Descriptions
[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
In John Bean, the patent owner’s only competitor, Morris & Associates, responded to a demand letter with evidence of invalidity. John Bean Technologies Corporation v. Morris & Assocs. Inc., Cases 2020-1090, 2020-1148, Slip...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
3/31/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Demand Letter ,
Denial of Institution ,
Due Process ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO ,
Willful Infringement
In Vidstream v. Twitter, the Federal Circuit affirmed unpatentability of Vidstream’s patent in view of a book even though the copyright page of the version submitted had a later copyright date. Vidstream, LLC. v. Twitter,...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
12/18/2020
/ Final Rules ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
RPI ,
SAS Institute Inc. v Iancu ,
USPTO
As a follow up to our May 2020 article, and taking no side in this article, I write to remind the bar that on November 19, 2020 the Comment period ends for the latest Federal Register Notice on maybe the hottest topic at the...more
In its decision to remand, the Federal Circuit (1) held the Board’s non-analogous art test was wrong and articulated a new test for the Board to follow on remand, and (2) left it up to the Board to make the ultimate decision...more