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Patent Applications Ex Partes Reexamination Patent Ownership

Volpe Koenig

[CLE Webinar] Correcting Patents: A Comprehensive Overview - March 6th, 1:00 pm - 2:00 pm EST

Volpe Koenig on

Join Volpe Koenig for a webinar focused on various methods available for correcting patents after they have already issued. This session will explore the key processes and best practices related to correcting patents,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

How Petitions Affect Reexamination and Reissue Prosecution and Clarification of a Dismissed Petition

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Dilemma with Patent Owner Statements Post-Reexamination Order

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Demonstrating Unequivocal Intent to Broaden in Reissue

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 2024

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Strategies for Successful Patent Owner Reexamination Requests

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

Foley Hoag LLP

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Foley Hoag LLP on

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more

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