News & Analysis as of

Patent Examinations Ex Partes Reexamination Prior Art

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – November/December 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 & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

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

Snell & Wilmer

Appealing the Rejection of a Patent Application

Snell & Wilmer on

Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more

Jones Day

SCOTUS Rejects Petition To Review Section 325(d)

Jones Day on

On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several...more

Foley & Lardner LLP

Federal Circuit Chastises PTAB Over Moving Target On Ex Parte Appeal

Foley & Lardner LLP on

The Federal Circuit decision in In re Durance is a rare precedential decision in an ex parte appeal from a Patent Trial and Appeal Board (PTAB) decision rejecting a pending patent application. The Court took the USPTO to task...more

Jones Day

PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

Jones Day on

In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR petition that presented the same prior art before the Patent Office in a pending reexamination. Fox Factory, Inc....more

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

The Board Gives Section 325(d) Sharp Teeth—Part II – The Petitioner's Criticality to Selecting and Using The Right Prior Art

This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more

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