News & Analysis as of

Patent Ownership Administrative Procedure

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

Fish & Richardson on

Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

Morgan Lewis

Reissue

Morgan Lewis on

A reissue application may be filed by a patent owner to correct an error in a patent. Reissue applications are useful to correct substantive errors that cannot be corrected with a certificate of correction. ...more

McDonnell Boehnen Hulbert & Berghoff LLP

"Creativity Machine" Cannot Be Named As Inventor

In a Decision on Petition issued in April, and signed by Deputy Commissioner for Patent Examination Policy Robert W. Bahr, the U.S. Patent and Trademark Office refused to vacate a Notice to File Missing Parts of...more

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

2019 PTAB Year in Review: Analysis & Trends: Dramatic Changes to Motion to Amend Practice

Motions to amend have historically been viewed as an exercise in futility. The Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, agrees, having publicly stated that “[s]ome have suggested that...more

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

PTAB Strategies and Insights - October 2019

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

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

PTAB Strategies and Insights - July 2019: Are the DMV Sloths From Zootopia Reflective of the Pace for Reissue Applications from...

The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more

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

PTAB Strategies and Insights - December 2018: Proposed New Motion to Amend Procedure Gives Patent Owners a Fighting Chance at...

With their proposed new procedure, the USPTO hopes to make claim amendments via a motion to amend more of a reality for patent owners in PTAB trials....more

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

Supreme Court Strikes Down PTAB Partial Institution Practice: If PTAB Institutes IPR, It Must Address All Challenged Claims in Any...

The Supreme Court has ruled by a narrow majority of 5-4 that the Patent Office’s regulation allowing for partial institution decisions in inter partes review is foreclosed by the text of 35 U.S.C. § 318(a). SAS Institute Inc....more

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