News & Analysis as of

Patent Re-Examination Patents

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

Cellect and Allergan: Obviousness-Type Double Patenting (ODP) in Reexamination and Reissue

Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more

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

Reexamination Petition Practice Is a Critical Tool for Patent Owner Success

Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more

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

What is a Streamlined Reexamination Request (SRR)?

One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...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

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

A Reissue Is Not a Re-Issue and Other Patent Correction Procedures

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

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

What’s in a Name? Why Reexamination Is Not a Re-Examination

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

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips - April 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

American Conference Institute (ACI)

[Event] 20th Paragraph IV Disputes - April 25th - 26th, New York, NY

Hosted by American Conference Institute, the 20th Annual Paragraph IV Disputes & the 40th Anniversary of the Hatch-Waxman Act returns for another exciting year with curated programming that will take a retrospective look at...more

Smart & Biggar

Canadian Patent Law 2023: A Year in Review

Smart & Biggar on

In our annual review of developments in Canadian patent law, we considered over 60 patent decisions reported last year. This article highlights statutory changes and a selection of interesting points addressed in the reported...more

Linda Liu & Partners

Third Party Observation in Patent Prosecution in China

Linda Liu & Partners on

In practice, companies regularly search the competitors's related published patent applications to determine whether they pose a threat to their own market activities. If necessary, companies can consider using the third...more

Smart & Biggar

Federal Court refuses stay of impeachment action despite patentee’s pending re-examination

Smart & Biggar on

In a recent decision, Pfizer Canada ULC v Uniqure Biopharma BV, 2023 FC 629, the Federal Court dismissed uniQure’s motion to stay Pfizer’s action to impeach uniQure’s patent pending completion of re-examination of the patent...more

Fox Rothschild LLP

USPTO Post-Grant Proceedings: An Overview

Fox Rothschild LLP on

Inter partes reviews (IPRs), ex parte reexaminations and post-grant reviews (PGRs) are all post grant proceedings offered by the United States Patent and Trademark Office (USPTO) that allow parties to challenge the validity...more

McDermott Will & Emery

PTO Introduces Trademark Decisions and Proceedings Search Tool

On February 17, 2023, the US Patent & Trademark Office (PTO) announced the launch of the new Trademark Decisions and Proceedings Search Tool. This tool allows users to filter and search expungement and reexamination...more

Linda Liu & Partners

Ways to Amend the Claims in the Patent Invalidation Proceedings

Linda Liu & Partners on

When a patentee responds to the challenge in the patent invalidation proceedings in China, sometimes it is necessary to amend the claims in order to obtain a decision from the CNIPA to maintain the validity of the patent...more

Smart & Biggar

Federal Court stays re-examination of glatiramer acetate patent pending appeal in PMNOC proceeding

Smart & Biggar on

On April 26, 2021, the Federal Court granted Teva’s motion for a stay of the re-examination proceeding commenced by Pharmascience in respect of Canadian Patent No. 2,760,802 (802 patent) relating to glatiramer acetate (Teva’s...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 15-19): Equitable Intervening Rights

The Federal Circuit had a slow week, issuing only 8 decisions (just 3 of them precedential).  But among those was an interesting case with a question of first impression about the doctrine of equitable intervening rights. ...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir....

The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes...more

Weintraub Tobin

District Court Finds Patentee’s Prior Statement Regarding Prior Art A Binding Admission

Weintraub Tobin on

In The Sherwin-Williams Company v. PPG Industries, Inc., 2-17-cv-01023 (WDPA 2021-01-21, Order), the court had to decide whether Plaintiff The Sherwin-Williams Co. (“Sherwin”) should be bound by its prior admission to the...more

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

Global Patent Prosecution - August 2020: Survey of PTAB and CNIPA Proceedings in View of Proposed Regulations Regarding...

In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more

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

Global Patent Prosecution - June 2020: Considerations When Appealing a Patent Application at the CNIPA

This article discusses aspects of ex parte appeals of patent applications before the China National Intellectual Property Administration (CNIPA). A patent applicant may appeal (submit a re-examination request) an examiner’s...more

McDermott Will & Emery

Arthrex Extended to Inter Partes Re-examination

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board...more

Troutman Pepper

Arthrex and Reexamination

Troutman Pepper on

Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020). Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been...more

Foley & Lardner LLP

USPTO to Tweak PTA Rules in View of Supernus

Foley & Lardner LLP on

In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit held that the USPTO cannot charge a Patent Term Adjustment (PTA) deduction for “applicant delay” during a period when the applicant “could have done nothing to...more

McDermott Will & Emery

A Decision on Appeal Is Final . . . Mostly

McDermott Will & Emery on

In the latest round of the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit held to its precedents in determining when 35 USC § 317(b) estoppel is triggered against inter partes re-examinations. VirnetX...more

Hogan Lovells

Invalidation of Chinese patent based on a finding of lack of domestic priority

Hogan Lovells on

Recently, the Chinese Patent Reexamination Board (PRB) published a written decision where patentee Chen He’s Electric Unicycle patent (CN102275621B) was invalidated based, partly, on a failure to establish sufficient domestic...more

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