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Category Archives: Reexam

USPTO Reverses Course to Permit Anonymous Ex Parte Reexamination Requests

Posted in Patent Reform; Reexam; USPTO Proposed Rule Changes

Responding to public feedback, the USPTO announced that it has dropped a controversial proposal that would have required all requests for ex parte reexamination to identify the requester’s “real party in interest.”  The change is one of several new provisions in a Final Rule, released August 6, 2012, which implements a new estoppel provision in the America Invents Act (AIA) barring ex parte reexamination of a patent following the completion of an inter partes review or post-grant review.  Third-party requesters and patent owners alike will need to be familiar with the Final Rule which goes into effect on September 16, 2012.  Continue reading this entry

Time Is Running Out To Comment On Proposed Rules For USPTO Board Patent Trial Proceedings

Posted in Patent Reform; Reexam; Uncategorized; USPTO Proposed Rule Changes

The deadline for submitting public comments on the USPTO’s proposed rules for patent trial proceedings is next week, April 9 and 10, 2012.  Specifically, public comments on the seven Federal Register notices containing the USPTO’s rulemaking proposals are due as follows:

  • Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012;
  • Practice Guide for Proposed Trial Rules—public comments due April 9, 2012;
  • Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012;
  • Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012;
  • Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012;
  • Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012;
  • Changes to Implement Derivation Proceedings—public comments due April 10, 2012. 

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En Banc Federal Circuit Requires Reexam Claim Amendments For Intervening Rights

Posted in Federal Circuit Decisions; Reexam

On March 15, 2012, the en banc Federal Circuit issued a divided decision in Marine Polymer Technologies, Inc. v. HemCon, Inc. that vacated the September 2011 panel decision and upheld the district court’s $29.4 million verdict in favor of the patent owner. In a section of the majority opinion that the dissent characterizes as dicta, the majority revisited the panel decision that an intervening rights defense can arise from arguments made during a reexamination proceeding, and decided that intervening rights can arise only if claims are amended or added during reexamination. This decision gives stakeholders a bright line rule to apply, but may not be consistent with other doctrine relating to claim construction and prosecution history estoppel.Continue reading this entry