Intellectual Property

Recent Posts

Patents Post-Grant: Is There Value to Ex Parte Patent Reexamination after the AIA?
Posted on 15 Feb 2013 by Scott A. McKeown

Ex Parte Patent Reexamination Filings Fall by 50% After AIA Prior to September 16, 2012, ex parte patent reexamination was the only USPTO option for challenging the validity of patents that issued from patent applications filed before November 29,... Read More

Patents Post-Grant: Limited Patent Reexamination Choices for Late Stage Litigants
Posted on 17 Aug 2011 by Scott A. McKeown

Inter Partes Patent Reexamination is Not Always the Best Choice In the case of Inventio AG v. Otis Elevator Co. (SDNY) [ enhanced version available to lexis.com subscribers ] , the Court found that entry of a permanent injunction was against public... Read More

Waiver of Patent Owner Statement Disfavored in Ex Parte Patent Reexamination
Posted on 23 Sep 2010 by Scott A. McKeown

New Ex Parte Patent Reexamination Pilot Program a Tough Sell Back in August, I reported on a new USPTO pilot program designed to decrease pendency in ex parte patent reexamination by seeking waiver of the right to file a Patent Owner Statement... Read More

Patent Reexamination Pilot Program Update
Posted on 10 Jan 2011 by Scott A. McKeown

Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The... Read More

Patents Post-Grant: Judge Newman again Questions the Constitutionality of “Do Over” Patent Reexamination
Posted on 6 Jun 2012 by Scott A. McKeown

AFC Forced to Disturb Earlier Ruling Based on More Liberal Patent Reexamination Standards Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In some cases, an infringer that fails to prove invalidity in the... Read More

Patents Post-Grant: Encouraging Waiver of a Patent Owner Statement in Ex Parte Patent Reexamination
Posted on 13 Jun 2011 by Scott A. McKeown

USPTO Proposal Forces Patentee Cooperation in Violation of Statute? Last Monday, I proposed managing petition practice in inter partes patent reexamination based on the patent interference model already in place. As a reminder, this proposal is responsive... Read More

Patents Post-Grant: Patent Reexamination Surge Headed to USPTO
Posted on 20 Aug 2012 by Scott A. McKeown

Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent... Read More

Requests for Information in Ex Parte Patent Reexamination
Posted on 15 Dec 2010 by Scott A. McKeown

USPTO Relies on Case Law Predating Interrogatory Power of 37 CFR 1.105 As discussed previously, it is not uncommon for Patentees to introduce evidence of secondary indicia of non-obviousness when faced with an obviousness rejection. To be considered... Read More

Patents Post-Grant: SNQ Review Options in Patent Reexamination
Posted on 8 May 2011 by Scott A. McKeown

SNQ Review Options Vary Significantly Between Ex Parte & Inter Partes Patent Reexamination As discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability... Read More

Patent Reexamination Pilot Program Update
Posted on 10 Jan 2011 by Scott A. McKeown

Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The program... Read More

Fitch, Even, Tabin & Flannery LLP: Citation of Patent Owner Statements and Application of Estoppel to Ex Parte Reexamination
Posted on 25 Sep 2012 by Fitch, Even, Tabin & Flannery

The Leahy-Smith America Invents Act (AIA) expands the scope of information that third parties may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or before the U.S. Patent and Trademark... Read More

Diffusing the Risk of Inter Partes Patent Reexamination
Posted on 16 Aug 2010 by Stephen Kunin and Scott McKeown

USPTO statistics demonstrate that Patent Owner's fair much better in ex parte patent reexamination as opposed to inter partes patent reexamination. Current statistics indicate that all claims are canceled in patents subject to ex parte reexamination... Read More

Concluded Ex Parte Reexamination Results Ignored by District Court?
Posted on 26 Aug 2010 by Scott A. McKeown

Estoppel of 35 USC § 317(b) Applies Only to Inter Partes Patent Reexamination One of the risks often associated with ex parte patent reexamination is that an outcome favorable to a patent holder is considered to "gold plate" a patent... Read More

Patents Post-Grant: Thereasense Decision & Inter Partes Patent Reexamination
Posted on 14 Jun 2011 by Scott A. McKeown

Therasense Decision to Influence the Choice Between Ex Parte vs. Inter Partes Patent Reexamination? On May 25, 2011, the Federal Circuit issued its the long awaited en banc decision in Therasense, Inc. v. Becton, Dickinson & Co . 2008-1511 . ... Read More

Building a Better Post Grant
Posted on 22 May 2012 by LexisNexis Patent Community Staff

From the U.S. Patent and Trademark Office : Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea Currently, the USPTO has two principal ways of challenging granted patents -... Read More