Patents Post Grant Blog

Most practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception.  I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.

In most cases, the dispute relates to a lack of specificity in identifying the error to be corrected in the patent reissue application. While in many cases the correction necessary is relatively minor. However, in most cases the objection raised relative to the oath does not come from the examiner, but instead, a Quality Assurance Specialist (QAS) of the USPTO. Thus, it is not uncommon to contact the examiner to request a recommended change to an oath to finally settle the dispute only to have the examiner inform you “I think it’s fine, but the QAS has some issue that I don’t really understand.” This leaves the Patentee with no efficient means to address the problem in a timely manner. This type of roadblock is especially aggravating in broadening patent reissue applications.

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USPTO Affirmed on Facts, But Corrected as to Proper Recapture Rule Analysis

Back in February I recounted the oral agument of In re Mostafazadeh. This case explored the degree to which a claim limitation added to distinguish over the prior art during original prosecution may be broadened during patent reissue. In patent reissue, Mostafazadeh sought an intermediate scope to the “circular attachment pad” limitation added to his claims during original prosecution. In the reissue claims, the terminology “circular” was removed. To justify this broadening, the Patentee argued that the claim was materially narrowed in “other respects.”

On appeal, the CAFC considered whether or not the “materially narrowed in other respects” aspect of the rule established in In re Clement, (MPEP 1412.02), must be related to the “critical limitation” (i.e., circular attachment pad) or whether the narrowing must relate to an “overlooked aspect,” such as an unclaimed species or embodiment as advanced by the USPTO.

In their affirmance of the USPTO. the CAFC characterized the BPAI analysis as “perplexing” and found their interpretation of “materially narrowing” as “contrary to our precedent.”

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Upward of 70% of Patent Reissue Filings Include a Defective Oath

(click to enlarge)

As most practitioners are well aware, defective oaths in patent reissue are the rule, not the exception. As the chart above demonstrates for patent reissues filed in 2005, such oath problems lead to longer patent reissue pendencies.

With narrowing patent reissue filings constituting the bulk of patent reissue applications at the USPTO, it is not surprising that the impact of defective oaths are more pronounced in this sub-category. For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs 2.88 years) than those with oath problems.

Surely, both the USPTO and stakeholders share the blame equally for these recurring problems. As demonstrated just yesterday, these issues are rarely resolved prior to appeal. Read the rest of this entry »

Patent reform changes to the post grant landscape seem inevitable with S.515 gaining traction.  As such, a brief review of other patent systems may shed some light on the mixture of provisions that may ultimately be offered in the U.S, and their degree of harmonization with other international post grant review mechanisms.

The following is a comparison of Reexamination/Invalidation Proceedings at the State Intellectual Property Office (SIPO) of the people’s republic of China to Inter Partes Re-examination Proceedings at the USPTO.  In contrast to the United States where invalidity can be determined by the Court or by the USPTO through Re-examination, the Chinese Patent Reexamination Board (PRB) has sole jurisdiction over patent validity issues in China.  The Courts do not have jurisdiction to invalidate a patent.  PRB decisions may, however, be appealed to the Beijing People’s Intermediate Court, and further appealed to the Beijing People’s High Court.

In Japan, since January 1, 2004, the Japan Patent Office (JPO) has conducted Read the rest of this entry »