Patents Post Grant Blog

As a final reminder, registration remains open for PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. The last stop on this year’s program is in New York this coming Friday, February 4, 2011.

I will co-chair both the event and speak on the topic of Pre-Trial and Post-Trial Reexamination Strategies Concurrent with Litigation.

In addition to an already stellar lineup of speakers and topics, including the Hon. Theodore R. Essex of the International Trade Commission, this year we are very excited to host Mr. Kenneth Schor of the USPTO’s Office of Patent Legal Administration (OPLA). You can find some background on Mr. Schor’s highly instructive presentation here. 

More information and registration information is found in the linked text above.

Stay of Parallel Litigation Denied Due to Lack of Estoppel?

When implementing a patent reexamination strategy, a threshold determination is whether or not to initiate ex parte or inter partes patent reexamination, or both. This decision is very straight forward for older patents (i.e., those patents that did not mature from an application filed on or after November 29, 1999). This is because applications filed prior to the 1999 date are not eligible for inter partes patent reexamination.

Yet, as the years progress, fewer and fewer patents are outside of the inter partes date provision. So, where both options are available, which is the better option?

Like most legal inquiries, the answer is “it depends.” For those seeking a stay of a parallel litigation, the answer will vary in accordance with the practice of the presiding judge. Read the rest of this entry »