Re-work Frustrates Patent Owners & The System

I have written about Patent Owner estoppel for years. That is, estoppel stemming from claims cancelled in PTAB trial proceedings. This estoppel is based on the idea that, if you have an amendment to bring to a given claim set, you should bring that amendment during the trial — not thereafter, such as in a patent reissue, reexamination or continuation application.

Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim. But, it is fairly common for unsuccessful Patent Owners to go right back after a PTAB loss and pursue substantively identical claims through patent reissue or reexamination. Why?

Patent Owners are not gluttons for punishment, they are just following the directions of the agency.Continue Reading PTAB Estoppel is Confused By the USPTO