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–A Glitch in the Matrix?–

As noted in Part I of our series on intervening rights, claim amendments in reexamination and/or reissue at the USPTO may create absolute and/or equitable intervening rights. Although the doctrine of intervening rights is codified as a component of reissue statute 35 U.S.C. § 252, reexamination statutes 35 U.S.C. § 307 (ex parte) and 35 U.S.C. § 316 (inter partes) incorporate the reissue statute in this regard.

35 U.S.C. § 252 Effect of Reissue.

The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent. (emphasis added)

As can be appreciated, 35 U.S.C. § 252 states that substantially identical claims are treated no differently with respect to liability (damages) than original claims.[1]

Of course, this provision begs the question:

What types of claim changes can be made Continue Reading Intervening Rights & The Substantially Identical Standard

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One of the crowd pleasers built into the revised S.515 is the ability to effectively cure mistake and/or oversight in original patent prosecution.  Such inadvertant issues can currently serve to jeopordize an otherwise valid patent.  With the Federal Circuit struggling to get their arms around the never ending saga that is inequitable conduct jurisprudence, Congress appears poised to provide some much needed relief by way of the revised Patent Reform Legislation.

For example, in Section 10 of the Bill, Chapter 25 of title 35, United States Code, would be amended by adding a new section 257 to permit the patent owner to request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to its patent.  The Director would then have 3 month to determine whether the information presents a substantial new question of patentability (SNQ).  If an SNQ is found to exist, the supplemenatl examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices).  Once the supplemental examination concludes, the issues brought before the Office in the second examination cannot be used to attack the patent Continue Reading Inoculate Your Patents from Inequitable Conduct Allegations?

expiredOn March 15, 2010, an expanded BPAI panel that included Chief APJ, Michael Fleming and Vice Chief APJ, Allen MacDonald rendered a decision on rehearing of an expired patent of the infamous Ronald A. Katz Technology Licensing L.P portfolio. The rehearing addressed the standard for claim construction in expired U.S. Patent No. 5,561,707. A copy of the decision is found (here).

The original BPAI decision contained a statement that, in construing the claims of an expired patent during a reexamination proceeding, “the claims will not be narrowed by interpretation not required by the claim language.”  The expanded BPAI panel clarified the statement made in the original panel decision by stating that “[i]t does not say that the claim terms cannot be interpreted using different words or limit the sources of claim meaning.”

The expanded panel agreed that Continue Reading Expanded BPAI Panel Rehears Reexamination Decision on Expired Katz Patent

keyAs noted by USPTO reexamination statistics, the majority of recent patent reexaminations are also involved in concurrent litigation.  A recurring issue for litigants involved in such disputes is the fashioning of an appropriate protective order to adequately protect confidential materials. Such issues become particularly contentious in litigation between direct competitors.

Understandably, defendants typically seek protective orders providing  maximum protection of confidential materials, forbidding litigation counsel from using these materials in the prosecution of plaintiff’s patent applications. This prohibition known as a “patent prosecution bar,” is largely standard practice.  However, it is well established that patent reexamination does not involve “patent applications.” Thus, a thornier issue is presented when attempting to extend this bar to include barring participation by individuals with access to confidential information in ongoing reexamination proceedings.

Courts have taken divergent paths on the issue.  Some courts Continue Reading Protective Orders: Patent Reexamination & Concurrent Litigation in Delaware

top5ass=”alignleft size-full wp-image-1688″ title=”top5″ src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/top5.jpg” alt=”top5″ width=”116″ height=”114″ />Although the link to the left side provides a top 5 postings of sorts, the ranking is skewed significantly by spam bot visits (seeking to leave advertising comments on the same few posts over and over).  Until we can figure out a way to correct the calculation, here are the top 5 postings for February-March 2010.

1. S.515 Reloaded

2. S.515 Post Grant Review

3. Hobbits & Wizards (Amazon 1-click reexamination)

4. Design Patent Reexaminations

5. The New Texas Two Step

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— Reducing  Infringement Liability Via

         Intervening Rights (PART I)–

As reported last week, USPTO reexamination of Amazon’s “1-click patent” concluded with the amendment of the broadest claims. In response, many Internet news sources, and IP blogs decried the reexamination process and the USPTO as a failed system. Yet, lost in the hysteria and naiveté is a very fundamental concept of post-grant proceedings at the USPTO, namely, the doctrine of intervening rights.

USPTO statistics very clearly bear out that complete cancellation of ALL patent claims via ex parte reexamination, such as was conducted of Amazon’s 1-click patent, is the exceptional case, not the rule.  Indeed, as of December 2009, only 11% of ex parte reexaminations conclude with all claims cancelled. Yet, roughly 600 requests for ex parte reexamination have been filed every year since the inception of the Central Reexamination Unit (CRU). With only 11% of patents having all claims cancelled over a 20+ year period, clearly the strategy behind ex parte reexamination requests is something other than outright cancellation.[1]

Certainly, a third party requestor would be pleased with the cancellation of all claims of a patent in reexamination, however Continue Reading Flicking the Patent Reset Switch

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Mr. Raymond Mercado is a doctoral student in political science at Duke University

The Use and Abuse of Patent Reexamination

The presence of a threshold requirement (the “substantial new question of patentability” or “SNQ”) intended to protect patent holders from unwarranted reexamination proceedings reflects Congressional recognition that reexamination—like the patent application process—is susceptible to fraud and other misconduct.  Yet, whereas the literature and caselaw dealing with inequitable conduct by patentees is vast, there has been surprisingly little exploration of misconduct on the part of reexamination requesters.  My paper, The Use and Abuse of Patent Reexamination, attempts to fill this gap by examining the vulnerabilities of the reexamination process and the impact of unwarranted reexamination proceedings on patent holders.

Suppose that a third-party requester were to fabricate or mischaracterize prior art, for example by misrepresenting the publication date of an obscure reference, deliberately mistranslating a foreign reference, altering the drawings and figures, or simply by proffering an elaborate but objectively unreasonable interpretation of the prior art.  Continue Reading Recourse for Abuse of The Patent Reexamination Process?

amazon_craveass=”alignleft size-full wp-image-1626″ title=”amazon_crave” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/amazon_crave.jpg” alt=”amazon_crave” width=”181″ height=”119″ />Various stories began appearing yesterday noting the recent termination of the ex parte reexamination Amazon’s famous “1 – click patent” (USP 5,960,411). This patent was the subject of a patent dispute between Amazon.com and Barnes & Noble.com.  As most recall, B&N was subject to a preliminary injunction during the 1999 holiday season. The suit was settled in 2002, terms of the settlement remain confidential. Amazon appears to have been fairly successful in licensing the patent thereafter.  

In 2006, a New Zealand actor appearing in such films as Lord of the Rings, decided to go on a quest to invalidate the 1- click patent (I’m picturing Frodo, I don’t know about you) requesting ex parte reexamination of all claims. The request for reexamination was granted with respect to the claims of the patent (1-26). Claims 6-10 recited a shopping cart component and were confirmed patentable over the submitted art of the request.

Not surprisingly, the shopping cart feature of the confirmed claims was later introduced by Amazon into rejected claims 1-5 and 11-26 by amendment.  This amendment was submitted to the USPTO in 2007.  It is unclear why the USPTO took so long to terminate the reexamination, however, the termination is not the least bit surprising as the writing has been on the wall for several years now. So, one would expect that the conclusion of this reexamination would be rather uneventful right? 

Wrong

Yesterday the typical Continue Reading Hobbits & Wizards –The Amazon 1-Click Reexamination —

uspto facesOn March 2, 2010, the USPTO held a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting at its Madison Auditorium. Among the various topics presented was a set of  USPTO Slides by Jean Vollano, a Quality Assurance Specialist in TC 1600. Her presentation was informative and worth a detailed review. She covered reissue practice relating to (1) amendments to claims, description and drawings, (2) inclusion of certificates of correction in reissue applications, (3) oaths/declarations and (4) amendments to a reissue of a reissued patent.

Her slides provide examples of how to properly amend claims in reissue applications emphasizing the need to amend original patent claims using brackets and underlining of original patent claim text. She reminded applicants that Continue Reading Fixing Errors: USPTO Offers Reissue Best Practices for Patent Owners

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With patent reform changes being considered to introduce a new Post-Grant Review proceeding, a review of existing systems employing similar style mechanisms may be instructive.

European Patent Convention (EPC), Articles 99-105 provide for a post-grant opposition procedure at the European Patent Office (EPO).  Any third party natural or legal person may, without identifying the real-party-in-interest, file with the EPO a post-grant opposition to a granted patent within 9 months of the publication of the granted patent from the EPO.  This is in contrast with Post-Grant Review that while including the same time window requires identification of the real-party-in-interest.  As can be appreciated, the revisions to S.515 for Post-Grant Review closely track the EPO model in many respects.

In the EPO proceeding, if there is an ongoing opposition proceeding, Continue Reading EPO Opposition Procedures, a Model for Post-Grant Review?