Patent owner estoppel PTAB

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FWD Boilerplate Encourages Rework

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 (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.

In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.

Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue. Continue Reading CAFC Backs Patent Owner Estoppel – PTAB Should Stop Suggesting Otherwise

Continuation Applications & Terminal Disclaimers: Infectious Estoppel

Patent owner estoppel is codified by Patent Trial & Appeal Board (PTAB) regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims in a later USPTO proceeding that are patentably indistinct to claims lost in a PTAB trial. This regulation has largely flown under the radar relative to the more well-known statutory estoppel provisions that applies to failed PTAB petitioners. Yet, as I pointed out previously, patent owners, and more particularly patent prosecutors, would be wise to take heed of this new threat.

Yet, understanding this new prosecution threat is only part of the battle. The best practice going forward is to structure portfolios to minimize potential PTAB estoppel damage.
Continue Reading Standard Patent Prosecution Practices Invite Collateral PTAB Damage