What types of documents can third parties submit during an ex parte reexamination proceeding?
During an ex parte reexamination proceeding, third parties are generally not allowed to make submissions after the reexamination order is issued. However, the USPTO will accept certain documents to ensure a complete file with updated status information. These include: Copies of notices of suits involving the patent Copies of decisions or papers filed in court…
Read MoreWhat limitations are placed on submissions to patent files regarding court decisions?
The USPTO places several limitations on submissions to patent files regarding court decisions and related documents. According to MPEP 2207, these limitations include: Non-merit decisions (e.g., on motions for a new venue or discovery date) are not entered and may be expunged if mistakenly added. Papers providing a party’s arguments (e.g., a memorandum supporting summary…
Read MoreHow do courts weigh objective evidence against inventor testimony?
Courts typically give more weight to objective evidence than to inventor testimony when determining whether a use or sale was experimental. The MPEP 2133.03(e)(2) cites a recent case: “Sunoco Partners Mktg. & Terminals LP v. U.S. Venture, Inc., 32 F.4th 1161, 1171-72, 2022 USPQ2d 417 (Fed. Cir. 2022) (The Federal Circuit relied on the objective…
Read MoreWhat are the limitations of res judicata in patent applications?
Res judicata in patent applications has several limitations. According to MPEP 2190: “A res judicata rejection should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review…
Read MoreWhat additional legal documents should be included with a patent reexamination request?
When submitting a patent reexamination request, certain additional legal documents should be included to provide a comprehensive context for the patent’s current status. According to MPEP 2219: “A copy of any federal court decision, complaint in a pending civil action, or interference or derivation decision should also be submitted.“ These additional documents may include: Federal…
Read MoreWhat are some examples of products that have been found to have or lack markedly different characteristics?
The MPEP provides several examples of products that have been found to have or lack markedly different characteristics from their natural counterparts. These examples are based on court decisions and help illustrate the application of the analysis. Products found to have markedly different characteristics: Chakrabarty’s genetically modified bacterium: “This bacterium had a changed functional characteristic,…
Read MoreHow does concurrent litigation affect ex parte reexamination proceedings?
Concurrent litigation can significantly impact ex parte reexamination proceedings. According to MPEP 2286, when a request for ex parte reexamination is filed as a result of a court order or an agreement sanctioned by a court, or when litigation is stayed for the filing of a reexamination request, “all aspects of the proceeding will be…
Read MoreWhat is the process for entering court decisions into a patent file?
The process for entering court decisions into a patent file involves several steps and parties within the U.S. Patent and Trademark Office (USPTO). According to MPEP 2207: The Solicitor’s Office processes notices required by 35 U.S.C. 290 received from clerks of various U.S. courts. These notices are entered into the patent file. The USPTO also…
Read MoreWhat types of court decisions can be entered into a patent file?
The U.S. Patent and Trademark Office (USPTO) accepts various types of court decisions for entry into patent files. According to MPEP 2207, these include: Final court decisions (even if still appealable) Decisions to vacate Decisions to remand Decisions on the merits of patent claims The MPEP states: The decisions from litigation or other proceedings include…
Read MoreHow do court decisions impact the determination of a substantial new question of patentability?
Court decisions can impact the determination of a substantial new question of patentability (SNQ) or reasonable likelihood that the requester will prevail (RLP), but their influence varies depending on the nature of the decision. The MPEP outlines several scenarios: Final holding of validity: A final court decision that a patent claim is not invalid doesn’t…
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