How does ex parte reexamination differ from inter partes review?
Ex parte reexamination and inter partes review are two distinct procedures for reviewing patent validity. The key differences include: Participation: In ex parte reexamination, as described in MPEP 2209, the process is primarily between the patent owner and the USPTO. Third-party requesters have limited involvement after filing the request. In contrast, inter partes review allows…
Read MoreHow does the scope of ex parte reexamination differ from inter partes review?
How does the scope of ex parte reexamination differ from inter partes review? The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include: Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art. Grounds: Ex…
Read MoreWhat are the estoppel provisions related to ex parte reexamination requests?
The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210: “The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent…
Read MoreHow does the USPTO handle concurrent proceedings during ex parte reexamination?
The MPEP 2288 addresses the handling of concurrent proceedings during ex parte reexamination. It states: “If concurrent proceedings are pending at the time the ex parte reexamination certificate is to be issued, the USPTO may suspend the issuance of the certificate until the concurrent proceedings are terminated.” This means that if there are other ongoing…
Read MoreWhat alternatives are available for challenging patents after the discontinuation of inter partes reexamination?
While MPEP 2617 states that “No requests for inter partes reexamination may be filed on or after September 16, 2012,” there are alternative procedures for challenging patents. These include inter partes review (IPR), post-grant review (PGR), and ex parte reexamination. Each of these procedures has its own requirements and timelines, and they were introduced as…
Read MoreWhat actions can the USPTO take after a patent has been granted?
Once a patent has been granted, the U.S. Patent and Trademark Office (USPTO) has limited authority to take action concerning it. MPEP 1305 states: “Once the patent has been granted, the U.S. Patent and Trademark Office can take no action concerning it, except as provided in 35 U.S.C. 135, 35 U.S.C. 154, 35 U.S.C. 156,…
Read MoreWhat types of cases are considered “contested cases” before the PTAB?
According to MPEP 1449, contested cases before the Patent Trial and Appeal Board (PTAB) include several types of proceedings: “A contested case includes a derivation proceeding, an inter partes review, a post-grant review, and a covered business method review.” These proceedings are part of the post-grant patent review process and can be initiated to challenge…
Read MoreWhat resources are available for understanding inter partes review, post grant review, and covered business method review?
Information about inter partes review, post grant review, and covered business method review can be found in the Office Patent Trial Practice Guide. According to MPEP 1400.01: “The sixth, seventh, and eighth ways (inter partes review, post grant review, and covered business method review) are discussed in the Office Patent Trial Practice Guide available at…
Read MoreWhat are the main duties of the Patent Trial and Appeal Board?
The Patent Trial and Appeal Board (PTAB) has several important duties as outlined in 35 U.S.C. 6(b): Review adverse decisions of examiners upon written appeal of an applicant Review appeals of reexaminations Conduct derivation proceedings Conduct inter partes reviews and post-grant reviews The MPEP specifically states: “The Patent Trial and Appeal Board shall— (1) on…
Read MoreWhat types of petitions are decided by the Patent Trial and Appeal Board?
The Patent Trial and Appeal Board (PTAB) decides various types of petitions related to patent examination and post-grant proceedings. These include: Requests in reply briefs and oral hearings to consider new arguments Petitions to institute trials (e.g., inter partes review, post-grant review) Motions related to interference or trial proceedings Requests for additional discovery Motions to…
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