Why doesn’t the USPTO investigate duty of disclosure issues during patent examination?
The USPTO does not investigate duty of disclosure issues during patent examination for several reasons: Lack of appropriate tools: The USPTO lacks the necessary tools to effectively deal with these complex issues. Sensitive nature: Duty of disclosure and inequitable conduct are sensitive matters with potential significant impact on a patent. Judicial doctrine: Inequitable conduct is…
Read MoreWhen can an ex parte reexamination be requested?
According to MPEP 2211, an ex parte reexamination can be requested “at any time during the period of enforceability of a patent“. This is established by 37 CFR 1.510(a). The period of enforceability is generally determined by adding 6 years to the patent’s expiration date, but may be extended in cases of pending litigation. To…
Read MoreHow does the USPTO prioritize reexamination proceedings and reissue applications?
The USPTO prioritizes reexamination proceedings and reissue applications as follows: Highest Priority: Cases involved in litigation (both reexamination proceedings and reissue applications) Second Priority: Reexamination proceedings not involved in litigation Lower Priority: All other cases As stated in MPEP 2661: “Any cases involved in litigation, whether they are reexamination proceedings or reissue applications, will have…
Read MoreHow does the USPTO handle duty of disclosure and inequitable conduct issues?
The United States Patent and Trademark Office (USPTO) generally does not handle duty of disclosure or inequitable conduct issues during the examination process. According to MPEP 2010, “It is the courts and not the Office that are in the best position to fashion an equitable remedy to fit the precise facts in those cases where…
Read MoreWhat is the difference in priority between reexamination proceedings and reissue applications?
According to MPEP 2261, there is no inherent difference in priority between reexamination proceedings and reissue applications at the United States Patent and Trademark Office (USPTO). The key factor determining their priority is whether they are involved in litigation. The MPEP states: “Any cases involved in litigation, whether they are reexamination proceedings or reissue applications,…
Read MoreHow are product-by-process claims treated in infringement cases?
The treatment of product-by-process claims in infringement cases differs from their treatment during patent examination. MPEP 2113 states: “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product…
Read MoreHow does the exception to the prior art rule affect patent litigation?
The exception to the prior art rule, as described in MPEP 2124, can have significant implications in patent litigation. This exception allows for the use of post-filing date evidence in certain circumstances, which can affect arguments related to enablement, written description, and the state of the art. For example, the Federal Circuit case Amgen Inc.…
Read MoreHow is the enforceability period of a patent determined for supplemental examination purposes?
The enforceability period for supplemental examination purposes is generally determined by adding six years to the patent’s expiration date. However, this period can be extended if litigation is pending. The MPEP 2808 states: “Specifically, if litigation is instituted within the statute of limitations (see 35 U.S.C. 286), requests for supplemental examination may be filed after…
Read MoreHow does litigation affect the priority of patent cases at the USPTO?
Litigation has a significant impact on the priority of patent cases at the United States Patent and Trademark Office (USPTO). According to MPEP 2261, cases involved in litigation are given the highest priority in processing. The MPEP specifically states: “Any cases involved in litigation, whether they are reexamination proceedings or reissue applications, will have priority…
Read MoreHow does pending litigation affect the timing of supplemental examination requests?
Pending litigation can extend the period during which a patent owner can file a request for supplemental examination. The MPEP 2808 states: “Specifically, if litigation is instituted within the statute of limitations (see 35 U.S.C. 286), requests for supplemental examination may be filed after the statute of limitations has expired, as long as the patent…
Read More