How does the discontinuation of inter partes reexamination affect patent challenges?
The discontinuation of inter partes reexamination, as noted in MPEP 2620, significantly changed the landscape of patent challenges. The MPEP states: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change means that parties seeking to challenge a patent’s validity must now use other procedures, such as inter…
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 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 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…
Read MoreWhat are the judicial review options for parties in AIA trial proceedings?
For parties involved in America Invents Act (AIA) trial proceedings, such as inter partes review, post-grant review, and covered business method review, the MPEP 1216 outlines the following judicial review option: “A party dissatisfied with the final written decision of the Board in an inter partes review, post-grant review, or covered business method review proceeding…
Read MoreWhat are the procedures for filing a motion in a PTAB trial proceeding?
Filing a motion in a Patent Trial and Appeal Board (PTAB) trial proceeding involves specific procedures and authorizations. According to MPEP 1002.02(j): “Authorizations to file a motion other than a petition requesting the institution of a trial. 37 CFR 41.121 and 42.20 – 42.25.” This means that parties must generally obtain authorization from the PTAB…
Read MoreWhat authority does the Chief Administrative Patent Judge have regarding time extensions in PTAB proceedings?
The Chief Administrative Patent Judge has authority to grant time extensions in various Patent Trial and Appeal Board (PTAB) proceedings. According to MPEP 1002.02(f), this authority includes: Granting extensions of pendency for up to six months in inter partes or post-grant review proceedings Handling petitions for time extensions for seeking rehearing in ex parte appeals…
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