Ex Parte

Bizarre Facts Beget Bizarre Result

Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint … Continue Reading

The Board Is Deciding Ex Parte Appeals Within One Year

By Sandip H. Patel on May 10, 2021 Posted in Appeals, Ex Parte

The Patent Trial and Appeal Board recently presented an update on the “Fast-Track Appeals Pilot Program” the Patent Office initiated in July 2020. As we previously explained (link), the program is designed to reduce the pendency of ex parte appeals. Under the program, the Board has been issuing decisions within six months from the date … Continue Reading

Fast-Track Decisions on Ex Parte Appeals

By Sandip H. Patel on July 8, 2020 Posted in Ex Parte

On July 2, 2020, the Patent Office initiated the “Fast-Track Appeals Pilot Program,” which it designed to reduce the pendency of ex parte appeals. The program, effective for one year, is in a pilot stage to gauge the public’s interest and to assess its longer-term feasibility. The Office neither expects nor intends any delays for … Continue Reading

Is the Written Description Requirement a Nose of Wax?

By Sandip H. Patel on July 16, 2019 Posted in Ex Parte, Section 112

In re Global IP Holdings LLC, Appeal 2018-1426 (Fed. Cir. July 5,2019), concerns patent law’s written description requirement, under 35 USC § 112. The patentee is trying to reissue its patent on a carpeted load floor of a car. The patented floor includes thermoplastic components. The components, according to the patentee, ought not have been … Continue Reading

USPTO to Patent Owners – Don’t Forget About Reexams and Reissues

By Heather R. Kissling on July 1, 2019 Posted in Amendments, Ex Parte, Inter Partes Review, IPR, Reexamination

Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding. The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the … Continue Reading

Play the Claim

By Sandip H. Patel on April 17, 2018 Posted in Biotechnology, Claim Construction, Ex Parte, Reexamination, Sections 102/103

Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.” [1] The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an … Continue Reading

ODP Dooms CIP

By Sandip H. Patel on February 21, 2018 Posted in Ex Parte, Reexamination

In re Janssen Biotech, Inc., Appeal 2017-1257 (Fed. Cir. Jan. 23, 2018), is a cautionary tale concerning patents protecting a blockbuster drug providing patients an important therapy and bringing its owners billions of dollars in annual revenue. It began twenty-five years ago with a then-unremarkable decision to file a patent application. The filed application was … Continue Reading