Tag Archives: Ex Parte

Federal Circuit Imperils Term-adjusted Patents

By Sandip H. Patel on Posted in Ex Parte, Reexamination
The Federal Circuit recently upheld the Patent Office’s decision to reject claims in four separate reexamination cases due to obviousness-type double patenting (ODP). In re Cellect, LLC, Appeal Nos. 22-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023). This decision is important because it expands ODP, a doctrine judges developed long ago, when patents received … Continue Reading

PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte Appeals

By Sandip H. Patel on Posted in Ex Parte, Institution / Denial, Inter Partes Review, IPR, Post Grant Review, Reexamination, Trial Procedures, Uncategorized
After the Supreme Court’s decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the process last year (link) and received more than 4,000 responses (link)! The process has yet to … Continue Reading

Patent Interferences May Not Involve Pure AIA Patent

thumbnail image of DNA strandBy Sandip H. Patel on Posted in Biotechnology, Ex Parte, Interferences, Reexamination
The Patent Office is not supposed to issue separate patents for the same invention to competing inventors. Several statutory provisions empower the Office to reject pre-AIA patent application claims of the later inventor. But sometimes it’s not clear who is the later inventor. Those provisions are therefore unhelpful. So, the Patent Trial and Appeal Board … Continue Reading

Bizarre Facts Beget Bizarre Result

By Sandip H. Patel on Posted in Ex Parte, Inter Partes Review, IPR, Reexamination
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

Fast-Track Decisions on Ex Parte Appeals

By Sandip H. Patel on 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
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