Patent Law Practice Center

Reissue & Reexam Live Blog: Ethical Considerations

The last panel of the day – Ethical Considerations in Reissues and Reexaminations. The panel includes Gerald Murphy, Jr., Partner at Birch Stewart Kolasch & Birch and Practice Center Contributor, and Barbara Mullin of Akin Gump Strauss Hauer & Feld.  Here are some highlights from the panel:

• Reissue and Reexam overlap where the error is overly broad claiming in view of prior art.  If patentee becomes aware of prior art that does not invalidate the claims but does raise a substantial new question of patentability and there are no other errors in the patent that render it wholly or partly inoperative or invalid, only option is ex parte reexam.  If patentee can identify another error in addition to new prior art, Reissue becomes available. 
• Both Reissue and Reexam can give rise to charges of inequitable conduct.
• Patents being reissued and reexamined may present unique issues because: they are often very important, the amount of available “information” potentially material to patentability might be much greater than the information available during the original prosecution, and/or parallel litigation is not unusual. (more…)

Inter Partes Reexamination Mechanics And Results

Our friends at Birch, Stewart, Kolasch and Birch sent in this article discussing inter partes reexamination, a fairly new proceeding in the PTO.  This post is a comprehensive guide to practice before the PTO in inter partes reexamination.  The article covers topics such as what patents qualify for inter  partes reexamination, who can request the proceeding and how to demonstrate a substantial new questions of patentability.  Here is an excerpt and link to the full article.

 The Creation of the Inter Partes Reexamination Procedure and Goals Thereof   

Reexamination is a procedure established by statute which permits the USPTO to reconsider the patentability of the claims in the issued patent in view of prior art which was not considered in the original prosecution of the application. [1 ]The reexamination statute was amended on November 29, 1999 by Public Law 106-113.  Public Law 106-113 authorized the extension of reexamination proceedings via an optional inter partesreexaminaiton procedure in addition to the existing ex parte reexamination procedure.  The final rules to implement the statutory inter partes reexamination option was published in the Federal Register on December 7, 2000 [2] and in the Official Gazette on January 2, 2001. [3]  (more…)

Prosecuting Patent Applications: Establishing Unexpected Results

Today’s guest post was written by Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP.

The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution before the U.S. Patent and Trademark Office in order to overcome a rejection based on obviousness under 35 U.S.C. §103(a).

I. General Comments

“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). (more…)

Taking Advantage of the First Action Interview Pilot Program

This post comes from Robert Hulse (Partner at Fenwick & West and Practice Center Contributor)

The U.S. Patent and Trademark Office (USPTO) introduced its “First Action Interview Pilot Program” about two years ago. This program enables patent applicants to conduct an interview with the assigned patent examiner, by phone or in person, before the examiner issues a first office action. In the first office action, the patent examiner either allows the application or identifies grounds to reject the application based on the results of the examiner’s search of the prior art and review of the patent application.

Historically, patent applicants could conduct an interview with the patent examiner after the first office action was issued, but not before this time. With this program, the USPTO has attempted to bring the benefits of the interview earlier in the process by focusing the examiner on relevant aspects of the invention at the beginning of examination and helping the applicant understand the examiner’s interpretation of the patent claims that define the invention. (more…)

Navigating the Best Mode Requirement

            The Patent Act provides that the patent specification “shall set forth the best mode contemplated by the inventor of carrying out his invention.”[1]  This requirement, also known as the best mode requirement, is in essence a quid pro quo with the inventor.  In return for granting the right to exclude others from making or using a patented invention, the inventor must disclose or conversely not conceal from the public the preferred embodiment.  But, what constitutes the preferred embodiment, how much information actually needs to be disclosed, what can be withheld and what happens when the inventor is not aware of the best mode?  The recent case law provides some answers to these questions, but also raises other concerns, especially as we enter the brave new era of biosimilars and the inevitable wave of litigation that will likely ensue.

            In order to satisfy the best mode requirement, the inventor must disclose the preferred embodiment of his invention as well as any preferences that could materially affect the invention.[2]  The first step in a best mode inquiry begins, as is always the case with patent law, with the claims.[3]  This past March the Federal Circuit handed down a decision in Ajinomoto Co. v. ITC where the scope of the claims created a problem for the inventors.[4] (more…)