Patent Law Practice Center

PTO Director Initiates Reexamination against Gift Tax Patent in Week of January 10, 2011

Here is this week’s installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

In a very unusual step, the Director of the PTO has initiated a reexamination of U.S. Patent No. 6,567,790 claiming a method of estate planning (ex parte Request No. (17)). In its reexamination order, the PTO explained that Director initiates reexamination when it appears “that an examining procedure has not been followed which has resulted in the issuance of a claim in a patent that is prima facie unpatentable, and there is a compelling reason to order reexamination at the Director’s initiative.” 

In this instance, the original examiner’s failure to consider a specific article “has created an extraordinary situation” requiring reexamination.  According to the reexamination order, the article was not considered or discussed in the original prosecution, even though it disclosed the claimed feature noted by the original examiner as the reason for allowance.  Whether such methods related to legal and tax matters should be eligible for patent protection has been hotly disputed. (See also IPWatchdog’s post “Patent Office Orders Reexamination of Tax Related Patent” for more on this reexamination story). (more…)