Posts Tagged: "35 USC 325"

Limiting Section 325(d) Delegation Will Ensure a More Predictable Inter Partes Review Process

Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) known about certain prior art. However, USPTO Director Iancu should consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination. As such, all references in the prosecution record would be presumed to have been fully considered by the examiner and could not form any part of a post grant petition. This change would exercise the discretion provided by Congress to its fullest, preserve USPTO resources by not reconsidering the Office’s prior decisions, and restore some predictability to the U.S. patent system.

Federal Circuit Affirms CBM Unpatentability Holding; Finding Estoppel Did Not Apply

In Credit Acceptance Corp. v. Westlake Servs. the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“Board”) in a Covered Business Method (“CBM”) review proceeding, agreeing with the Board that petitioner Westlake was not estopped from maintaining a CBM review of the challenged claims and confirming that the challenged claims are unpatentable under 35 U.S.C. § 101… Dissenting-in-part, Judge Mayer would have held that the Court does not have jurisdiction to review a decision by the Board regarding a motion to terminate a post-grant review proceeding as barred by § 325(e)(1).