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Posts Tagged ‘ reissue ’

CAFC: Intervening Rights for Claims Unamended During Reexam*

Posted: Tuesday, Sep 27, 2011 @ 9:01 pm | Written by Eric Guttag | No Comments »
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Posted in: Eric Guttag, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Litigation, Patents, Reissue & Reexamination, USPTO

CAFC Rules “Intervening Rights” May Be Based on Arguments Even Though Claims Unamended During Reexamination.

I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A Potential Hidden Trap for Reexamined Patent. The case of Marine Polymer Technologies, Inc. v. HemCon, Inc. is one of those rare instances in this esoteric area of patent law where the Federal Circuit announced a new “wrinkle” on when “intervening rights” apply in reexamination. Unfortunately, the rule announced by the majority in Marine Polymer Technologies (“intervening rights” apply to unamended claims based on statements made during reexamination) is squarely in conflict with the express language of 35 U.S.C. § 307(b), as Judge Lourie’s dissent vigorously (and more importantly, correctly) points out.



PLI’s Winter 2011 Schedule Full of Great IP Programs

Posted: Thursday, Jan 20, 2011 @ 7:07 pm | Written by Gene Quinn | 1 Comment »
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Posted in: Attorneys, Gene Quinn, IP News, IPWatchdog.com Articles, Practising Law Institute, Programs & Events

From the shameless commerce division, with at least a mild dose of self promotion, I am here to tell you about some of the intellectual property programs that the Practising Law Institute (PLI) has in store for the Winter 2011 season.

By now practically everyone probably knows that PLI is a sponsor, and that I teach the PLI Patent Bar Review Course, so I suppose you can take what I say with a grain of salt, but I am really looking forward to these PLI programs in particular.  I will be signed up to attend via webcast the programs I cannot make live, and I will be in in Chicago, IL in March for the Patent Bar Review Course and in New York City for the 5th Annual Patent Law Institute from February 17-18, 2011.  If your firm is a privileged member you can attend these and all other PLI programs for free, with the exception of the Patent Bar Review Course.



Judge Pauline Newman Headlines All-Star PLI Program

Posted: Saturday, Feb 6, 2010 @ 4:10 pm | Written by Gene Quinn | 1 Comment »
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Bar Review, Patents, Reissue & Reexamination

Judge Pauline Newman, CAFC

Yes, a message from the shameless commerce division no doubt, but there are a handful of excellent PLI patent related programs coming up in February and March that deserve a mention.  After all, how often can one attend a program, get CLE credits and meet Federal Circuit Judge Pauline Newman?  Not all that often to be sure, but Judge Newman will be attending and presenting at the Reexamination and Reissue program in New York City on February 11-12, 2010.  If you cannot make it to New York for the live program the event will be broadcast live via webcast.



BPAI Rules Reissue Improper When Only Adding Narrower Claims

Posted: Thursday, Jan 7, 2010 @ 11:29 am | Written by Eric Guttag | 6 comments
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Posted in: IP News, IPWatchdog.com Articles, Patent Trial and Appeal Board, Patents, USPTO

Reissue practice and reissue oaths are plagued by the tortured language of 35 U.S.C. § 251.  Having suffered through 3 related reissues myself, I’ve often referred to this language in 35 U.S.C. § 251 as being something “other than English.”  An expanded panel of the Patent Office Board of Appeals and Interferences (Board) in Ex parte Tanaka had to decide whether this byzantine language permitted reissue where only narrower claims were added as a “hedge” against invalidity of the original claims.  Their answer was a unanimous and emphatic “NO,” an answer the Federal Circuit and its predecessor, the CCPA, had surprisingly dodged for over 45 years.