Patent Bar Examination (USPTO Registration Exam) Post-Issuance Proceedings and PTAB Practice Syllabus

What is the two-year limit on broadening reissue?

A reissue application that broadens the scope of the claims must be filed within two years from the grant of the original patent.

Can a broadening reissue be filed after two years if a broadening reissue was already filed within two years?

Yes. If a broadening reissue was applied for within the two-year window, broadened claims may continue to be pursued/added in that reissue even after two years, as long as the public was on notice of the intent to broaden.

What is the recapture rule in reissue practice?

A patentee cannot use reissue to recapture subject matter that was deliberately surrendered (e.g., by amendment or argument) during the original prosecution to obtain allowance.

Describe the basic three-step analysis for applying the recapture rule.

(1) Determine whether the reissue claims are broader than the patented claims; (2) determine whether the broadening relates to subject matter surrendered during original prosecution; (3) determine whether the surrendered subject matter has been entirely or substantially recaptured.

Who must sign the reissue oath/declaration and what must it state?

The reissue declaration (usually by the inventors, or assignee in certain cases) must identify at least one error being relied upon as the basis for reissue and state that the error arose without deceptive intent (for pre-AIA) / identify the error (post-AIA).

What are intervening rights under 35 U.S.C. 252?

Protections for parties who relied on the original patent claims before they were changed by reissue (or reexamination/AIA proceedings), limiting the patentee's ability to enforce amended/new claims against pre-existing activity.

Distinguish absolute (intervening) rights from equitable intervening rights.

Absolute intervening rights protect specific products already made, purchased, or used before reissue. Equitable intervening rights allow a court to permit continued use/manufacture for business begun before reissue, to protect investments, at the court's discretion.

When do amended or new reissue claims trigger intervening rights?

Intervening rights arise for claims that are substantively changed (not identical in scope) by the reissue; claims that are unchanged in scope are treated as continuously in effect and do not trigger intervening rights.

What is ex parte reexamination and who may request it?

A proceeding (35 U.S.C. 302) in which the USPTO re-examines an issued patent's claims over patents and printed publications; anyone, including the patent owner or a third party (or even the Director), may request it.

What threshold must be met to grant an ex parte reexamination request?

The request must raise a substantial new question of patentability (SNQ) affecting at least one claim of the patent.

What types of prior art may be used in ex parte reexamination?

Only prior art consisting of patents and printed publications (i.e., grounds under 35 U.S.C. 102 and 103); issues like public use, on-sale, or 112 cannot form the basis.

After an ex parte reexamination is ordered, what is the third-party requester's level of participation?

Very limited; a third-party requester may file one reply to the patent owner's first statement (if any), but otherwise the proceeding is conducted ex parte between the patent owner and the examiner.

How does an ex parte reexamination conclude?

With issuance of a reexamination certificate that cancels unpatentable claims, confirms patentable claims, and incorporates any amended or new claims found patentable.

Can claims be broadened during ex parte reexamination?

No. The patent owner may amend or add claims but may not enlarge the scope of the claims in a reexamination proceeding.

What is supplemental examination under 35 U.S.C. 257, and who may request it?

A proceeding allowing the patent owner (only the patent owner) to ask the USPTO to consider, reconsider, or correct information believed relevant to the patent.

What is the key strategic benefit of supplemental examination?

Information properly considered in supplemental examination cannot later be used to hold the patent unenforceable for inequitable conduct (it can 'cure' potential inequitable conduct), subject to exceptions.

What kinds of information can be raised in supplemental examination, and how does that differ from reexamination?

Any information believed relevant (not limited to patents/printed publications—can include 101, 112, public use, etc.), unlike reexamination which is limited to patents and printed publications.

What happens after a supplemental examination if a substantial new question of patentability is found?

The Director orders an ex parte reexamination of the patent to address the SNQ raised by the information.

What is inter partes review (IPR)?

An AIA trial proceeding before the PTAB (35 U.S.C. 311) in which a third party challenges the validity of issued patent claims, limited to 102/103 grounds based on patents and printed publications.

What is the timing for filing an IPR petition?

An IPR may be filed only after the later of: 9 months from the patent's grant (or reissue), or the termination of any post-grant review of that patent.

What is the institution threshold for IPR?

There must be a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim.

What is the one-year statutory bar for IPR petitioners?

A petitioner may not file an IPR more than one year after being served with a complaint alleging infringement of the patent.

What is post-grant review (PGR)?

An AIA trial proceeding before the PTAB (35 U.S.C. 321) allowing a third party to challenge an issued patent on essentially any ground of invalidity, available only for first-inventor-to-file (AIA) patents.

What is the filing window for a PGR petition?

A PGR petition must be filed within 9 months after the grant (or reissue) of the patent.

On what grounds may a patent be challenged in PGR, compared to IPR?

PGR allows any invalidity ground (e.g., 101, 112, 102, 103, plus prior public use/on-sale)—except best mode; IPR is limited to 102/103 based only on patents and printed publications.

What is the institution threshold for PGR?

It is more likely than not that at least one challenged claim is unpatentable, OR the petition raises a novel or unsettled legal question important to other patents/applications.

What estoppel results from a final written decision in IPR or PGR?

The petitioner is estopped from later asserting in the USPTO, district court, or ITC any ground that was raised or reasonably could have been raised during the proceeding.

What is a derivation proceeding under 35 U.S.C. 135?

An AIA PTAB proceeding (replacing interference for first-inventor-to-file patents) to determine whether an earlier-filing applicant derived the claimed invention from the petitioner and filed without authorization.

What is the deadline to file a petition for a derivation proceeding?

The petition must be filed within one year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim.

When may an applicant appeal to the PTAB during examination under 35 U.S.C. 134?

An applicant may appeal to the PTAB after any claim has been twice rejected (i.e., after a final rejection), to challenge the examiner's rejection.

What are the applicant's options after receiving an adverse PTAB decision in an ex parte appeal?

The applicant may appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) under 35 U.S.C. 141, or file a civil action in district court under 35 U.S.C. 145.