Patent Bar Question: Re-examination

Discussions related to the bar exam are found in this forum
letsplayball

New
Posts: 33
Joined: Mon Nov 09, 2015 10:13 pm

Patent Bar Question: Re-examination

Postby letsplayball » Thu Aug 04, 2016 1:54 pm

I've been studying for the patent bar for the past 2 months and have a pretty good grasp on most of the concepts, but I have one burning question which I somehow couldn't find an adequate answer for after some online searching... why would any patentee ever want an ex parte re-examination (and supplemental examination under AIA for that matter) of their patent?? Why would you ever want to put your granted patent at the risk of being found invalid if it has already been granted and you can reap it's benefits?? Sure, somebody somewhere down the line can request an inter partes re-examination or even challenge the patent validity in some court, but wouldn't it just be smarter and easier to wait until something like this arises (if it ever does) than to just go ahead and make your patent vulnerable to invalidity yourself?? Kinda confusing... any help would be appreciated. Thanks!

NY_Sea

Bronze
Posts: 281
Joined: Fri Oct 23, 2015 1:25 pm

Re: Patent Bar Question: Re-examination

Postby NY_Sea » Thu Aug 04, 2016 3:16 pm

letsplayball wrote:I've been studying for the patent bar for the past 2 months and have a pretty good grasp on most of the concepts, but I have one burning question which I somehow couldn't find an adequate answer for after some online searching... why would any patentee ever want an ex parte re-examination (and supplemental examination under AIA for that matter) of their patent?? Why would you ever want to put your granted patent at the risk of being found invalid if it has already been granted and you can reap it's benefits?? Sure, somebody somewhere down the line can request an inter partes re-examination or even challenge the patent validity in some court, but wouldn't it just be smarter and easier to wait until something like this arises (if it ever does) than to just go ahead and make your patent vulnerable to invalidity yourself?? Kinda confusing... any help would be appreciated. Thanks!

It doesn't happen often, but I've seen scenarios where people forget to do something that's mandated like submit an IDS or Oath and Dec, the patent issues and then you need to technically open the app up for prosecution in order to get the IDS accepted.

But you're right, there are very few scenarios where a patentee would do this.

Good luck on your exam, whenever you're taking it... I'd rather take my state bar again than the Patent Bar.

User avatar
bulinus

Bronze
Posts: 199
Joined: Wed Jan 23, 2013 9:32 pm

Re: Patent Bar Question: Re-examination

Postby bulinus » Fri Aug 05, 2016 4:09 pm

My understanding of the supplemental examination is when you find out that someone did something stupid during prosecution that could affect your patent validity, then you get to go hat in hand to that PTO and get that reexamined, effectively inoculating you against a subsequent attack before the PTAB or fed court.

35 USC 257: "A patent shall not be held
unenforceable on the basis of conduct relating to information
that had not been considered, was inadequately considered, or
was incorrect in a prior examination of the patent if the
information was considered, reconsidered, or corrected during
a supplemental examination of the patent. "

letsplayball

New
Posts: 33
Joined: Mon Nov 09, 2015 10:13 pm

Re: Patent Bar Question: Re-examination

Postby letsplayball » Fri Aug 05, 2016 9:54 pm

bulinus wrote:My understanding of the supplemental examination is when you find out that someone did something stupid during prosecution that could affect your patent validity, then you get to go hat in hand to that PTO and get that reexamined, effectively inoculating you against a subsequent attack before the PTAB or fed court.

35 USC 257: "A patent shall not be held
unenforceable on the basis of conduct relating to information
that had not been considered, was inadequately considered, or
was incorrect in a prior examination of the patent if the
information was considered, reconsidered, or corrected during
a supplemental examination of the patent. "


Yes, this has been my understanding of supplemental examination (to basically make sure you don't get screwed later for some mistake you potentially made in the past). But is this pretty much the same for ex parte?? I think the official law is that if a request for supplemental examination is granted, then an ex parte re-examination follows. So does this mean patentees can do supplemental examination and ex parte, or only supplemental which will lead to ex parte anyways? Kinda confused how the two are different and if they are, what is the incentive of requesting ex parte re-examination rather than supplemental?



Return to “Bar Exam Prep and Discussion Forum�

Who is online

Users browsing this forum: EIWIsMyFetish and 8 guests