Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Add Inter Partes Re-Examination to Your Patent Infringement Defense
Inter partes re-examination can stop patent litigations dead in their tracks. The procedure often leads to narrowing or even cancellation of the patent claims. Practitioners may shy away from inter partes re-examination because it is considered an unsatisfactory substitute for the courtroom when seeking to prove invalidity. However, many may be overlooking that when it comes to proving noninfringement, inter partes re-examination has tremendous value.
Re-examination allows a patent challenger to present prior art patents or publications to the USPTO to challenge the patentability of any or all claims of a patent. If a substantial, new question of patentability is raised, the USPTO conducts an examination of the patent as if it were a patent application. There are two types of re-examination: ex parte and inter partes. In ex parte re-examinations, a third-party requester can initiate the procedure with a request, and may respond to a patent owner's statement, if any is filed. After that the re-examination is handled only by the USPTO and the patent owner. The third-party requester has no further right to participate.
Inter partes re-examination is a relatively new procedure. The patent owner is limited to written submissions and the requester is given the right to comment upon any such submissions. In exchange for use of this procedure, the requester is estopped from challenging the validity of the patent in court in related litigation based on the same grounds as had been raised or could have been raised in the re-examination. Inter partes re-examination may only be used against patents issued from patent applications filed after Nov. 29, 1999. Thus, although the frequency of inter partes re-examinations is currently small, it will grow over time as inter partes re-examination may be applied to increasing numbers of patents and as the usefulness of the procedure becomes better understood.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.