USPTO Round Table on Equity of Inter Partes Reexamination Proceedings

Transcript and Public Comments

The USPTO held a round table meeting at its offices in Arlington, Virginia, on February 17, 2004. Customers' views and responses will be used in preparing an upcoming inter partes reexamination report that the agency is preparing for Congress as required by the "Optional Inter Partes Reexamination Procedure Act of 1999." The Act, which established inter partes reexamination, required that within five years of its enactment, the USPTO evaluate the "equities" of the inter partes reexamination proceedings and recommend changes to the proceedings where necessary.

Reexamination allows anyone at any time during the life of a U.S. patent to request that the USPTO reexamine the patent based on prior patents and printed publications that raise a substantial new question of patentability. The original reexamination statute, enacted in 1980, provided only for ex parte reexamination, which limited the participation of third parties requesting reexamination. Separate optional inter partes reexamination procedures were enacted in 1999, permitting third parties greater participation in the proceeding, including appeals to the USPTO's board of appeals.

Please note that the following documents are provided as submitted by persons and organizations but may contain artifacts of scanning, OCR, or document format conversion.

A. Participant Comments:

Michele Cimbala, Esq., Sterne, Kessler, Goldstein & Fox [pdf]
Collin Webb, Esq., CNH America, and the ABA's subcommittee for patent reexamination and opposition [pdf]
Brad Lytle, Esq. Oblon, Spivak, McCleland, Maier & Neustadt [pdf]
Beth Weimar, Esq., Morgan, Lewis & Bockius [pdf]
Lance Johnson, Esq., Roylance, Abrams, Berdo and Goodman [pdf]
Miles Dearth, Esq, Lord Corporation [pdf]
Harold Wegner, Esq., Foley and Lardner [pdf]
Nancy Linck, Esq., Guilford Pharmaceuticals [pdf]
Charles Van Horn, Esq., Finnegan, Henderson, Farabow, Garrett and Dunner, on behalf of the AIPLA [pdf]
Jeffrey Kushan, Esq., Sidley, Austin, Brown and Wood [pdf]
Lee Hollaar, University of Utah [pdf]
Kristin Vidovich, Esq., Oliff and Berridge [pdf]
Fred Williams, Esq., Burns and Levinson [pdf]
Manny Schecter, Esq., IBM [pdf]

The transcript of the hearing and the public comments received in response to the Federal Register notice are available on the USPTO Web site at www.uspto.gov.

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