USPTO Round Table on Equity of Inter Partes Reexamination Proceedings
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.
that the following documents are provided as submitted by persons and
organizations but may contain artifacts of scanning, OCR, or document
A. Participant Comments:
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
Harold Wegner, Esq., Foley and
Nancy Linck, Esq., Guilford Pharmaceuticals
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
Kristin Vidovich, Esq., Oliff
and Berridge [pdf]
Fred Williams, Esq., Burns and
Manny Schecter, Esq., IBM [pdf]
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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