Patent Law

By the Book

By Gary Odom and Jordan Kuhn

Responding to definitions of terms in a reexamination Examiner's Answer, an Appellant filed a reply that included dictionary definitions, to rebut the examiner's construction. The reply brief was refused entry, on the ground that the dictionary definitions constituted "new evidence." A petition to overturn was denied.

Thanks to Hal Wegner, who remarks on this case:

The patentee today who runs the gauntlet of patent reexamination is facing a much stricter road to sustain patentability than many have thought.

Previously, the patentee might have considered seeking a trial de novo under 35 USC § 145, but in 1999, in a little noticed amendment to the statute at the time, the trial de novo route has been abolished for reexamination proceedings: Only a direct appeal to the Federal Circuit remains open.

Full post as published by The Patent Prospector on August 24, 2008 (boomark / email).