USPTO PUBLISHES NOTICE OF PROPOSED RULEMAKING TO REQUIRE IDENTIFICATION OF REAL PARTIES IN INTEREST TO AN EX PARTE REEXAMINATION
Yesterday the USPTO published in the Federal Register a notice of proposed rulemaking to amend the rules of practice to require a third-party request for ex parte reexamination include a statement by the requester identifying all real parties in interest to the request. According to the notice, the statement would be kept confidential upon request, would “provide the Office with a mechanism to evaluate statutory estoppel provisions,” and “would also enhance the Office’s ability to respond to false certifications, misrepresentations, and fraud.” Written comments are due August 21.
UPC UPDATES: THE UPC AND AMENDMENTS
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By Aloys Hüttermann, Michalski Hüttermann & Partner
Few decisions drastically change strategic approach before the UPC, but UPC_CoA_473/2025 is one of them.
Before the EPO and national courts, especially the German Bundespatentgericht, if Claim 1 is found unpatentable, all sub-claims automatically fall with it. For this reason, tactical filing of auxiliary requests is often key to success, particularly in EP oppositions.
Initially it seemed the UPC would follow the same approach. But in UPC_CoA_473/2025, the court made clear that an “application to amend the patent is only required if the patentee wishes to maintain its patent with amended wording — i.e., deviating from the wording of the claims as granted — or proposes combinations of dependent claims not explicitly included therein […].” This means that, in many cases, no amendment of the patent is needed—a position that, interestingly, aligns with the US approach (cf. MaxLinear, Inc. v. CF Crespe LLC, 880 F.3d 1373 (Fed. Cir. 2018)).
Patentees still need to defend their sub-claims with proper arguments, but an explicit amendment request is no longer necessary. Given the UPC’s front-loaded approach, attackers should cover sub-claims in the opening brief as well.
JOIN THE U.S. PATENT LITIGATION COMMITTEE
Litigation funding and an evolving procedural landscape are reshaping U.S. patent litigation. IPO’s U.S. Patent Litigation Committee is reporting to the Board on the litigation transparency legislation and reevaluating historical IPO resolutions on issues including disclosure of interested parties, customer stays, pleading requirements, and discovery standards. If patent litigation is your arena, this committee provides a front-row seat to the policy debates shaping the field — and a chance to influence outcomes. Apply to the U.S. Patent Litigation Committee today at www.ipo.org/joinacommittee.
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