Until recently, the scope of estoppel triggered by PTAB trials was of concern primarily to litigators, who worried about their arguments being estopped in district court.<\/p>\n
But patent prosecutors should also worry about estoppel arising from PTAB proceedings. This was made clear in the latest version of the USPTO\u2019s Manual of Patent Examining Procedure that issued in January 2018, the first revision in two years. It states that, \u201c[PTAB] trial proceedings yield information that may be considered material to pending related patent applications \u2026 [An] example of such material information is any assertion that is made during litigation and\/or trial proceeding which is contradictory to assertions made to the examiner. Examples include evidence of possible prior public use or sales, questions of inventor ship, [or] prior art.\u201d This sweeping requirement for additional disclosure signals a big change that can create issues for those prosecuting patent applications.<\/p>\n
Our panel, which includes an in-house prosecutor for a technology company with a sophisticated understanding of law and procedure, a post-grant specialist, and former USPTO Deputy Commissioner for Patent Examination Policy, will discuss:<\/p>\n
That some commenters have questioned whether the PTAB has authority to issue its estoppel rule, 37 CFR \u00a7 42.73(d)(3)(i). Should this have any impact on prosecutors\u2019 behavior?<\/p>\n
Speakers:<\/p>\n
Until recently, the scope of estoppel triggered by PTAB trials […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[1],"tags":[],"class_list":["post-22958","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"acf":[],"yoast_head":"\n