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Invalidating an issued patent

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The AIA created several new administrative trial procedures to review the patentability of an issued patent by panels of administrative law judges of the newly established Patent Trial and Appeal Board (PTAB), an agency within the U. Patent and Trademark Office (USPTO), which sits under the U. A PGR is a trial conducted before panels of three administrative law judges of the PTAB. PGR is only available for patents issued from applications with an “effective filing date” of on or after March 16, 2013, and that are up to nine months old. Instead, the PTAB will give a claim its “broadest reasonable interpretation” in light of the specification of the patent. Subject to a few exceptions, the statutes and rules for a PGR generally apply to a CBM proceeding. The PTAB held the claims unpatentable under section 101.

However, the time can be extended by up to six months for good cause. § 103 and can only be based on patents or printed publications. Pentcheva is an intellectual property attorney at Westman, Champlin & Koehler, P. Nathan Shrewsbury evaluates intellectual property matters for an administrative agency with the federal government in Washington, D.

If the only change being made in the patent is correction of the inventorship, this can be accomplished by filing a request for a certificate of correction under the provisions of 35 U.

However, if applicant chooses to file a reissue application to correct the inventorship (as opposed to choosing the Certificate of Correction route), applicant may do so because misjoinder of inventors is an error that is correctable by reissue under 35 U.

“Useful” in that context does not mean merely relevant or admissible; instead, in the context of factor one, “useful” means favorable in substantive value to a contention of the party moving for discovery.

The essence of factor one is unambiguously expressed by its language, i.e., the requester of information should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered.