IPRs and Patent Prosecution Are Not the Same

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John P. Isacson

Ex parte Grillo-Lopez, Appeal No. 2018-006082 (April 7, 2020).

On April 7, 2020, The PTAB denied rehearing in Ex parte Grillo-Lopez (August 28, 2019) and issued a precedential decision explaining the denial. The appeal concerned final rejections that the examiner issued based upon an FDA transcript, which applicants argued was not prior art. The FDA transcript in question was the subject of previous IPRs, where the PTAB held that the FDA transcript was not shown to have been a printed publication. Opinion at 2, fn 2. Continue reading “IPRs and Patent Prosecution Are Not the Same”

Did You Know About Supplemental Examination?

Photo of John P. Isacson
John P. Isacson

The America Invents Act (AIA) ushered in an era of Patent Office trials to adjudicate the validity of issued patents. The AIA, however, created an additional, lesser used, avenue to address patent validity. This procedure is known as Supplemental Examination under 35 USC 257.

Continue reading “Did You Know About Supplemental Examination?”