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ARTICLE · 14 MARCH 2018

Standard Patent Prosecution Practices Invite Collateral PTAB Damage

Ropes & Gray LLP
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Patent owner estoppel is codified by Patent Trial & Appeal Board regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims ...

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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Continuation Applications & Terminal Disclaimers: Infectious Estoppel

Patent owner estoppel is codified by Patent Trial & Appeal Board (PTAB) regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims in a later USPTO proceeding that are patentably indistinct to claims lost in a PTAB trial. This regulation has largely flown under the radar relative to the more well-known statutory estoppel provisions that applies to failed PTAB petitioners. Yet, as I pointed out previously, patent owners, and more particularly patent prosecutors, would be wise to take heed of this new threat.

Yet, understanding this new prosecution threat is only part of the battle. The best practice going forward is to structure portfolios to minimize potential PTAB estoppel damage.

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