Sunday, December 18, 2005

PTO gives NTP only 30 days to respond to OA in re-exam

the USPTO said in a Dec. 14 letter:

-->"Given the district court's concerns that the office has delayed the proceedings and the outstanding public interest in ensuring that these proceedings are acted upon with special dispatch, the office has assigned a dedicated examining team to handle all of the co-pending proceedings."

The patent office was responding to a request by NTP to give it more time to respond to actions by the agency. The patent office shortened the normal 60-day response time to 30 days. The agency, in rejecting NTP's request, said the 30 days was all that was required by law. <--

The patent office, in initial Office Actions in re-exam of the five patents, rejected claims of all five patents. The PTO has indicated it expects its next step to be a final rejection.

Even a final rejection of claims by the USPTO would not end the re-examination procedure. NTP can appeal to BPAI within the patent office, and, in the event of an unfavorable BPAI decision, seek review before the CAFC, the appeals court that previously upheld part of the finding of infringement.

NTP co-founder Don Stout, who also is a patent lawyer, said in a Dec. 14 interview that part of the appeal will center on the patent office's decision not to follow the Federal Circuit's interpretation of key wording in the patent. The patent office responded, in the Dec. 14 letter, that it has different standards by law. Generally, the USPTO interprets the scope of claims broadly, which can lead to invalidity in terms of close prior art. [see earlier post on IPBiz about Yamamoto.

In addition to the patent office review, Research In Motion has filed a petition asking the U.S. Supreme Court to review the case, arguing that the Federal Circuit improperly expanded the scope of U.S. patent law by ruling that a system based in Canada could infringe a U.S. patent. In that decision, reported earlier on IPBiz, the CAFC distinguished between a claim to a system and a claim to a method, with the current issue over the CAFC interpretation of a claim to a method.


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