Questioning USPTO Estoppel Rule 42.73(d)(3)(i): Part 1

Law360, New York (February 1, 2018, 11:10 AM EST) -- On Aug. 14, 2012, the U.S. Patent and Trademark Office published its final rule to implement the Leahy-Smith America Invents Act, including 37 C.F.R. § 42.73(d)(3)(i).[1] Section 42.73(d)(3)(i) provides: “A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment [in proceedings before the Patent Trial and Appeal Board], including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.” Unlike § 42.73(d)(1), which prescribes the estoppel facing a petitioner in a post-grant...
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