About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Oil States Energy Services, LLC v. Greene's Energy Group, LLC -- Positions Taken in Selected Amicus Curiae Briefs | Main | Is a Patent a Private or Public Right? -- Supreme Court Hears Oral Arguments in Oil States Energy Services, LLC. v. Greene's Energy Group, LLC »

November 29, 2017


Interestingly, SOP 9 notes that all decisions of the Federal Circuit in reexainations are treated as remands to the PTO. That makes sense in view of the fact that the Federal Circuit has not always been consistent with the language it uses in deciding a case. For example, if a claim is held not unpatentable by the Board and reversed by the Federal Circuit, that only goes to the grounds considered by the Board and not all grounds for patentability raised by the patentee. It would not be right to cancel the claim without considering the patentee's other bases for patentability. However, as the situation now stands, that is exactly what the Office appears to be doing in AIA proceedings. Reversals in AIAs should also be treated as remands to the Office. They are not, to my knowledge.

Thanks. The statistic "To date, the Federal Circuit has remanded about 42 cases to the Board for further processing" is interesting. Even though that is presumably a relatively small___? % of IPR decisions appealed, it shows that they are definitely not all Rule 36 rubber stamped as some have alleged. By now that must also have educated some APJs as to better IPR decision drafting.
How does that 42 remand number compare to the number of actual reversals?

The comments to this entry are closed.

February 2024

Sun Mon Tue Wed Thu Fri Sat
        1 2 3
4 5 6 7 8 9 10
11 12 13 14 15 16 17
18 19 20 21 22 23 24
25 26 27 28 29