Allen Sokal, William Smith Article Examines PTO Estoppel Rule 42.73(d)(3)(i)

Articles / February 5, 2018

Counsel Allen Sokal and William Smith, Of Counsel, authored a two-part article published Feb. 1-2, 2018, by Law360. The article is titled “Questioning USPTO Estoppel Rule 42.73(d)(3)(i).” It questions whether the Patent and Trademark Office (PTO) has exceeded its authority by issuing 37 C.F.R. § 42.73(d)(3). Part One considers case law addressing § 42.73(d)(3)(i) and the statutory and some of the case law the PTO has relied on as authority for that provision.

Part Two considers the remaining case law the PTO has relied on, namely that identified in Manual of Patent Examining Procedure § 706.03(w), which is titled “Res Judicata.” Sokal and Smith conclude:

It would appear, therefore, that 37 C.F.R. § 42.73(d)(3)(i) may be beyond the scope of the PTO’s rulemaking authority. Although we do not advocate for a final disposition either way, the bases that the PTO relies on do not appear to provide that authority. The PTO may want to reconsider whether it has that authority and explain its source with a reasoned analysis, or repeal § 42.73(d)(3)(i) and rely instead on claim preclusion and issue preclusion under the controlling case law.

Read Part One (registration required).

Read Part Two (registration required).

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