The Patent Trial and Appeal Board (PTAB) has discretion under 35 US.C. § 325(d) to decline institution of inter partes review when "the same or substantially the same prior art or arguments" were previously presented to the U.S. Patent and Trademark Office. Although no statute or regulation provides guidance on what constitutes "the same or substantially the same prior art or arguments," it is possible to identify trends in the board's decisions to exercise § 325(d) discretion. When present, certain factors seem to strongly influence the board's decision. In this article Finnegan attorney Virginia L. Carron and Ashley M. Winkler consider the board's treatment of art or arguments that were first presented to the USPTO during ex parte proceedings.
Previously published in Law360
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