Has Ex Parte Sauerberg Gutted the Patent Act’s Safe Harbor Provision?

This article concerns the impact of Ex Parte Sauerberg, a 2017 Patent Trial and Appeal Board (PTAB) decision, on the safe harbor provision of 35 U.S.C. § 121.  We address whether Sauerberg is consistent with Federal Circuit law and decades of U.S. Patent and Trademark Office (USPTO) practice, and discuss implications for practitioners.

The Safe Harbor

Section 121 is designed to address potential unfairness that may arise from the interplay of two common aspects of patent prosecution practice.