MPEP § 1451 cautions applicants against filing a copy of the oath/declaration and assignee consent from the parent reissue application when a continuation reissue is filed without abandonment of the parent reissue application. It indicates that in such circumstances OPIE should accord a filing date to the continuation reissue application and send out a notice of missing parts stating that there is no proper consent and setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 1.16(f). This section then instructs examiners to reject the claims of the continuation reissue application under 35 U.S.C. § 251 for failure to identify an error being corrected by the continuation reissue application. It further advises examiners to require a new oath/declaration under 37 CFR 1.175(e). However, I submit that there should be an exception to the aforementioned guidance in the following circumstances. Suppose applicant files a reissue application, in which, during examination, the broadest claims, including the claim in which the error identified in the reissue declaration as the basis for the reissue, are rejected. Other dependent claims are indicated to be allowable by the examiner, if rewritten in independent form. Applicant files an amendment rewriting the dependent objected to claims in independent form and further files a supplemental reissue declaration identifying a new error resulting from the claim amendments. Applicant wishing to promptly obtain the parent reissue patent, files a continuation reissue on the broadest claims, including the claim that was the basis for the error in the parent reissue application and allows the parent reissue application to issue on the narrower claims now written in independent form. In these circumstances, although a terminal disclaimer may be necessary to overcome an obviousness-type double patenting rejection in the continuation reissue to ensure the common ownership of both the parent reissue and continuation reissue, it would appear that the continuation reissue could be properly filed with copies of the assignee consent and parent reissue declaration despite the admonition in MPEP § 1451. The assignee consent would be proper since no new correction has been added. The error specified in the parent reissue application would still be applicable to the continuation reissue. Furthermore, even if the parent reissue patent was granted while the continuation reissue remained pending the effect of the surrender of the original patent should not act as a surrender of the then pending claims in the continuation reissue application. See the related December 14, 2009 posting regarding Ex parte Bayles on www.patentspostgrant.com. Applicant should be able to pursue the claims in the continuation reissue, albeit it may take an appeal to the BPAI or the filing of 37 CFR 1.132 declarations to prevail against the examiner’s rejection.
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Patent owners face a dilemma when they are involved in reexamination proceedings with concurrent patent litigation. They may become aware of potentially material information during litigation that is covered by a protective order. Yet they have a duty to the USPTO to disclose information known to be material regardless of the source of such information. To avoid violation of the protective order, the USPTO provides a mechanism for submission of protective order materials under seal pursuant to MPEP §§ 724.02 and 724.04(c) with a petition to expunge the submitted information. In accordance with MPEP guidelines, information subject to a protective order, must be filed in a sealed, clearly labeled, envelope or container. Each document or item must be clearly labeled as a document "Subject To Protective Order." If the item or document is "Subject to Protective Order" the proceeding, including the tribunal, must be set forth on each document or item. The envelope or container, as well as each of the documents or items, must be labeled with complete identifying information for the file to which it is directed, including the Office or area to which the envelope or container is directed. Any materials, i.e., information, properly submitted under MPEP § 724.02 in a reexamination proceeding will be sealed from public view. The submitted information will be maintained separate from the reexamination file and will not be publicly available until a determination has been made as to whether or not the information is material to patentability. A petition to expunge (37 CFR 1.59) should accompany the submission of proprietary materials, and in any event, must be filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC). If the petition to expunge is not filed in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process, or the petition is filed, and denied/dismissed, then the materials submitted under MPEP § 724.02 will be released to the public with any other papers in the reexamination file. Prior to the mailing of a NIRC, the examiner will review the reexamination file and determine if a petition to expunge is in the reexamination file but not acted upon. The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is material to patentability. If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent part of the reexamination file and open to the public. Where a submission containing protected material is found to be material to patentability, it still may be possible to redact the submission to eliminate the protected material while retaining the important material (e.g., where a confidential identifying number, such as a serial number or social security number, is included, which is not needed for the context of the submission). If so, the redacted version may be submitted to the Office along with a petition under 37 CFR 1.182 requesting that the unredacted version be sealed and be replaced with the redacted version. If all of the submitted information is found not to be material to patentability, the petition to expunge will be granted and the information expunged. If a portion of the submitted information is found not to be material to patentability, and a portion is found to be material to patentability, the petition to expunge will be dismissed, and patent owner (or the requester, in limited instances where appropriate) provided with an opportunity to separate the material and non-material information, such that the non-material information can be expunged. It is preferable that the petition to expunge be submitted upon filing of the protective order information under seal. If a petition to expunge is not filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination certificate printing process), the mailing of the NIRC, the materials submitted under MPEP § 724.02 will become a permanent part of the reexamination file and open to the public under 37 CFR 1.11(d). In the event materials have already been made of record by a party, and it is subsequently determined that the materials are protected, the proper petition to submit would be a petition to seal the protected material under 37 CFR 1.182, with the requisite fee. Finally, practitioners should keep in mind that when such protective order materials are voluminous, as is usually the case, the petitioned review of materiality at the time of NIRC can be time consuming for the Office. Therefore, to avoid delay in printing of the reexamination certificate practitioners should consider seeking a de-designation of such materials via court order, where feasible.
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MPEP § 1414.01 provides concise guidance regarding when a supplemental reissue oath or declaration is required and what it must contain. A supplemental oath/declaration is required in a reissue application where any "error" under 35 U.S.C. 251 has been corrected and the error was not identified in the original reissue oath/declaration. The supplemental reissue oath/declaration must state that every error which was corrected in the reissue application not covered by the prior oath(s)/declaration(s) submitted in the application arose without any deceptive intention on the part of the applicant. A supplemental reissue oath/declaration will not be effective for any errors which are corrected by a filing made after the execution of the supplemental reissue oath/declaration, unless it is clear from the record that the parties executing the document were aware of the nature of the correction when they executed the document. Further, a supplemental reissue oath/declaration with an early date of execution cannot be filed after a correction made later in time, to cover the correction made after the execution date. This is so, even if the supplemental reissue oath/declaration states that all errors up to the filing of the supplemental reissue oath/declaration oath or declaration arose without any deceptive intention on the part of the applicant. Form PTO/SB/51S, "Supplemental Declaration For Reissue Patent Application To Correct 'Errors' Statement (37 CFR 1.175)," may be used to prepare a supplemental reissue declaration. Form PTO/SB/51S serves to indicate that every error in the patent that was corrected in the reissue application, but was not covered by a prior reissue oath/declaration submitted in the reissue application, arose without any deceptive intention on the part of the applicant. In the event that the applicant for a reissue applicant is required to file a supplemental reissue oath/declaration that also includes a specific statement of the error being corrected by reissue in accordance with 37 CFR 1.175(c), as discussed in subsection I. below, applicant must also include in the supplemental declaration language equivalent to the "Every error ." language in the example of acceptable language set forth above. Therefore, if either form PTO/SB/51, "Reissue Application Declaration By The Inventor," or form PTO/SB/52, "Declaration By The Assignee" (see MPEP § 1414) is used for the purpose of filing such supplemental reissue oath/declaration, the form must be completed so that it is clear that the supplemental reissue oath/declaration addresses all errors corrected subsequent to the date upon which the last previously reissue oath/declaration (whether original or supplemental) was filed. For example, the form could be completed by specifying the date upon which the reissue application was originally filed, the reissue application number, and the date(s) of every amendment filed subsequent to the date upon which the last reissue oath/declaration (whether original or supplemental) was filed. Any manner of completing the form so that affiant/declarant unambiguously states that every error corrected subsequent to the filing of the last filed reissue oath/declaration (whether original or supplemental) arose without deceptive intent will be acceptable. It will not be acceptable for the new ("catch-up") oath/declaration to simply refer to the reissue application as filed, even though the new oath/declaration may be submitted after an amendment. I. WHEN AN ERROR MUST BE STATED IN THE SUPPLEMENTAL OATH/DECLARATION In the supplemental reissue oath/declaration, there is no need to state an error which is relied upon to support the reissue application if: (A) an error to support a reissue has been previously and properly stated in a reissue oath/declaration in the application; and (B) that error is still being corrected in the reissue application. If applicant chooses to state any further error at this point (even though such is not needed), the examiner should not review the statement of the further error. The supplemental reissue oath/declaration must state an error which is relied upon to support the reissue application only where one of the following is true: (A) the prior reissue oath/declaration failed to state an error; (B) the prior reissue oath/declaration attempted to state an error but did not do so properly; or (C) all errors under 35 U.S.C. 251 stated in the prior reissue oath(s)/declaration(s) are no longer being corrected in the reissue application. II. WHEN A SUPPLEMENTAL OATH/DECLARATION MUST BE SUBMITTED The supplemental oath/declaration in accordance with 37 CFR 1.175(b)(1) must be submitted before allowance. Where applicant seeks to correct an error after allowance of the reissue application, a supplemental reissue oath/declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant. The supplemental reissue oath/declaration submitted after allowance will be directed to the error applicant seeks to correct after allowance. This supplemental oath/declaration need not cover any earlier errors, because all earlier errors should have been covered by a reissue oath/declaration submitted before allowance. III. SUPPLEMENTAL OATH/DECLARATION IN BROADENING REISSUE A broadening reissue application must be applied for by all of the inventors (patentees), that is, the original reissue oath/declaration must be signed by all of the inventors. See MPEP § 1414. If a supplemental oath/declaration in a broadening reissue application is subsequently needed in the application in order to fulfill the requirements of 37 CFR 1.175, the supplemental reissue oath/declaration must be signed by all of the inventors. In re Hayes, 53 USPQ2d 1222, 1224 (Comm'r Pat. 1999) ("37 CFR 1.175(b)(1), taken in conjunction with Section 1.172, requires a supplemental declaration be signed by all of the inventors. This is because all oaths or declarations necessary to fulfill the rule requirements in a reissue application are taken together collectively as a single oath or declaration. Thus, each oath and declaration must bear the appropriate signatures of all the inventors."). If a joint inventor refuses or cannot be found or reached to sign a supplemental oath/declaration, a supplemental oath/declaration listing all the inventors, and signed by all the available inventors may be filed provided it is accompanied by a petition under 37 CFR 1.183 along with the petition fee, requesting waiver of the signature requirement of the non-signing inventor.
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Ex parte reexamination appeals: For FY 09 ending September 30, 2009 the BPAI docketed 119 ex parte reexamination appeals; disposed of 96 and ended the fiscal year with 78 ex parte reexamination appeals in inventory. BPAI pendency was 5.9 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 27.7 months down .3 months from FY 08. The pendency of BPAI decided appeals from ex parte reexamination filing date was 58.2 months down 2.2 months from FY 08. Inter partes reexamination appeals: For FY 09 ending September 30, 2009 the BPAI docketed 15 inter partes reexamination appeals; disposed of 11 and ended the fiscal year with 10 inter partes reexamination appeals in inventory. BPAI pendency was 7 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 32.1 months up 4.5 months from FY 08. The pendency of BPAI decided appeals from inter partes reexamination filing date was 67.3 months up 16.4 months from FY 08.
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By Scott A. McKeown
| December 24, 2009
 

The Impact of the Pending Reexamination on i4i Limited Partnership v. Microsoft (E.D. Tx)


i4i filed suit against Microsoft back in March of 2007 in Texas for infringing U.S. Patent 5,787,449, relating to certain XML data structures.  Faced with an injunction at the conclusion of trial in August of 2009, Microsoft was granted an emergency stay pending the further review of the Federal Circuit.  As r> 


[1] See 2009 U.S. Fed. Cir. Briefs 1504

[2] See TGIP, Inc. v. AT&T Corp., 527 F.Supp.2d 561, 579 (E.D. Tex. 2007).
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