In the case of concurrent post grant proceedings at the USPTO, 37 CFR §§ 1.565(d) and 1.991 provide for a discretionary merger of reissue application examination with either ex parte or inter partes reexamination proceedings.  These rules provide that such merged proceedings will be conducted using the rules set forth for reissue application examination that are normally less restrictive than those applicable to reexamination.  As can be appreciated, such a merger would provide the patentee greater flexibility after final rejection and, in most situations, RCE practice and extensions of time as a matter of right; important procedural advantages.  But note that the USPTO may undo the merged proceedings if an RCE is filed in the reissue application (See MPEP §1452) and modify the response period/extension of time practice for reissue applications involved in a concurrent litigation (See MPEP §1442.03).

Moreover, although amendments to claims in reexamination can only be narrowing amendments, if the patent for which reissue is two years or less old, a broadened reissue application can be filed.  In this way, use of patent reissue together with merged reexamination proceedings may provide useful procedural and tactical advantages to a patent owner.

However, whether to merge such proceedings or to suspend action on one of them is a decision that is made by the USPTO sua sponte based on the relative timing of the filings of the reissue application and the reexamination requests, the stage of the respective proceedings, whether a continuation or RCE of the reissue application has been filed, whether the reexamination proceeding is ex parte or inter partes, and whether the patent owner will consent to a stay of the examination of the reissue application pending the outcome of the reexamination proceeding.  Normally, the USPTO favors merger to prevent inconsistency in the handling of the proceedings, if conducted separately.

A merger order issued by the USPTO in merged proceedings sets forth the conditions for how the merged proceedings will be conducted.  If the merged proceedings involve inter partes reexamination, the third party’s participation will be limited to the issues applicable to reexamination.  This permits the patent owner to have other issues such as those applicable to broadened reissue claims dealt with on an ex parte basis.  Moreover, the merged proceedings may be assigned to an examiner in the Technology Center handling the reissue application rather than to examiners in the Central Reexamination Unit (CRU).  This could be advantageous to the patent owner, especially when considering the fate of the patents subjected to inter partes reexamination by the CRU where for completed inter partes reexamination proceedings only 6% have survived with all claims confirmed.  Currently, the Office appears to disfavor merger of inter partes reexamination proceedings and may instead choose to stay the reissue application proceeding in favor of such reexamination proceedings.

However, there are also significant disadvantages to the rules of reissue examination practice.  Patent reissue permits the correction of defects relating to subject matter eligibility, utility, written description, enablement, and clarity of the original claims.  During reexamination, these same defects may only be considered in claims which are amended or added by the reexamination, and not in the originally patented claims. See MPEP §2258.  Thus, a patentee should seriously consider filing a reissue application where the issued patent, for example,  issued prior to In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008), as a significant risk of invalidation may exist for certain method claims if litigated.

Additionally, in reexamination, it is Office practice to examine only those claims specifically identified in the reexamination request.  On the other hand, patent reissue will typically include a comprehensive examination of all claims. 37 C.F.R. §1.176 (See MPEP §1440)

Merger provides interesting opportunities for patent owners and third party requesters alike, (via serial patent reexamination requests).  However, the question of whether or not concurrent USPTO proceedings should be initiated in any given case, requires a close analysis of the facts.

Further information regarding the advantages and disadvantages of merger will be presented at the Patent Law Institute Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010.
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By Scott A. McKeown
| November 5, 2009
The inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) is a familiar one to many patent practitioners.  This provision is often cited as the primary justification for disfavoring inter partes reexamination over other post grant patent strategies. Yet, as ITC actions become increasingly utilized for their expediency in reaching a conclusion, further consideration should be given to the applicability of this estoppel to Federally created Agencies.

Specifically, § 315(c) provides:

“[a] third party requester…is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.”

Importantly, this estoppel provision is explicitly limited to “civil action[s] arising in whole or in part under section 1338 of title 28.”  Section 1338 of title 28, in turn, merely provides that “[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.”  In other words, 28 U.S.C. § 1338 gives original jurisdiction over patent cases to the Article III district courts, but says nothing about Article I courts, such as the ITC.  Accordingly, the inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) only applies to civil actions in the district courts, and does not apply to ITC investigations.

Since the inter partes reexamination estoppel provision does not apply to ITC investigations, respondents are free to raise the same invalidity arguments in both fora -- in effect, to get two bites at the apple.

This means that respondents in Section 337 investigations at the ITC should consider the potential benefits to be gained by initiating a concurrent inter partes reexamination proceeding at the USPTO.  While the odds of obtaining a stay of ITC proceedings in favor of a concurrently filed reexamination proceeding is for the most part, unlikely, the ability of the reexamination requester to actively participate in the reexamination may lead to the creation of intervening rights, prosecution history estoppel, and non-infringement positions relative to the patent at issue.  In this way, the requesting party may offer to “back out” of participation in the reexamination as part of an overall settlement strategy; thereby leading the Patentee in a much favorable position to recover the patent.
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By Scott A. McKeown
| November 4, 2009
Welcome to PatentsPostGrant.com! Post grant patent proceedings at the USPTO, such as ex parte and inter partes Reexamination are becoming increasingly favored tools to combat patents of questionable validity.  Likewise, some of these same Reexamination tools can also serve as mechanisms to defend and/or focus the scope of pioneering patent portfolios. The emerging popularity of Reexamination stems from two factors, the first is the recent creation of the Central Reexamination Unit (CRU) within the USPTO.  While the use of reexamination by third party requesters was quite modest in the 1990s and the beginning of the 2000s, there has been a dramatic increase in the number of requests since that time.  The emerging popularity of reexamination stems in part from the recent creation of a Central Reexamination Unit (CRU) within the United States Patent and Trademark Office (USPTO).  CRU Examiners, all of whom are hand-picked experienced primary patent examiners who work in three person teams and handle only reexamination proceedings.  Thus, the quality of reexamined patents has increased based on the CRU team approach, and the speed of reexaminations has improved. The second factor is the increased willingness of some Federal District Courts to stay a patent litigation in the face of an initiated Reexamination.  As such, some third parties are filing more reexamination requests in an effort to avoid the high cost of patent litigation in the United States. Together with Patent Reissue, a post grant tool exclusive to Patent Owners for broadening claims or correcting latent defects in issued patents, the use of these multi-purpose proceedings continues to increase. Looking forward, recent legislation has been proposed to establish a post-grant opposition proceeding before Administrative Patent Judges of the new USPTO Patent Trials and Appeals Board. This proceeding is proposed to embrace validity issues not currently subject to reexamination review, and to provide limited discovery opportunities. Due to the wide support for this proceeding, it is anticipated that post-grant opposition will become law to replace and/or augment Reexamination options in the future. With a trained eye on this expanding landscape, PatentsPostGrant.com is dedicated to providing helpful insight and commentary to the complex array of existing and proposed post grant  options. Whether patent Reexamination, Reissue or proposed Opposition systems, this resource will provide informed commentary, observed trends, practice tips as well as news for the purpose of sharing our experienced views with our readers. This informational resource is being provided and maintained by the Reexamination/Reissue Practice Group of Oblon Spivak.  As counsel to some of the largest companies in the world, the Reexamination/Reissue Practice Group of Oblon, Spivak is the undisputed leader in post grant patent practice before the USPTO.
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