As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)
The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).
A short overview of each proposal is detailed next:
Ex Parte & Inter Partes Proposals
Standardization of Patent Reexamination Request Formats (Proposals 1-2)
Proposal 1 would require, as part of the presentation of the SNQ, an explanation of how the SNQ is different from issues previously considered by the Office. While an SNQ discussion should always explain how a technological teaching is “new,” the USPTO finds that this practice inconsistent. As such, Proposal 1 seems more of an attempt to codify a current best practice.
Proposal 2 also appears to be an attempt to codify a current best practice of identifying all limitations of a claim. Interestingly, the proposal states that this can be done via claim chart or narrative, but not both.
SNQ Management (Proposals 3-4)
Proposal 3 would allow examiners to more readily group proposed SNQs as cumulative with respect to others unless Requesters explain why seemingly cumulative SNQs are unique. If an examiner finds cumulative SNQs, one will be selected as representative of the group.
Proposal 4 outlines the manner by which representative rejections are grouped by an examiner, and how they are appealed together with all adopted rejections. The selection of a representative rejection is not petitionable, however, Inter Partes Requesters may comment on the selection of a particular rejection (more on that below)
Limiting Requester Declaration Evidence to Rebuttal (Proposal 5)
Proposal 5 would require most third party declaration evidence to be submitted together with the request. Later submissions would be limited to rebuttal of points raised by the examiner or patent owner. Any submission of such evidence after the request stage would require a statement as to how the evidence is limited to issues newly raised.
Limiting Patent Owner Amendments to First Action (Proposal 6)
Proposal 6 arguably reflects current practice. Namely, amendments must be submitted before a final rejection unless directed to a matter of form, claim cancellation or the like. This proposal alludes to the fact that Patentees refusing to waive the patent owner statement may surrender their right to amend altogether. (more on the change to the pilot program below)
Requiring Statement of Compliance with 35 U.S.C. § 305 (Proposal 7)
Proposal 7would require all amendments to be accompanied by a statement explaining how the change is directed to overcoming an SNQ. The concern here is that changes may be made to claims for reasons unrelated to patentability, such as claim construction. Of course, such changes are already improper based upon 35 U.S.C. § 305. This statement would be an additional safeguard for defendants seeking patent reexamination parallel to litigation claim construction proceedings. (i.e., inequitable conduct opportunity)
Clarify Petition Practice (Proposal 8)
Perhaps the most immediately helpful aspect of the various proposals is provided below. The chart below clearly explains when it is appropriate to oppose the most common patent reexamination petitions.
Examples of Petitions Filed in Reexamination Proceedings
|Review of refusal to grant ex parte or inter partes reexam (see MPEP 2248, 2648)||Yes—1.181||No.|
|Vacate as ultra vires an order granting ex parte or inter partes reexam (see MPEP 2246, 2646)||Yes—1.181||Yes.|
|Review of a finding of an SNQ in an order granting ex parte or inter partes reexam (see 75 FR 36357)||No (but see 75 FR 36357in ex parte reexam)||No.|
|Vacate filing date of ex parte or inter partes reexam based on failure to comply with 37 CFR 1.510 or 1.915||Yes—1.181||Yes.|
|Extension of time to respond to an Office action by Patent Owner in ex parte reexam||Yes—1.550(c)||No.|
|Extension of time to respond to an Office action by Patent Owner in inter partes reexam||Yes—1.956||No.|
|Extension of time to submit comments by Third Party Requester (see 35 USC 314(b)(2))||No||No.|
|Extension of time to file a notice of appeal or brief on appeal by Patent Owner in ex parte reexam (see 37 CFR 41.31, 41.37, 41.43)||Yes—1.550(c)||No.|
|Extension of time to file a notice of appeal or brief on appeal by any party in inter partes reexam (see 37 CFR 41.61, 41.66)||Yes—1.183||No.|
|Striking another party’s improper paper (or portion thereof) from the file||Yes—1.181||Yes.|
|Protection of proprietary information being submitted under seal||Yes—1.59(b)||Yes.|
|Waiver of page or word limit requirement||Yes—1.183||No.|
|Review of refusal to enter amendment||Yes—1.181||Yes.|
|Withdrawal of final Office action||Yes—1.181||Yes.|
|Revival of terminated proceeding based on Patent Owner’s “unavoidable” delay and acceptance of late paper||Yes—1.137(a)||No.|
|Revival of terminated proceeding based on Patent Owner’s “unintentional” delay and acceptance of late paper||Yes—1.137(b)||No.|
|For jurisdiction to be transferred to the Office of Patent Legal Administration||No||No.|
|Suspend inter partes reexam for “good cause” under 35 USC 314(c)||Yes—1.182||Yes.|
|Terminate inter partes reexam based on estoppel under 35 USC 317(b)||Yes—1.182||Yes.|
Ex Parte Proposals Only
Make Pilot Program for Waiver of Patent Owner Statement Permanent (Proposal 1)
Proposal 1 would permanently adopt the Program for Waiver in ex parte patent reexamination proceedings.
Allow for First Action Final for Patentees Refusing to Waive Statement (Proposal 2)
Proposal 2 recognizes that although the Waiver Program provides a great opportunity for the Office to reduce pendency, to date, Patentees are not cooperating. (see my most recent case study on this issue here). This rule would essentially punish those Patentees that do not agree to the waiver, by issuing a first action final. If the Patentee agrees to waiver, a first action would issue together with the grant, otherwise, a provisional first action is issued with the grant, and after the statement period, a final action is issued.
Inter Partes Proposals Only
Ability to Dispute Representative SNQ Finding (Proposal 1)
Proposal 1 would allow a Requester to present arguments directed to those rejections held in abeyance as cumulative. (to either the examiner or Board)
Consolidate ACP/RAN Practice to More Traditional Final Rejection (Proposal 2)
Proposal 2 would eliminate the ACP/RAN practice and replace it with a final office action. This proposal would require amendments to 37 C.F.R. §§ 1.949-1.953. (This change would shave considerable time off of pendency figures).
Eliminate Cross Appeal Practice (Proposal 3)
Proposal 3 would no longer allow third parties to appeal those rejections that are not adopted in cases where the claims stand rejected on other grounds. The PTO points out that this change would be consistent with appellate practice of the district courts.
In addition to these proposals, the USPTO seeks feedback on the following general propositions:
1. Should the USPTO proceed with any efforts to streamline the procedures governing ex parte and/or inter partes reexamination proceedings?
2. Should the USPTO place word limits on requests for ex parte and/or inter partes reexamination?
3. Should the USPTO revise its existing page or word limits in inter partes reexamination following the request?
4. Should the USPTO place any limitation or criteria on the addition of new claims by a Patent Owner in reexamination? If so, what kind of limitation or criteria?
5. Should the USPTO change its interpretation of ‘‘a substantial new question of patentability’’ to require something more than ‘‘a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable’’? See MPEP §§ 2242, 2642. If so, how should it be interpreted?
6. How much time should Patent Owners and Third Party Requesters ordinarily be given to submit a statement, response, or appeal where the time for filing the statement, response, or appeal is set by the USPTO rather than by statute?
7. Under what conditions should the USPTO grant a Patent Owner’s request for an extension of time under 37 CFR 1.550(c) or 1.956, both of which provide that extensions of time may only be granted for ‘‘sufficient cause and for a reasonable time specified’’?
8. Should the USPTO require that any information disclosure statement (IDS) filed by a Patent Owner in a reexamination comply with provisions analogous to 37 CFR 1.97 and 1.98, and further require that any IDS filed after a Notice of Intent to Issue a Reexamination Certificate (NIRC) or notice of appeal be accompanied by:
(1) an explanation of why the information submitted could not have been submitted earlier, and (2) an explanation of the relevance of the information with regard to the claimed invention?
9. Under what conditions should a reexamination proceeding be merged with another reexamination or reissue proceeding?
10. What relief can and should be given to a Third Party Requester that shows that it did not receive a Patent Owner’s statement or response within a certain number of days after the date listed on the Patent Owner’s certificate of service? How many days and what kind of showing should be required?
11. Should the USPTO encourage and/or require that all correspondence in reexamination proceedings be conducted electronically (e.g., e-filing parties’ documents, e-mailing notices of Office actions and certificates)?
12. Should reexamination proceedings remain with the Board in cases where the Board has entered a new ground of rejection on appeal and the Patent Owner seeks to introduce new evidence and amendments? In particular, is it more efficient for three administrative patent judges or a single examiner to decide issues involving new evidence and amendments?
13. What other changes can and should the USPTO make in order to streamline reexamination proceedings?
I will explore many of these issues in more detail in the weeks to come. Also, as I will be coordinating the ABA response to these proposals, I welcome any and all comments. (for those preferring private comment email@example.com)