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Attacking 112 Support in Patent Reexamination

Posted On: Aug. 8, 2011   By: Scott A. McKeown
SNQ-112NTP Decision Explains Propriety of 112 Analysis in Patent Reexamination

MPEP §§ 2258 and 2658 explain that, during a reexamination proceeding, the USPTO will not analyze originally issued claim language with respect to 35 U.S.C. § 112, 1st paragraph. (It will, however, consider such issues where new claim language is introduced by amendment).

On the other hand, 35 U.S.C. § 112, 1st paragraph is considered where the patent subject to reexamination has claimed the benefit of the filing date of an earlier filed U.S. or foreign patent application.  MPEP § 2258 (I)(C). That is to say, if the parent patent does not support the claims of the child patent claims under reexamination, a substantial new question of patentability (SNQ) may be presented that is based on intervening patents or printed publications as the child patent claims under reexamination would not be entitled to the filing date of the parent. In such a case, the practical effect is that the original patent claims are analyzed under 35 U.S.C. § 112 relative to the priority application.

The challenge to the priority determination is in practice a  “back door” attack on the original patent claims’ compliance with 35 U.S.C. § 112, 1st paragraph, especially where the patent subject to reexamination is a “straight continuation” having an identical disclosure to its parent.

In last week’s NTP decisions, this strategy was blessed by the CAFC.

The court explained, the dispute between NTP and the PTO as:

NTP submits that once the patentee claims entitlement to an earlier priority date, the examiner must accept the applicant’s argument without challenge. For support, NTP relies on Patlex Corp. v. Quigg, 680 F. Supp. 33, 37 (D.D.C. 1988), where the district court stated that “the reexamination statute does not contemplate a ‘reexamination’ of the sufficiency of a disclosure. Rather, it is limited to reexamination of patentability based on prior art patents and publications.”

In holding against NTP, the court explained:

Patlex, however, does not support NTP’s argument for several reasons

.   .   .   .   .

[T]he district court precluded review of priority [in Patlex] because that issue—along with enablement—had been decided during the patent’s original prosecution. Patlex, 680 F. Supp. at 36. During the patent’s original prosecution, the examiner stated in the Reasons for Allowance that he had considered “[u]ndue breadth” and “sufficiency of the disclosure” and concluded that the written description of the great-grandparent met the enablement requirement. Id. (citations omitted)

.   .   .   .   .

When a patentee argues that its claims are entitled to the priority date of an earlier filed application, the examiner must undertake a priority analysis to determine if the patentee meets the requirements of § 120. There is no statutory limitation during a reexamination proceeding prohibiting the examiner from conducting a priority analysis. Otherwise, the examiner would be stripped of a critical legal tool needed in performing a proper reexamination. Nothing in §§ 301 et seq. prohibits an examiner from determining whether or not a priority date was properly claimed during the original examination of the application.

As most sophisticated patentees maintain continuation/divisional filings, it would seem that sophisticated third party requesters have been handed a clear avenue to challenge 112 support in patent reexamination. 

The Bio/Pharma community may find such SNQ strategies especially valuable.

2 Responses to “Attacking 112 Support in Patent Reexamination”

  1. Troll Busters LLC says:

    Scott,
    You’re preaching to the choir here. It is not “The Bio/Pharma community MAY FIND such SNQ strategies especially valuable.” Challenging priority dates and using intervening prior art is standard operating procedure when file histories show the flimsiest of allegedly enabling support in an earlier filed priority application.

    However, I’ve found that the CRU often will not grant SNQ’s for such an approach. This is because if the examiner in the original prosecution didn’t bother to look at priority issues or never addressed the applicants contention of support in an earlier priority application, the CRU will not consider this issue to be “new.”

    While precedent is coming out, such as the NTP reexaminations as you’ve reported, the precedent is not yet followed in the bio/chemical CRU. In the reexamination I filed last week (more biotech) I didn’t rely of priority date challenge but just used a broad reasonable interpretation of the claim scope. The same will be for the reexamination I’m filing this week.

    But for the one I’ll likely file in about 2 weeks, I will have some challenge to entitlement to priority. But I will also have new prior art to the earliest claimed priority date.

  2. TB,

    The NTP decision should greatly enhance the position of Bio/Pharma challengers, unless of course the priority issue was squarely addressed in a previous Office proceeding.