By Scott A. McKeown
| October 3, 2011
Inter Partes Review Estoppel Applies to Ex Parte Patent Reexamination
Last week, I explained the current estoppel provisions of inter partes patent reexamination and the new Inter Partes Review estoppel relative to parallel litigation proceedings. I pointed out that the Inter Partes Review (IPR) estoppel provisions are similar in some respects to the current inter partes patent reexamination (IPX) provisions, but differ in important aspects of timing and scope. As a result of these improvements, it is expected that the filing of an IPR will be especially effective to stay a district court litigation pending the outcome of the IPR. (Note: The ITC may take a dimmer view of these speedier proceedings in view of their mandate).
Another interesting consideration is how the new estoppel provisions will impact the USPTO. That is to say, the estoppel provisions of Inter Partes Review will not only have an impact on court proceedings, but also other USPTO proceedings, including ex parte patent reexamination.
The aspect of the new Inter Partes Review statute that applies to USPTO proceedings is as follows:
315 (e) Estoppel
(1) PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Interestingly, the estoppel outlined above applies not only to a subsequent request for IPR from the same requester (or privies) but to any "office proceeding." By definition a Post Grant Review (PGR) can only be conducted prior to an IPR. This is because an IPR can only be filed once the 9 month PGR window has ended, or after any ongoing PGR concludes. As such, the primary office proceeding that can be requested, or maintained in this regard is ex parte patent reexamination.
Yet, in many cases ex parte patent reexamination is requested anonymously. (MPEP 2213)
So, how then can the USPTO prevent a new anonymous request by a losing IPR requester, or vacate an ongoing anonymously filed proceeding of the same requester by operation of Inter Partes Review estoppel?
It is suggested that the USPTO require a statement of any IPR filer that the estoppel provisions do not apply to the Requester, somewhat akin to what is required now of IPX filers. Yet, in addition to this statement, the Requester will also need to identify any previous ex parte reexamination filings, including those that may have originally been filed anonymously. Indeed, it may be necessary for the Requester to make an affirmative statement with respect to any existing ex parte patent reexamination proceeding, or any time a new request is received by the Office.
The notice of proposed rule making for IPR requests is expected in December.