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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

USPTO to Revise Ex Parte Patent Reexamination Procedures

Posted On: Jan. 9, 2012   By: Scott A. McKeown
Change - Blue ButtonEx Parte Patent Reexamination Practices Adjusted to Account for Estoppel

The new estoppel provisions of Inter Partes Review (IPR) and Post Grant Review (PGR) differ from the previous estoppel provisions of inter partes patent reexamination in that they not only prevent a subsequent request for IPR/PGR from the same requester (or privies) on issues that were raised or reasonably could have been raised in the first proceeding, but prevent the filing or maintenance of any other “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 (i.e., after IPR/PGR estoppel attaches) is ex parte patent reexamination (EXP).

As pointed out previously, in order to properly estop an ongoing EXP proceeding or filing, the Office must implement a system to track EXP filings with respect to the real party in interest. This tracking is complicated by the fact that many EXP proceedings are filed anonymously. Last Thursday, the USPTO issued their plan.In the Notice of Proposed Rulemaking for Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act (here), the Office proposes the following mechanisms to track potential EXP estoppel.

(6) A certification that the statutory estoppel provisions of both inter partes review (35 U.S.C. 315(e)(1)) and post grant review (35 U.S.C. 325(e)(1)) do not prohibit the ex parte reexamination.

(7) A statement identifying the real party(ies) in interest to the extent necessary to determine whether any inter partes review or post grant review filed subsequent to an ex parte reexamination bars a pending ex parte reexamination filed by the real party(ies) in interest or its privy from being maintained.

In essence, EXP filers must, once the proposed rules become effective, certify that IPR and PGR estoppel do not apply to their filing. Likewise, anonymous filers must disclose their identity to the agency, under seal. The Notice provides in more detail that:

An ex parte reexamination requester has the option to remain anonymous. In order to do so, the requester must: (1) Submit the statement identifying the real party(ies) in interest as a separate paper; (2) title the paper as a statement identifying the real party(ies) in interest; (3) request in the paper that the Office to retain the paper in confidence by sealing it; and (4) include, in a clear and conspicuous manner, an appropriate instructional label designating the statement as a non-public submission, e.g., NOT OPEN TO THE PUBLIC FOR OFFICE USE ONLY. The Office will then maintain the real party(ies) in interest statement as a sealed, non-public submission

The Notice also clarifies that statements submitted under Rule 1.501(a)(2) (Patent Owner Statements and associated information on claims cope) may only be used to interpret claims once reexamination has been ordered, they may not be used to form an SNQ.

2 Responses to “USPTO to Revise Ex Parte Patent Reexamination Procedures”

  1. Paul F. Morgan says:

    I’m curious where and how the PTO is going to keep this “secret” document a secret even if the PTO clerical staff handles such an unusual paper properly [a dubious assumption], especially with the accumulating evidence that so many government and other electronic document files are so easily “hacked” into. [I raised that question when the PTO went to electronic application files but never got an answer.]

  2. Paul,

    I think others will share your skepticism. Another option would be to require such a filing only after the Patent Owner requests verification (upon conclusion of an IPR or PGR). Filing such documents as a matter of course would seem unnecessary.