Tepid Demand for New Proceeding
Supplemental Examination (SE) is a new mechanism of the AIA designed to effectively cure inequitable conduct via a new post grant proceeding of the USPTO. The new mechanism went into effect on September 16, 2012 along with the other major post grant provisions.
As reported by Patently-O last week, only a handfulof SE filings have been submitted to date, far fewer than expected by some.
In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may render the patent invalid under an inequitable conduct theory. Upon submission of Substantial New Questions of Patentability (SNQs) detailing such potential defects, the Office will reconsider the information; that is to say the Office will perform a “supplemental examination.” Once such issues are considered and dispatched by an SE certificate, the subject patent would be free of inequitable conduct charges based on the issues considered in the SE. On the other hand, should the materials presented raise an SNQ, a form of patent reexamination is conducted (differing from typical practices in that it is not be limited to patents and printed publications).
Sounds like a great idea….and it was, prior to Therasense.
Read the rest of this entry »
Enactment of America Invents Act to Change Inter Partes Patent Reexamination Practice Immediately
The USPTO is currently hard at work preparing to implement and adapt agency practices to comport with the various provisions of the Leahy-Smith America Invents Act. As many features of the legislation will require a significant USPTO rule making effort, most of the provisions of the Act will not become effective until the 1 year anniversary of enactment. In this regard, the USPTO has reportedly penciled in September 20th as the target date for the expected enactment of the Leahy-Smith America Invents Act.
While most provisions of the Act will not take effect until a year after enactment, there are some very important changes to patent reexamination practice that will become effective immediately…..likely, in a few weeks time. Read the rest of this entry »
NTP 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. Read the rest of this entry »
SNQ Review Options Vary Significantly Between Ex Parte & Inter Partes Patent Reexamination
As discussed back in March relative to inter partes reexamination, the proper mechanism for seeking review of a denied Substantial New Question Of Patentability (SNQ) may depend on the status of the claims of the proceeding. For example, where inter partes reexamination is denied as to certain claims of a request, the appeal of such SNQ denial is improper. Yet, if all claims are actively reexamined, denied SNQs may be appealed to the BPAI. Patent Owners may petition the finding of an SNQ in very limited circumstances. (i.e., an ultra vires Order)
In ex parte patent reexamination, Patent Owners are now expected to appeal the finding of an SNQ based upon the June 25, 2010 Federal Regsiter Notice. Denied SNQs are only petitionable by third parties if reexamination is denied as to all requested claims.
Keeping the various options straight in your head can be a challenge. Below is a graphic that lays out the options for easy reference. Read the rest of this entry »
Petition or Appeal?–Pursuit of SNQ Denial at the USPTO
When pursuing inter partes patent reexamination, denial of a Substantial New Question of Patentability (SNQ) by the USPTO can be especially troubling to third party requesters. This is because a third party is estopped from asserting in litigation 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.” 35 U.S.C. § 315(c).
Denied SNQs raise the fear of potential district court estoppel relative to the prior art underlying the denied SNQ. For this reason, third parties will almost always dispute such denials internal to the USPTO–even where the claims of the patent remain rejected based upon other SNQs of the same request.
But, what is the appropriate vehicle for such a dispute, petition or appeal? The answer to this question will depend upon whether or not the denied SNQ pertains to a claim that is being actively reexamined on other grounds. Read the rest of this entry »
Deja Vu All Over Again in Patent Reexamination?
A prejudice common to Patent Owners is that patent reexamination serves to re-hash previously distinguished prior art for harassment purposes. While this is certainly not the case, the difference between a previously considered issue and a “Substantial New Question of Patentability” (SNQ) need not be very pronounced.
Since In re Swanson, the standard for establishing a (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-considered, if applied to the claims in a slightly different manner than that of the original prosecution.
However, that is not to say that every proposed SNQ is…well, an SNQ.
In such instances, when is the best time to object, and what is the proper procedural mechanism, petition or appeal? A recent decision of the BPAI has helped clarify these issues for ex parte patent reexamination. Read the rest of this entry »
Expanded BPAI Panel Shoots Down Repackaged SNQ
Since In re Swanson, the standard for establishing a Substantial New Question of Patentability (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-used, if applied to the claims in a slightly different manner than that of the original prosecution. Understandably, since Swanson, arguing that a rejection adopted by the Office in patent reexamination does not in fact present the previously considered art in a new light has been an uphill battle.
Yesterday, the USPTO found a rare SNQ it didn’t like….and pigs were seen flying down Dulany Street. Read the rest of this entry »
What Exactly is a Substantial New Question of Patentability Anyway?
As noted in Part I of this two part series, the purpose of a request for patent reexamination is quite simple, to present SNQs relative to some or all of the claims of an issued patent. Certainly there are numerous grounds to challenge a patent in a Federal District Court. However, one must realize that an SNQ is a particular subset of the universe of available grounds applied at the USPTO. The appropriate subset is explicitly identified by the reexamination statutes. Simply stated, proper SNQs must be based on patents and/or printed publications only. So, a proper SNQ cannot embrace arguments relating to public use/on sale bar, inequitable conduct, 35 U.S.C §112, or statutory subject matter, for example.
For “a substantial new question of patentability” to be present, it is only necessary that: (A) the prior art patents and/or printed publications raise a substantial new question of patentability regarding at least one claim, i.e., the teaching of the (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in a previous examination or pending reexamination of the patent or in a final holding of invalidity by the Federal Courts in a decision on the merits involving the claim. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for “a substantial new question of patentability” to be present as to the claim. Thus, “a substantial new question of patentability” as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or rendered obvious in view of, the prior art patents or printed publications. MPEP 2240/2640
In our last discussion, in addition to the above distinctions, we identified common misconceptions and practitioner errors in preparing reexamination requests. Yet, assuming you have omitted such materials, and have a proper basis for your SNQ, what are some best practices in presenting SNQs to the Office? Read the rest of this entry »
It is well established that patent reexamination is limited in scope, by statutory definition, to unpatentability issues presented by patents and printed publications. In other words, invalidity and/or unenforceability issues relating to inequitable conduct, public use or sale, subject matter eligibility, enablement and best mode are generally outside the scope of patent reexamination (See 37 C.F.R. §§1.552 & 1.906). Yet, a little known exception to these bright line rules exists with respect to previously submitted declaration evidence; an exception that has recently been narrowed even further.
MPEP 2258.01, in its current form, describes the right of a third party to attack the sufficiency of original prosecution declaration evidence as a basis for a reexamination request Read the rest of this entry »
(Clarification: This post analyzes patent reexaminations of a subject patent that claims the benefit of an earlier filed CIP and/or provisional application for priority purposes. In such circumstances, intervening art presenting a Substantial New Question of patentability (SNQ) may be applied calling into question these priorty dates. In such unique circumstances, enablement and written description issues pertaining to the originally issued patent claims will be considered by the USPTO for the purpose of detemining whether or not the priority claim is properly supported. Of course, such an analysis of original patent claims is not performed outside of these limited circumstances).
According the MPEP §§ 2258 and 2658, the USPTO during a reexamination proceeding will not consider 35 U.S.C. § 112, 1st paragraph issues with respect to the reexamination of original patent claims. It will, however, consider such issues where new or amended claims are presented or where any part of the disclosure is amended.
Nevertheless, where the patent subject to reexamination has claimed the benefit of the filing date of an earlier filed U.S. or foreign patent application, reexamination proceedings may be based on intervening patents or printed publications where the patent claims under reexamination may be entitled only to the actual filing date of the patent.
But can this strategy be used as a “back door” attack on the original patent claims’ Read the rest of this entry »