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.

The biggest, immediate change is the new standard for initiating an inter partes patent reexamination (soon to be Inter Partes review). Today the standard for initiating any patent reexamination, ex parte or inter partes, is the familiar Substantial New Question of Patentability (SNQ).

Currently, for an SNQ to be found, it is only necessary that: a teaching of (prior art) patents and printed publications is such that a reasonable examiner would consider the teaching to be important in deciding whether or not at least one claim of the patent 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. It is not necessary that a “prima facie” case of unpatentability exist as to the claim in order for an SNQ to be present as to a claim. Thus, an SNQ 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

The new inter partes reexamination standard will be stricter, and is codified as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. Not only will this new standard will be applied to the new Inter Partes Review proceedings (available 1 year from enactment), but in the interim, to all inter partes patent reexamination filings. (See  6(c)(3)(C) of H.R. 1249; current Section 312 would apply between the date of enactment and the 1 year anniversary, at which time new Section 314 would go into effect with the same standard for Inter Partes Review.)

The new standard was designed to reign in the gaudy grant rates of inter partes patent reexamination (95%).

What does this mean for practitioners?

Unlike ex parte patent reexamination, an Office Action typically accompanies an Order of inter partes patent reexamination.  Thus, one could argue that there is a de facto, prima facie standard already applied by the USPTO to initiate inter partes patent reexamination. Still, it would seem prudent for practitioners planning on filing a request for inter partes patent reexamination in the next few weeks to be mindful of the looming change in standards.

Interestingly, the reasonable likelihood of prevailing standard will not consider rebuttal arguments from the Patent Owner, at least not for the next 12 months. Thus, the change may not yield a significant change in grant rates over the current de facto, prima facie standard. Still, filings after enactment of the Leahy-Smith America Invents Act will need to follow the new guidelines.

On the other hand, Inter Partes Review will allow for a preliminary response of the Patentee prior to deciding the Order.

As such, it is expected that there will be a small surge in inter partes reexamination filings immediately prior to the enactment of patent reform to avoid the new, heightened standard, and then another surge prior to the 1 year anniversary of enactment to avoid the new patentee preliminary response period.

Finally, with respect to ex parte reexaminations, the SNQ standard is maintained. However, enactment of patent reform will immediately preclude appeal by Patentees to the District Court in ex parte patent reexaminations. (to the extent that right currently exists, previous post here).

The times they are a-changin.

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.

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.

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.

As explained by an expanded panel of the Board of Patent Appeals & Interferences (BPAI) yesterday in Belkin International et al., v. Optimumpath LLC, the denial of an SNQ in inter partes patent reexamination is  petitionable, not appealable. In Belkin U.S. Patent 7,035,281 was reexamined (95/001,089). The request was granted as to claims 1-3 and 8-10, but denied as to claims 4-7 and 11-31.

The denial of the SNQs applied to claims 4-7 and 11-31 was petitioned to the Director of the Central Reexamination Unit. Upon reconsideration, the Director refused to reverse the examiner. 

During prosecution, the rejection of claims 1-3 and 8-10 was later withdrawn by the examiner. Thereafter, the third party appealed the withdrawn rejection and the denial of the SNQs. 

On appeal, the BPAI affirmed the examiner’s decision to withdraw the rejection and confirm the patentability of claims 1-3 and 8-10. As to the appeal of the denied SNQs, the BPAI explained that such issues may not be appealed to the Board.

 . . . 35 U.S.C. § 312 states that the Director makes such determinations (of whether a substantial new question of patentability exists) and that the determination “by the Director . . . shall be final and non-appealable.” Only when the Director makes the determination that a substantial new question of patentabilityaffecting a claim of a patent is raised (i.e., that a substantial new question of patentability exists for a particular claim) shall an inter partes reexamination of the claim(s) in question be performed for resolution of the question (35 U.S.C. § 313). Therefore, on the other hand, when the Director makes a determination that a substantial new question of patentability affecting a particular claim is not raised, the Director does not order inter partes reexamination of the patent with respect to those claims. Under those circumstances, no reexamination is performed with respect to those proposed substantial new questions of patentability. Also, as pointed out above, the Director’s determination that no substantial new question of patentability was established for any particular claim(s) is final and non-appealable (35 U.S.C. § 312(c)).

Since, under 35 U.S.C. § 312 and 35 U.S.C. § 313, reexamination of the patent claims in question cannot proceed when the Director makes a determination that a substantial new question of patentability has not been raised for those claims and that the Director’s determination is non-appealable, no final decision, whether favorable or unfavorable, can be rendered pertaining to those claims. Under 35 U.S.C. § 315(b), a third-party requester may appeal with respect to any “final decision favorable to the patentability” of disputed claims. However, as described above, if the Director makes the non-appealable determination that no substantial new question of patentability has been raised, then reexamination is not performed for those claims in question with respect to the corresponding prior art references. There cannot have been a final decision (either favorable or unfavorable) on the patentability of the claims in question under 35 U.S.C. § 315(b), the claims not having been reexamined in the first place for lack of a substantial new question of patentability. (emphasis added)

The decision continues on to explain that the denial of SNQs is propoerly pursued by petition to the Director (which Belkin filed to no avail; 37 C.F.R. § 1.927). Note that had an SNQ been found but the corresponding rejections not adopted, appeal of non-adopted rejections would have been appropriate.

Of course, a patent owner’s seeking to reverse an accepted SNQ in ex parte patent reexamination may pursue the matter to the BPAI.

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.

Last June, I explained the case of Ex parte Yasukochi et al, which pertained to an owner initiated ex parte patent reexamination. At issue in Yasukochi is U.S. Patent 7,034,083 (”‘083 Patent”) of Hisamitsu Pharmaceutical.  

After the ex parte patent reexamination was initiated by Hisamitsu on certain prior art, the examiner introduced a rejection based upon a reference (Tsubota) previously applied in the original prosecution. The Patentee argued that this reference was being applied in the exact same manner as the original prosecution, and, as such, could not constitute an SNQ. 

On appeal, the BPAI refused to consider the issue, taking the position that the propriety of an SNQ is a question of procedure to be addressed by petition. Under the BPAI’s reasoning, the patent owner should have filed a petition under 37 CFR § 1.181 to the Director of the CRU when the examiner initially raised the new rejection.  Of course, such a petition was untimely at the time of the appeal. (since more than two months have elapsed since the rejection was made).

The decision seemed to be at odds with In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996) as well as  In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), which both considered the question of an appropriate SNQ in patent reexamination at the Board level (and beyond).

A week thereafter, the USPTO determined that issues relating to an SNQ determination, while still considered a procedural question, are to be delegated the BPAI for a final determination. In the June 25, 2010 Federal Register Notice, the Office has clarified that assuming an SNQ is contested prior to appeal, either by petition or Patentee response, that the BPAI will now finally decide the issue. Likewise, for reexaminations pending prior to 6/25/10, if the issue was not raised prior to appeal, the Patentee may still raise the issue with the BPAI.

So, in essence, Hisamitsu was afforded a chance to pursue the issue before the BPAI on rehearing.

On further consideration, the BPAI found that the change in procedure was not applicable to rejections applied during patent reexamination. The Board reasoned that the proper avenue for such a review was still by way of petition, stating:

We hold that the Notice does not delegate authority to the Board to decide whether a particular rejection made during the course of prosecution following a properly initiated reexamination is outside the scope permitted in an ex parte reexamination. The notice addresses those situations where a patent owner challenges an examiner’s threshold determinationthat a substantial new question has been presented. The Notice delegates the authority “to review issues related to the examiner’s determination that a reference raises a SNQ” to the Chief APJ. Notice, 75 Fed. Reg. 36,357. The examiner’s determination is not challenged in this appeal. Appellant requested that its patent be reexamined. Request for Ex parte Reexamination, filed March 22, 2007, pp. 1-6. The examiner held that a substantial new question had been raised by that request. Order Granting Request for Ex Parte Reexamination dated April 11, 2007, pp. 3-5. The examiner’s determination that the cited references raise a SNQ is unchallenged. (emphasis added)

The Board seemed to emphasize throughout the rehearing opinion (here) that the Patentee had presented the initial SNQs necessary to initiate the reexamination. As to the Tsubota rejection, the examiner made clear in the rejection that the reference was previously considered. The examiner explained that previously submitted declaration evidence was ineffective against the reference as failing to account for certain claim language, hence the SNQ. Thus, even had Hisamitsu petitioned, the PTO seemed to have a legitimate ground for the re-presentation of the Tsubota reference. 

Interestingly, it appears the examiner searched for prior art during patent reexamination. Several references used in rejecting the claims were neither submitted by the patentee or of record in the earlier application prosecution; this is quite unusual.

All is not lost for Hisamitsu, during the patent reexamination a broadening patent reissue was filed that remains suspended. Absent appeal to the CAFC, the reissue proceeding can now proceed. Perhaps Hisiamitsu will have more luck in this post grant proceeding. (12/108,934)

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.

U.S. Patent 6,780,079 is the subject of litigation styled MuzzyProducts Corporation v. Primos Inc., U.S. District Court of Georgia 4:05cv182. This case was stayed in 2007 pending the outcome of the reexamination, 90/008,081. The ‘079 Patent relates to a devices used in hunting for attracting game (game calling).

Original Prosecution

During the original examination of the ‘868 application which eventually issued as the ‘079 patent, the claims were rejected under 35 U.S.C. § 103(a) as obvious over prior art Patent No. 5,607,091 “Musacchia”. The Examiner stated that while Musacchia does not disclose a hunting device for producing sounds that has a unitary construction, “unitary construction of the hunting device would have been obvious to one of ordinary skill in the art, since this would aid in the portability and usage of the device.”

In response, the inventor, Mr. John Musacchia Jr., (prior art invented by his father) filed a Declaration seeking to establish non-obviousness through long-felt need.

After extensive prosecution, the original Examiner maintained the rejection of the claims over Musacchia stating that “Musacchia discloses the claimed invention except for the game call device constructed as one piece” and that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to form the game call device as one piece, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).”

After further prosecution, the Applicant appealed to the Board. The original Board panel reversed the original Examiner’s rejection stating that there is no per se rule that “forming several pieces integrally as a one-piece structure would have been obvious . . . [,]” and “in this case, one must determine if it would have been obvious to one of ordinary skill in the art at the time the invention was made to make Musacchia’s separate call and platform as a one-piece structure.” Subsequently, the application was then allowed by the examiner.

Request for Reexamination

In the request for reexamination, the Requester argued that the Declaration filed during the prosecution of the ‘079 patent was only considered as to whether it demonstrated long-felt need, and not considered by either the original Examiner or the original Board panel as including admissions.

The USPTO adopted this reasoning explaining the admissions to be statements made by the Patent Owner in his declaration and remarks that identify the long-unfelt need. Specifically, these remarks explain that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.

In this regard, the Office stated that, when considered as admissions, the statements of the Declaration

provide evidence of obviousness, which was specifically pointed out as missing in the prior examination, and therefore, cast Musacchia ‘091 in a new light. The teachings of Musacchia ‘091 considered in conjunction with the admissions are a new question of patentability not previously considered. As such, the teachings of Musacchia ‘091, in conjunction with the admissions in the record, raise a substantial new question of patentability.

Board Decision

The Board remanded (decision here) the reexamination back to the Central Reexamination Unit for termination explaining that:

While the CRU Examiner may be correct in asserting that the original Examiner and the previous Board panel considered the statements in the Declaration only in the context of long-felt need, these statements do not alter the purpose for which the CRU Examiner now relies on the Musacchia reference for finding the existence of a SNQ. In particular, the CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a “new light,” the CRU Examiner’s position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.

PPG Comment : The Requester gets an “A” for effort.

Essentially, this reexamination was pursued to leverage the perceived change in obviousness standards caused KSR International Co. v. Teleflex Inc (’079 Patent issued pre-KSR). Ths request was submitted under the guise of declaration admissions in the hopes that applying KSR to the same art would yield different results. Of course, MPEP 2216 makes it very clear that KSR does not impact the SNQ analysis.

**Fortunately for the patent owner, as of June 25, 2010, the Board may now properly review the examiner’s determination that a SNQ exists. Prior to June 25, 2010 the Patent Owner’s argument would have been rejected by the BPAI as a petitionable issue.

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?

 1.     Realize that you cannot give the USPTO “eggs” and expect them to make you “an omelet.”

An effective reexamination request is not submitted as a “fishing expedition.”  In accordance with 37 C.F.R. § 1.515, The Office has 90 days to make a determination by statute to grant or deny a request, so, there is little time, or obligation on the part of the Office to figure out your SNQ absent appropriate written guidance.  

In this regard, 37 C.F.R. § 1.510 (b) (2) requires that an identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art be provided for every claim for which reexamination is requested.  In short, sending the Office art without explanation, or insufficient explanation will lead to a denial or notice of an incomplete request. 

Although not required, detailed claim charts will help focus your presentation and can be submitted as an Appendix.  Ideally, however, your proposed rejections are best presented in a format and style which mimics an Office Action.  Therefore, each reference should be separately explained relative to the applicable claim, and if the proposed rejection is under 35 U.S.C. § 103, and articulated rationale for the combination of the references should be provided. 

Think of it this way, if your request for reexamination had been sent to you as an Office Action in an unrelated case, would it appear competent, or would you start “pulling your hair out” at the unsupported positions and immediately call the Examiner’s supervisor?  If viewed with this perspective, you will have few problems.

 2.      Even if satisfying (1) above, a SNQ may still be improper (READ MPEP 2216/2616).

A proper SNQ is not only adequately explained and of a proper basis, but it also must be new (i.e., non-cumulative with respect to previously considered art).  The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination.

One helpful method for accomplishing this goal is to summarize the prosecution history and identify the earlier examiner’s statement of reasons for allowance.  Should your proposed SNQ arguably refute the reasons for allowance, you are well on your way to demonstrating a lack of cumulativeness.

With respect to previously considered art, simply citing to In re Swanson for the proposition that old art can be considered is inadequate.  If you are applying “old art,” you should make every effort to compare and contrast the earlier considered explanation of the pertinency of the references with your proposed SNQ.  Likewise, if you are relying on a different aspect of the old reference than considered by the Office, you should make this distinction absolutely clear.[1]

 3.     Realize that if you are requesting reexamination of a patent already subject to reexamination, you must compare your                    proposed SNQs to that used to initiate the ongoing reexamination to establish non-cumulativeness. 

In case a patent reexamination is ongoing, a second reexamination request will not be granted for the same SNQ.  (although that was once the case).   As such, be sure to discuss the newly proposed SNQs relative to those presented in the ongoing reexamination proceedings. MPEP 2240/2640

While the above practice tips are far from exhaustive, following these simple guidelines, as well as the guidance of Part I of this two part series will greatly enhance the effectiveness of your reexamination requests.

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, noting that:

However, what does the Office mean by “undermine the sufficiency of the declaration”?

For an example of the Office’s interpretation of this MPEP revision, two recent ex parte reexamination orders are illustrative.  In Reexamination Control No. 90/010,683 (the ’683 reexamination), a Substantial New Question of Patentability (SNQ) was found based upon the Third Party Requester’s undermining of a 1.131 declaration submitted in the original prosecution.  Yet, in Reexamination Control No. 90/010,681 (the ’681 reexamination), an SNQ was not found with respect to an attempted undermining of the 1.131 declaration filed in the prosecution of the original patent.

In the ’683 reexamination, the Requester noted that the 1.131 declaration of the original prosecution did not account for a section 102(e) filing date of a previously considered reference in the prosecution of the original patent based on the reference’s claimed priority to an earlier filed provisional application.  In analyzing the issue, the Office noted at page 5 of the October 30, 2009 order that:

The declaration under 1.131 sought to swear behind the [reference].  The declaration stated that conception occurred prior to Sept 13, 1996.  Subsequently, the Examiner accepted the declaration as overcoming the [reference], withdrew the rejections, and issued the claims in a notice of allowance mailed January 25, 1999.

It appears that the declaration we insufficient to overcome the [reference] because conception was asserted prior to [the reference] filing data, but not before [the reference’s] priority date.  [The reference] claims priority to provisional application 60/006,448 filed November 13, 1995.  Thus the declaration failed to claim conception prior to the priority date of the [reference].

The sufficiency of the declaration in overcoming the [reference] would be important to a reasonable examiner in deciding patentability because the claims were allowed in light of the Examiner’s removal of the [reference] as prior art.

Contrast this determination with that of the ’681 reexamination, which noted at page 8 of the November 14, 2009 order that:

Instead of presenting the patents in a new light, Requester has asserted that reexamination is proper because the references were mistakenly withdrawn as prior art in view of the Rule 131 declaration submitted on February 12, 2001.   Requester alleges that the Rule 131 declaration was insufficient for failure to establish possession of the invention prior to the effective filing dates of the references and failure to establish diligence from prior to the effective filing dates to the filing of the application.  These allegations do not present a substantial new question.  A substantial new question may be raised through the showing of an “inaccuracy/mistake of fact in the declaration.” MPEP § 2258.01.  In the present case, no such showing has been made.  The sufficiency of the Rule 131 declaration was previously considered by the Office and thus a substantial new question is not raised.

Previously, in an earlier version, MPEP § 2258.01 stated that the sufficiency of a declaration may be undermined in a request as the basis for an SNQ.   If the ’681 reexamination request had been filed prior to this change, it appears as though the Office would have had little choice but to have ordered reexamination of the ’681 patent. 

As can be seen from the cases above, MPEP § 2258.01 has been revised to limit when an SNQ can be raised when a third party requester challenges the sufficiency of a declaration filed during the prosecution of a patent.  In future revisions of the MPEP, perhaps the parenthetical aspect of this language may be eliminated as potentially misleading practitioners into believing that reexamination will be ordered as a matter of right when a third party challenges the sufficiency of a declaration filed during the prosecution of the original patent.

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’ compliance with 35 U.S.C. § 112, 1st paragraph where the patent for which reexamination is sought is a continuation or divisional patent?

Do the examiners in the Central Reexamination Unit have to make a determination of original continuation or divisional patent claims’ compliance with 35 U.S.C. § 112, 1st paragraph when assessing whether the parent application or patent complies with 35 U.S.C. § 112, 1st paragraph?

Suppose that the original patent’s prosecution history includes no intervening prior art. In such circumstance, the original examiner presumably made no affirmative determination as to the right of priority. Further assume that the patents or printed publications included in the reexamination request are non-cumulative with respect to the prior art of record in the original patent’s file history and raise a substantial new question of patentability against the original patent claims, if these claims are not entitled to the filing date of the earlier filed applications.

In accordance with the MPEP §2258 (I)(C), reexamination can be ordered under these facts, even though the effect will be to assess whether the original patent claims have adequate written description support and are full enabled.

The patent owner will likely presents arguments and evidence during reexamination that the parent applications provide adequate support for the original patent claims rather than amending or cancelling claims, or that the right to priority was determined in the original prosecution. (For an example of this issue where priority was assessed in the original prosecution see Reexamination Control No. 95/000,312 (discussing the Aotake reference)).

Advisedly, a third party requester should consider using inter partes reexamination rather than ex parte reexamination in order to fully participate in the proceedings. It is highly likely that the third party will need to rely on expert declaration evidence to rebut the patent owner’s showings as to why the original patent claims are entitled to an earlier filing date to antedate the intervening prior patents or printed publications.