The estoppel consequences of inter partes reexamination are set forth in 35 U.S.C. §§ 315(c) and 317(b) as well as the uncodified provision of § 4607 of P.L. 106-113. This blog entry will focus on § 315(c). 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). A few basic considerations can help an accused infringer minimize, if not eliminate, the negative effects of estoppel and still reap the benefits of inter partes reexamination.
Read the rest of this entry »
Any requested reexamination filed while an earlier filed reexamination is pending must raise an SNQ different than that raised in the pending reexamination. Each request for reexamination must raise its own SNQ, as compared to the pending reexamination proceeding for the same patent. Previously, one could use the same SNQ as in the pending reexamination. A TPR was able to provide continued input during the reexamination proceeding by filing multiple ex parte reexamination requests and having them merged, thus resulting in an essentially inter partes reexamination, without the statutory estoppels. Patent owners or TPR, depending on who was losing in the pending reexamination proceedings, could delay the proceedings indefinitely.
Extensions of time in reexamination proceedings are difficult to get granted. They must include a statement of what action the patent owner has taken to provide a response as of the date the request for the extension of time. The Patent Owner must provide a factual accounting of reasonably diligent behavior by all those responsible for preparing a response to the Office action within the time period for filing a response. A statement of why, in spite of the actions taken so far, the requested additional time is needed.
If a second request for reexamination is filed after an action closing prosecution in an inter partes reexamination the proceedings will generally not be merged. Merger would run contrary to the statutory “special dispatch” requirement of 35 USC 314.
If prior art is cited to the USPTO after an action closing prosecution the patent owner must submit a 37 CFR 1.182 petition, including a factual accounting providing a sufficient explanation of why the information could not have been submitted earlier and an explanation of the relevance of the information submitted with respect to the claimed invention.
English
