As discussed last week, the USPTO is proposing a significant increase to the fee for ex parte patent reexamination (EXP). Likewise, the new supplemental examination (SE) fee, should prosecution be required, is on the order of $21K. (supplemental examination fee, plus corresponding reexamination fee)

The rules package for Post Grant Review (PGR) and Inter Partes Review were expected last week (if not before). However, these packages were delayed by OMB, which has identified them as significant rule making. It is expected that the rules for PGR and IPR will publish this week. The fees for these new proceedings will be estimated based on the same analysis applied to EXP and SE and are expected to be in the $40-50k range.

For a step-by-step explanation of the USPTO’s fee calculation process, and perhaps a preview of PGR and IPR fee determinations click here.

USPTO Fee Structure to Discourage Conduct?

It is expected that the rules to implement post-grant review (PGR), inter partes review (IPR) and transitional business methods post-grant review (TBMP) proceedings will be printed in the Federal Register this coming Tuesday. Included in the new rules will be the filing fees associated with these new proceedings. By statute these filing fees must be set to recover the average actual costs to the USPTO to conduct these proceedings.

As demonstrated in last week’s rule package for supplemental examination, the average aggregate cost can be significantly higher than present fee levels. The proposed rules issued last week set a fee of $ 5,180 to request supplemental examination and another $16,000 for the resulting ex parte reexamination should the supplemental examination request raise a substantial new question of patentability (SNQ). It is expected that Tuesday’s rule package for PGR, IPR and TBMP will set fee levels in excess of $ 40,000. But, such fee levels may have an unfortunate chilling effect on those interested in using these new post grant patent proceedings.

Interestingly, in February 2012, the USPTO will be publishing proposed rules for adjusting all of its fees under its new fee setting authority set forth in the America Invents Act (AIA). The new USPTO fee setting authority will permit the USPTO to revise the fees set by Congress under 35 U.S.C. §§ 41 (a) and (b) based on the aggregate costs of funding the USPTO. This will permit the USPTO to incentivize and disencentivize applicant, patent owner and third party behavior by setting the fees at low or high levels to encourage certain activities while discouraging others. For example, filing, issue and first stage maintenance fees may be set low to encourage innovation while excess claim, extension of time, continuation application, and second stage and third stage maintenance fees may be set higher to subsidize the costs of patent examination. However, if the USPTO were to set at punitive rates fees for requests for continued examination (RCE) and appeals, this will be not received favorably by the patent user community. RCE and appeals are not activities that applicants relish. If these are necessary to pursue because of poor patent examination it would be unjust to force applicants to pay excessive fees to achieve justice when the patents should have been granted at an earlier stage of examination.

Correction of improvidently issued patents by post grant proceedings is in the public’s interest. Therefore, if the USPTO were to impose excessively high fees to request ex parte reexamination, IPR, PGR and TBMP, such will be inconsistent with sound public policy. Ideally, if these patents should have not have issued, then the maintenance fees paid by the patent owners who have benefited by obtaining defective patents should be used to subsidize the costs of the proceedings. It is especially unfair for third parties adversely affected by such patents to have to pay the full costs of their correction. It is hoped that when the USPTO does its fee redesign in February that they will correct the problem created by Congress by resetting these post-grant patent proceedings fees at lower rates to increase participation rates to desired levels.

Finally, the patent user community is concerned that the new proposed rules for adjusting fees will be boosted above the 15% surcharge rate effective in September 2011 to build a revolving reserve fund above the collections level needed to achieve Congressional budget levels assigned by Congress. If fees collected exceed appropriation levels then they become subject to fee diversion by Congress. Until the fee diversion problem is resolved the patent user community will remain skittish about the money infused into a revolving fund with a future hope, but no guarantee, that the USPTO will have full access to the fees.

Today, by Federal Register Notice (here), the USPTO has scheduled public hearings on fee setting with the Patent Public Advisory Committee (PPAC). Interested members of the public may present their views and comments by coordinating in advance with the Office.

Yesterday, the USPTO issued a Notice of Proposed Rule Making to outline the procedures for conducting supplemental examination (here). (See the earlier discussion on the related changes to patent reexamination fees provided by this Notice).

As a reminder, the America Invents Act provided supplemental examination (SE) as a mechanism to cure inequitable conduct before the USPTO. Upon submission of SNQs that explain potential issues for supplemental examination, the Office may initiate a type of “re-examination” that follows the procedures for ex parte patent reexamination with some modification. In essence this proceeding was based on a “but for” theory later adopted in Therasense.

In addition to proposing a steep price to initiate SE and conduct the related reexamination proceeding, (roughly $22K) the Office has outlined the rules for conducting supplemental examination.

Notable provisions are as follows:

-A request for SE is limited to a maximum of 10 “items of information.” (additional filings may be pursued in parallel)

-Only the owner of a patent may pursue SE.

-The Office will consider SE requests within 90 days of submission in the same manner as patent reexamination.

-A mapping of means or step-plus-function claims relative to the patent specification for any such claim to be examined.

-A mapping of specification support for claims called into question by the presentation of a 112 or 101 based SNQ.

-Explanation of documents, and transcripts of any audio/vide0 submissions are required. (SE is not limited to patents or printed publications).

-No amendments or interviews are permitted in SE. (i.e., within first 90 days of filing)

-The SE proceeding concludes with a determination that an SNQ exists, or not. Should an SNQ be identified, ex parte patent reexamination is conducted in the usual manner with the exception that there is no Patent Owner Statement permitted and the  proceeding will not be limited to patents and printed publications.

Curiously, the Notice predicts that all owner initiated ex parte patent reexamination filings will be filed as SE requests going forward. The thinking being that the added benefit of inequitable conduct protection will be a driving force for filers. However, after Therasense, and in view of the fact that SE is not limited to patents and printed publications, and in some respects requires much more detail as to claim mappings, etc., this prediction seems more than a bit optimistic.

Although not outlined in the Notice, the Office has stated publicly that SE will be conducted by the examiners of the Central Reexamination Unit (CRU).

For more information on this topic as well as ethical implications, I will be guest speaking together with Professor Lisa Dolak on February 14th. (Strafford Legal Webinar, register here)

As mentioned on Monday, the proposed rule package for supplemental examination is expected this week; in fact, it will publish tomorrow. In addition to the expected rule package on the new supplemental examination proceeding, the USPTO has included proposed revisions to existing patent reexamination fees.

The existing fee for requesting ex parte patent reexamination is $2520. The Notice proposes to raise this fee, to account for actual agency costs for conducting the proceeding, to a whopping $17,750. The notice also raises the fees for filing a petition (using the same justification) in either ex parte or inter partes patent reexamination to $1932. This new fee will apply to any petition filed under Rules 181,182, or 183. (The petition fee increase excludes extensions of time and some other minor petitions). Current fees are on the order of $200-$400. It may be that the increase in petition fees will help reign in the abusive practices currently plaguing the Office.

Certainly the Office should raise reexamination fees as they are presently quite low, but the jump to the proposed levels, especially as it relates to the hefty request fees, is unlikely to be received very favorably by the public.

The fee for filing a request for supplemental examination, and the corresponding reexamination that follows will cost filers. $21,296 ($5,180 for the request and $16,116 for the reexamination, if instituted). The Office is also charging extra for the review of documents that exceed 20 and 50 pages; an extra $166 for the former and $282 for the latter.

As I mentioned months back, the rumored cost of Inter Partes Review and Post Grant Review is upward of $48K per filing. Looking at these revisions to patent reexamination filing fees, one can expect higher fees for these more labor intensive office proceedings.

Tomorrow’s Federal Register will detail these fee changes and the rules for supplemental examination. Attached is a copy of the rules that will publish tomorrow (here)…more thoughts tomorrow.

]]> http://www.patentspostgrant.com/lang/ja/2012/01/uspto-proposes-400-600-increase-in-patent-reexamination-fees/feed 0 http://www.patentspostgrant.com/lang/ja/2012/01/post-grant-buzz-winter-2012 http://www.patentspostgrant.com/lang/ja/2012/01/post-grant-buzz-winter-2012#comments Mon, 23 Jan 2012 18:53:49 +0000 Scott A. McKeown http://www.patentspostgrant.com/?p=7972 Winter 2012 – New Rules

Early 2012 is shaping up to be an exciting time for patent law, particularly for those focused on post grant patent practice.

USPTO–As to the new rule packages necessary to implement the new post grant mechanisms of the America Invents Act (AIA), it is rumored that the supplemental examination rules will issue this week. Due to an administrative delay with the Office of Management & Budget (OMB), the more extensive IPR and PGR rule packages are expected to publish next week. Earlier this month, some less extensive rules packages issued on patent reissue oath practice and changes to ex part patent reexamination practice.

CAFC– The court has agreed to reconsider Marine Polymer Technologies, Inc. v. HemCon, Inc. (here) en banc. As a reminder, this case considers whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, by Patentee disclaimer. (earlier post here)

The court also has yet to issue a decision in In re Staats, which presents the USPTO theory that continuation filings in a broadening patent reissue must relate to a broadening that was foreseeable as presented in the original oath.

There is much to look forward to in the weeks to come.

Post Grant Practice CLE

Today the AIPLA continues their multi-part web series on the America Invents Act (AIA). In the latest installment, the new post grant mechanisms of the AIA will be explored. The program is entitled Post-Issuance Activities and Enforcement Activities Under the America Invents Act.

Registration info is found (here)

For additional CLE credit in 2012, consider the following programs:

Post Grant Proceedings 2012 — The New Patent Litigation Practicing Law Institute, February 3, 2012 (NYC & Webinar)

Salvaging Patents with New Supplemental Examination Strafford Legal February 14th (Webinar)

USPTO Procedures Under the America Invents Act American Conference Institute March 26-27th (NYC & Webinar)

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.

For those seeking a quick briefing on the new Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. The Practicing Law Institute (PLI) will be offering a one hour webinar next Monday, January 9, 2012.

Topics to be covered include:

• New petition practice to toll Reply Briefing deadlines
• Simplification of brief formatting and required appendices
• New default practices and assumptions
• Guidelines for identifying “new rejections”
• New jurisdictional timing
• Elimination of examiner responsibilities

I will be presenting along with my colleague (former Administrative Patent Judge and USPTO solicitor) Lee Barrett.

Registration details are found (here)

2011 was perhaps the most significant year to date in terms of post grant patent practice. The perennial legislative effort generally known as “patent reform” finally bore fruit as the Leahy-Smith America Invents Act (AIA); patent reexamination filings in 2011 reached an all time high; patent reissue practice was explored and clarified by the CAFC; and patent litigation parallel with patent reexamination continues to expand as a well established strategic practice.

As to the America Invents Act, several entirely new post grant patent proceedings have now been enacted into law (effective September 16, 2012).  A summary of these proceedings, and discussions of their expected impact are linked below (and throughout the blog).

Post Grant Review

Inter Partes Review

Supplemental Examination

Derivation

Transitional Business Method Patent Challenge

The USPTO is scheduled to issue a notice of proposed rule making on these proposed proceedings within the next 2-3 weeks. 2012 will bring much more detail to the broad legislative concepts found in the AIA.

As to patent reissue, the CAFC has clarified the scope of error necessary for patent reissue (Ex Parte Tanaka) and has addressed the complexities of the recapture doctrine (Ex Parte Mostafazadeh). The CAFC is expected to issue their decision in Ex Parte Staats, another important patent reissue case, in the coming weeks.

Patent reexamination has been impacted by the passage of the AIA in that the SNQ standard is now available only for ex parte patent examination. Likewise, the USPTO has proposed their own changes to patent reexamination practice to decrease pendency. With the passage of the AIA, it is unclear where this earlier proposal now stands.

2012 is expected to bring even further attention to post grant patent practice as it expands and matures under the new legislation. Stay tuned.

The seemingly never ending saga of the NTP patent reexaminations took yet another interesting turn yesterday. The BPAI issued revised decisions on remand that reversed the earlier rejections of some of the NTP claims. As a reminder, the reexamination of the NTP patents began during the litigation between NTP v. RIM.  The reexaminations continued at the USPTO in parallel with the then ongoing, and now infamous, litigation.  However, the co-pending litigation continued on to the settlement, narrowly avoiding a disruption of RIM’s business in the U.S via court imposed injunction.

Now, some 6+ years later, the reexaminations may be close to a conclusion (absent further appeal by NTP).

The revised decisions stem from the CAFC remand on claim construction issues relating to the definitions of “electronic mail” or “electronic mail message.” As a result of the revised construction, NTP has manged to claw back some of their previously rejected claims.The chart below shows the current status of the NTP portfolio as of yesterday, the decisions are linked here: 5,436,960; 5,438,611; 5,479,472; 5,625,670; 5,631,946; 5,819,172; 6,067,451; and 6,317,592 (not yet issued)

LEGEND:

-Green claims were newly confirmed/allowed as a result of yesterday’s decisions

-Black claims have been confirmed/allowed since the first decision of the BPAI

-Underlined claims are confirmed/allowed, but were added as new claims during the reexamination.

(CLICK TO ENLARGE)

NTP entered the patent reexamination process with over 2200 claims. The underlined claims were added in patent reexamination, which means they do not exist until printed at the conclusion of the reexamination. For many, if not all of these newly added claims, it is simply too late. This is because some of the underlying patents expired in May of 2011. Once a patent expires, new claims cannot be added….however existing claims can be enforced by proving that the claims were infringed prior to expiration. So, at the end of the day, assuming the surviving, original claims are infringed, NTP may be able to restart their stalled infringement campaign, against Apple, Yahoo, Sprint and others. (Virginia District Court stayed case pending USPTO reexamination)

While further appeals are also possible from the latest decision of the BPAI, it seems that NTP may have reached the point of diminishing returns and will instead allow the patent reexamination proceedings to finally end after 6+ years.

As injunctions in patent disputes have become more difficult to obtain since the earlier dispute with RIM, and the portfolio is expired/expiring, the previous leverage of NTP is significantly diminished.

Going forward, new NTP targets may find relief from a new provision of the America Invents Act (a.k.a recently enacted patent reform legislation, effective next September 16th) that will permit an inter partes style challenge (in this case Inter Partes Review) of these patents for the first time….the saga continues.