The Importance of Interview Summaries in ex parte Patent Reexamination

Last Friday, Star Scientific (hereinafter “Star”) released an update on their ongoing ex parte patent reexaminations of U.S. Patents 6,425,401 & 6,202,649. The reexaminations are directed to Star’s patented tobacco curing technologies that are the subject of an ongoing litigation with R.J Reynolds.[1] As Star is a publicly traded company, and the litigation is fairly high profile, the update was widely reported to outlets such as the Wall Street Journal and CNBC.

The Star press release explained:

We received notice today from the US Patent & Trademark Office that it was terminating the reexamination of Claims 4, 12 and 20 of the “649” patent and claim 41 of the “401” patent that had been requested by RJ Reynolds in early 2009. The reason cited for the termination of the process was that the patent owner’s response to the Nonfinal Office Action that was filed on 11/10/09 allegedly did not include “a [separate written] summary of the interview, as is required by 37 CFR 1.560(b).” We want to make clear that the claims were not cancelled because reexamination of the claims found them invalid, but rather because the PTO asserted the patent owner did not comply with the procedural requirement for providing a written interview summary. The reexamination proceeding “is subject to reopening by the [Patent & Trademark] Office, or upon petition,” and Star’s patent counsel will file petitions today to reopen the proceedings.

We disagree with the termination in the strongest possible terms, and we are taking all necessary actions to reopen the reexamination process. Star’s patent counsel, Banner & Witcoff, believe that all appropriate steps were taken during the reexamination proceedings. The PTO failed to acknowledge a timely written summary of the interview that had been filed within one month from the date of the interview. The firm is confident that the petitions to reinstate the proceedings will be granted so that the claims can be evaluated on their merits.

Upon review of the Star reexamination file histories, I will at least agree that the terminations have nothing to do with validity.

On the other hand, in my opinion, appropriate steps were clearly not taken during the reexamination proceedings. Likewise, the petitions filed last week will almost certainly be denied.

First, some background into interviews in ex parte patent reexamination.

Unlike regular patent prosecution, patent reexamination (hence the existence of this blog) requires an understanding of different rules, procedures and statutes. One important difference in ex parte patent reexamination is that there are significant consequences for failing to submit a statement of the substance of the interview.

The requirements for an interview during an ex parte reexamination are similar to those for original patent prosecution with one important distinction. Namely, in patent reexamination, the consequence of missing the deadline for submission of the statement of the substance of the interview will result in the TERMINATION of the reexamination proceeding (37 C.F.R. 1.550(d)). An examiner in patent reexamination has no power to waive this requirement.

Once terminated, a petition to revive the reexamination proceeding for unavoidable or unintentional delay will then be necessary to revive the reexamination proceeding; this brings us back to the Star matter.

The good news for Star is that while the situation is professionally embarrassing for the parties involved, in almost all cases, getting back on track requires a simple petition filing. The bad news is that the petitions filed last week are incomplete.

To understand the problems with the petitions, a brief review of the Star interviews in ex parte patent reexamination is in order.

Star, a day prior to their interview, filed a list of anticipated topics for discussion during the interview. This document is typically referred to as an “interview agenda” and is sometimes requested by the PTO so that examiners may prepare for the interview. Once the interview of October 22, 2009 was completed, the attorney should have filed an “interview summary.”  As can be appreciated, the agenda identified topics Star’s attorney planned to discuss as of October 21, 2009 (i.e., when the agenda was faxed). Conversely, the summary would have identified the topics ACTUALLY discussed, the next day, on October 22, 2009. Simply stated, Star filed an agenda but did not file a summary.

In the current petitions, Star is curiously arguing that the interview agenda serves as the interview summary. Unless Star’s attorneys are clairvoyant, this position is a non-starter. The agenda was written a day prior to the actual interview. Furthermore, had the Office been willing to accept the agenda in place of the interview summary they wouldn’t have terminated the Star proceedings in the first place.

The purpose of the summary is to alert the public of what actually took place during the interview. For example, perhaps the Examiner brought up points of his own, perhaps the attorney added a topic between the agenda and the interview, perhaps different prior art came up in the interview, etc, etc.  Surely, the agenda may end up accurately reflecting the content of the interview discussions, but, that does not excuse the requirement that the Patent Holder file a summary.

The appropriate petitions to revive the proceedings are for unintentional or unavoidable abandonment. For such a petition to be proper, it must include the late filings (i.e., interview summaries) that caused the termination. In this case a petition under 37 C.F.R. 1.137 (b) would be appropriate that provides the missing interview summaries and a statement that the entire delay in providing the summary was unintentional; that’s it.

Instead, Star filed a petition that re-submitted the previously provided agenda, the missing summaries still have yet to be provided. A copy of  Star’s petition for the ‘401 Patent is found (here) (See the interview agenda of Exhibit A).

Just being an armchair quarterback here but, Star would be wise to file new petitions (that include the missing summaries) before they find themselves drafting yet another awkward press release.

[1] The commentary that follows is the opinion of the author and in no way constitutes legal advice. Neither the author of this post nor the firm of Oblon Spivak have any professional or financial interest relative to the parties involved, or the outcome of the dispute.