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.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)
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)