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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.
Continue Reading Learning From the Mistakes of Star Scientific

uspto facesOn March 2, 2010, the USPTO held a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting at its Madison Auditorium. Among the various topics presented was a set of  USPTO Slides by Jean Vollano, a Quality Assurance Specialist in TC 1600. Her presentation was informative and worth a detailed review. She covered reissue practice relating to (1) amendments to claims, description and drawings, (2) inclusion of certificates of correction in reissue applications, (3) oaths/declarations and (4) amendments to a reissue of a reissued patent.

Her slides provide examples of how to properly amend claims in reissue applications emphasizing the need to amend original patent claims using brackets and underlining of original patent claim text. She reminded applicants that
Continue Reading Fixing Errors: USPTO Offers Reissue Best Practices for Patent Owners

The purpose of a reexamination request is quite simple, to present Substantial New Questions (SNQs) of patentability relative to some or all of the claims of an issued patent.  An effective reexamination request presents SNQs in a straight forward fashion, in a manner consistent with Office guidelines set forth in the MPEP.  If effectively presented, the Office adopts the SNQs, which form the basis of an order granting reexamination of the issued patent.

The rules of practice require that the content of an ex parte request include the components of rule 37 C.F.R. § 1.510, and for inter partes, the components of rule 37 C.F.R. § 1.915. Regardless of the type of request, each must include “a statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.”[1]

In other words, the Office reviews reexamination requests for certain key information.  Thus,  practitioners should understand the Office perspective relative
Continue Reading Effectively Presenting a Request for Patent Reexamination (Part I)

It is well established that patent reexamination is limited in scope, by statutory definition, to unpatentability issues presented by patents and printed publications.  In other words, invalidity and/or unenforceability issues relating to inequitable conduct, public use or sale[1], subject matter eligibility, enablement and best mode are generally[2] outside the scope of patent reexamination (See 37 C.F.R. §§1.552 & 1.906).  Yet, a little known exception to these bright line rules exists with respect to previously submitted declaration evidence; an exception that has recently been narrowed even further. 

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
Continue Reading Attacking Patent Holder Declaration Evidence via Reexamination

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.…

Unlike in ex parte reexamination, a third party requester may participate at every stage of the proceedings. A third party requester (TPR) may once file written comments on any response by the patent owner to an Office action. 35 USC 314(b)(3). All proposed grounds of rejection raised by the TPR, and all TPR comments must be specifically addressed by the examiner. The TPR may appeal any proposed ground of rejection not adopted by the examiner as a final decision favorable to patentability to the Board of Patent Appeals and Interferences (BPAI) under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(1). The TPR may be a party to nay patent owner appeal of a rejection to the BPAI under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(2). A TPR cannot file an inter partes reexamination request: (1) while a first inter partes reexamination is ongoing -35 USC 317(a); (2) where a final decision has been entered against the TPR in a civil action, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); (3) where a final decision has been entered against the TPR in an inter partes reexamination that is favorable to the patent owner, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); and (4) for a any patent that issued from an original application filed in the U.S. before November 29, 1999-Section 4608 of P.L. 106-113. Estoppel attaches against any TPR in a later civil action if the TPR loses: as to reasserting grounds of invalidity against challenged patent claims-35 USC 315(c) or as to challenging facts established in the reexamination proceedings-Section 4607 of P.L. 106-113.
Continue Reading An Inter Partes Reexamination Primer (Part 1 of 2)

This is part three of a three part a series of guest postings by Robert J. Spar, former Director of the Office of Patent Legal Administration. Bob will be one of featured faculty at PLI’s “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010” conference to be held in San Francisco, CA on January…

This is part one of a three part a series of guest postings by Robert J. Spar, former Director of the Office of Patent Legal Administration. Bob will be one of featured faculty at PLI’s “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010” conference to be held in San Francisco, CA on January…

In the summer of 2005, responding to industry criticism on the efficacy of patent reexamination, the USPTO created the Central Reexamination Unit (CRU).  The CRU is formed of highly skilled primary patent examiners that have been specially selected from the Patent Examining Corps.  These examiners average more than 15 years of experience and have technical backgrounds that reflect the broad spectrum of technologies encountered in patent reexamination.  Many of the primary examiners chosen to work in the CRU have advanced technical and law degrees.

The mission of the CRU is to ensure high quality, objective and timely processing of reexamined patents.  The CRU endeavors to comply with the “special dispatch” requirements of the reexamination statutes.  Reexamined patents are assigned to examiners in the CRU who were not previously involved in the examination of the original patents or in prior reexamination proceedings of the patents.  The examiners work in teams of three including a Special Program Examiner (SPE).  Patentability review conferences are conducted at each point in the reexamination decision making process in order to reach
Continue Reading The USPTO’s Central Reexamination Unit