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 to “substantial new question of patentability” “patent and printed publications” and “pertinency and manner.” If the key information is presented, historically, the Office is quite liberal in granting reexamination requests.[2] To the unwary however, the Office may appear to be significantly tightening the requirements for approval of reexamination requests.
The satisfaction of the above referenced components and corresponding best practices will be explored in Part II of this post. Perhaps more problematic, however, is information increasingly found in reexamination requests which is of no use to the Office, creating ineffective and/or improper requests. The infusion of unnecessary information is primarily a function of litigation inspired over zealousness and/or practitioner inexperience.
Due to the increasingly common existence of concurrent litigation with reexamination, practitioners, especially those directly involved in such litigations, are inclined to bury the Office in irrelevant information of no value in reexamination proceedings. Likewise, litigation inspired filings tend to be presented in an unnecessarily aggressive tone, masking the key information with court-room style theatrics.
Furthermore, patent reexamination has only recently emerged as a practical option to effectively challenge patent validity, due to the efforts of the USPTO’s Central Reexamination Unit. As such, many practitioners lack the necessary experience in preparing and responding to reexamination based issues.
In preparing an effective reexamination request, practitioners should keep in mind that less is usually more. Below is a list of material commonly included in reexamination requests that may lead to non-compliance issues, denial of requests, and/or ineffective presentation of SNQs.
1. Accusations of inequitable conduct — Reexamination does not consider such issues and including them will just mask the important information with meaningless background noise. MPEP §§ 2280; 2684
2. Discussions of 101 (Bilski), or 112 issues in original claims — These issues are not subject to reexamination. MPEP §§ 2258; 2658 (although 101 issues may be considered in a statutory double patenting sense)
3. Deposition testimony, litigation pleadings, etc provided for the sole purpose of trying to discredit the Patent Holder. — Save the theatrics for the courtroom, this information gains you nothing, and is an annoyance to the Examiner.
4. Inappropriately presented rejections as “and/or” propositions — A proper SNQ is “claim 1 is anticipated by reference X” NOT “claim 1 is anticipated by reference X or obvious over Reference X in view of Y” MPEP §§ 2217; 2617
5. Discussion of other, ongoing reexamination proceedings — The Office judges each request on its own merits, referencing other proceedings may lead to confusion in the initial processing of the request, and gains nothing in the end. (unless the discussion is necessary to contrast a new SNQ with an earlier filed request).
6. Don’t assume the Office will reject claims you do not identify in your request. The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested, it is permitted to do so. See Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. VA. 2006).
7. Patent Holders quickly learn that district court claim construction is not binding on the Office. As such, providing Markman and/or infringement positions to the Office along with the request to demonstrate the Patent Holder’s asserted claim breadth is unnecessary. Regardless of the Patent Holder’s asserted claim scope, the Office applies a broadest reasonable interpretation to the claims. MPEP §§ 2258; 2658 (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)).
8. A Patent Holder’s admissions can, together with other patents and/or printed publications, serve as a basis of an SNQ. MPEP § 2258 However, this is not an invitation to cite every arguably damaging deposition statement in a request and characterize it as an “admission.” The Office does not have the resources to digest entire litigation records. Outside of very limited circumstances relating to an admission of specific art being prior art against the patent, admissions are a commonly misapplied and misunderstood aspect of reexamination requests.
9. Merely stating that art is “new” (i.e., not cited in the original prosecution) will not, in and of itself, present an SNQ, unless presented in a new light. (This issue will be explored in more detail in Part II of this series).
10. When presenting an obviousness rejection, provide an articulable rationale for the combination. Remember, the SNQs are preliminary rejections. The Office cannot adopt poorly reasoned rejections. (This issue will also be explored in more detail in Part II of this series).
While the above list is far from exhaustive, it covers the most commonly encountered problems with reexamination requests. In Part II of this series, we will discuss practical tips for effectively presenting SNQs.
[1] Of course, inter partes requests also require identification of the real party in interest and a certification that the estoppel provisions of 37 C.F.R. § 1.907 do not apply. However, from an SNQ perspective, the requirements are the same.
[2] 92% of ex parte reexamination requests and 95% of inter partes reexamination requests are granted