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AIPLA Submits Comments

As discussed here in significant detail over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. Back in April, the USPTO published a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public commentary, the USPTO will now begin the process of considering to implement/modify the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here)

Comments submitted to date can be found posted (here). AIPLA comments were submitted last week, a copy of which is found (here). The AIPLA has joined in my suggestion to adopt the patent interference model for deciding petitions in inter partes patent reexamination. 

Comments of the ABA IP Section are expected later this week.

USPTO Posts Public Comments on Patent Reexamination Streamline Proposals

As discussed here in significant detail over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. Back in April, the USPTO published a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public commentary, the USPTO will now begin the process of considering to implement/modify the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here)

The deadline for submitting comments to the USPTO was last Wednesday. Comments submitted to date can be found posted (here). (Note: AIPLA and ABA comments are not yet available as they are still being drafted.)

I am pleased to report that several proposals published on this blog (and submitted separately on behalf of my firm) have been adopted by the IPO, Intellectual Ventures, and other bar organizations.

Claim Interpretation Practices in Patent Reexamination

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. In past posts, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination. More recently, I have discussed changes to petition practice for accelerating petition processing, and avoiding common petition issues when a Third Party withdraws from an inter partes patent reexamination.

With June drawing to a close, and with public comments due to the USPTO on the Streamline Proposals due today (June 29, 2011), this will be my final post of this multi-part series.

In this post I explain how a relatively common claim interpretation deficiency is overlooked by the USPTO, leading to unnecessary reexamination proceedings and expense for Patent Holders.

Currently, the grant rate of patent reexamination is well over 90%. With patent reexamination increasingly initiated concurrent with district court and/or ITC litigation, the mere grant of a request for patent reexamination can have a devastating effect on the timeliness of patent enforcement efforts. For patents in inter partes reexamination, roughly 50% of cases in litigation remain subject to a stay pending the outcome of the patent reexamination proceedings for at least 4 years. Thus, an improvidently granted reexamination request can effectively shut the Patent Holder out of court for years, and significantly add to (1) the cost of enforcement and (2) the delay in collecting damages for patent infringement.

In analyzing requests for patent reexamination, Examiner’s are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard ignores the fact that the scope of certain patent claims are defined by 35 U.S.C. § 112, 6th paragraph, and may not be interpreted in this manner, namely—“means-plus-function” claims.

35 U.S.C. § 112 6th requires:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (emphasis added)

As further outlined by MPEP 2181-2183, it is impossible to examine a means or step-plus-function claim without considering the structure, material or acts described in the specification; otherwise there is no claimed structure or acts by which to compare any equivalence in the prior art. See MPEP 2183 (C)

In my experience, the USPTO will almost always grant a reexamination request for MPF claims by applying an improper BRI analysis of the recited function alone.  In fact, I have never seen a Request denied for failure to provide the necessary structural mapping between the specification and MPF claims.  This practice encourages accused infringers in parallel litigations to pursue reexamination requests with little to no downside. That is to say, the Request can be devoid of any structural analysis relative to the patent and still be granted.  In this way, the accused infringer maintains all flexibility in the parallel proceeding with respect to arguing structural equivalents (i.e., non-infringement & invalidity).

The USPTO should not accept a Request for Patent Reexamination which would be dismissed as non-compliant if it were part of an Appeal Brief to the BPAI—an appeal brief requires this structural analysis explicitly. (CFR 41.37(c)(1)(vii)). Which makes perfect sense as any reasoned analysis requires analysis of the equivalent structure of the specification.

For this reason, many of these improvidently granted reexaminations ultimately terminate in favor of the Patent Holder, sometimes years later on appeal to the BPAI, where such structure is considered for the first time.

To avoid litigation gamesmanship, and to reduce Patent Holder harassment, it is incumbent upon the USPTO to require that means plus function claims be examined, from the outset, in accordance with the 35 U.S.C. § 112 6th paragraph guidance provided in MPEP § 2181-2183.

When Inter Partes Patent Reexamination Becomes One Sided

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. Most recently, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination.

Earlier this month, I explained the presentation I gave at the USPTO public meeting of  June 1st for accelerating petition processing. As most practitioners realize there is a petition crisis at the USPTO that is a direct result of the increased use of inter partes patent reexamination. In my previous proposal on this topic I explained that certain, procedural disputes are commonly petitioned in inter partes patent reexamination. For example, petitions relating to  page limits, petitions to strike filings, etc. The Office would be best served disposing of these petitions by involving an ombudsman that is available by telephone, akin to interference paralegals.

In addition to processing such seemingly routine petitions in a different manner, the Office should also consider eliminating situations that generate such petitions as a matter of course. For example, it is quite common for a Requester of an ongoing inter partes patent reexamination to stop participating in the proceeding. In such situations, typically, the Requester settles their dispute with the Patent Holder in a parallel litigation. Upon settlement, the Requester agrees to discontinue their participation in the patent reexamination, often times filing a statement memorializing this agreement in the reexamination. Thereafter, the Patentee will petition the Office to waive the requirements of 37 C.F.R. § 1.955 to allow for an interview in the reexamination. The petition is necessary as, even though the reexamination is now ex parte to all intents and purposes, the Office maintains the proceeding as if the requester were still participating.

As long as the petition for interview presents a detailed agenda on how the proposed interview will accelerate prosecution, it is granted. However a second petition is required for any subsequent meeting. Moreover, even if all claims are later confirmed/allowed a Right of Appeal Notice (RAN) is still issued. This makes no sense as the Patentee is not appealing a favorable conclusion, and there is no Requester involved in the proceeding any longer to dispute such a result. As can be appreciated, these practices are unnecessary, help drive unnecessary petition filings, and ultimately aggravate inter partes patent reexamination pendency.

A more sensible solution would allow the filing of a statement that waives the Requesters rights to further participation, upon which, the Office would allow interviews as a matter of right. Further, the filing of such a statement would accelerate appeal processing by avoiding RAN and cross appeal docketing practices.

As a reminder, written comments to the current patent reexamination streamlining proposals are due to the USPTO next week, June 29th.

USPTO Proposal Forces Patentee Cooperation in Violation of Statute?

Last Monday, I proposed managing petition practice in inter partes patent reexamination based on the patent interference model already in place. As a reminder, this proposal is responsive to the proposed collection of working concepts and initiatives published in the Federal Register for the purpose of streamlining patent reexamination. (a copy of the Federal Register Notice is found here) I discussed this proposal at the USPTO, along with other speakers on June 1, 2011. (webcast and other materials here)

As I mentioned in last week’s post, the USPTO proposal to modify and make permanent the Pilot Program for Waiving the Patent Owner Statement was not discussed in detail during the meeting. However, this proposal, at least from feedback I have received, is one of the more controversial.

In a nutshell, the USPTO is proposing to modify the existing Pilot Program by: (1) Making the Pilot Program permanent; and (2) Issuing a first “provisional” first action together with the Order of reexamination for those Patentees that do not agree to waiver. With respect to the “provisional” first action, unless a Patentee files a Statement overcoming the rejections in the Provisional Action, the next action would issued as a Final Rejection; therein lies the controversy.

This proposal would force efficiency at the cost of Patentee rights. Moreover, it is unikely that such a proposal could be reconciled with the patent reexamination statutes.

Statutory Roadblock (35 U.S.C. § 305)

After the times for filing the statement and reply provided for by section 304 of this title have expired, reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133 of this title. In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301of this title, or in response to a decision adverse to the patentability of a claim of a patent. (emphasis added)

Under the current proposal, reexamination would effectively begin prior to the expiration of the times for filing a Statement and Reply. A Patentee that refuses to waive the Statement, and does not file a Statement in response to the provisional action, would lose the right to propose an amendment, add new claims, or introduce evidence by virtue of the subsequent Final Action (governed by 37 C.F.R. § 1.116). 

Statutory roadblock aside, this proposal is all stick and no carrot.

So, why is the Office seeking brute force solutions to urge cooperation with this program?

USPTO Perspective

The USPTO’s interest in urging compliance with the waiver this program is understandable– cooperation by Patentees would help decrease overall pendency of ex parte patent reexamination. Further, this increase in efficiency would not expend any significant Office resources. As explained in the Streamline Proposals Notice, historically, 10% of Patent Owners in ex parte patent reexamination ultimately file a Statement.  As can be appreciated, once an Order is granted, the USPTO provides a two month period (37 CFR § 1.530) to receive a Statement that is not filed in 90% of cases. For this reason, the time to a first action on the merits (FAOM) in ex parte patent reexamination is slower relative to inter partes reexamination. (inter partes reexamination does not provide for a Patent Owner Statement so a first action is typically issued together with the Order)

As I pointed out previously, the Pilot Program has had very disappointing results. Preliminary results indicate that (31%) of Patentees agree to waive the right to file a Statement.  This is a far cry from the 90% of Patentees the USPTO would expect to participate based on the historical filings. 

In finding a solution to the lack of cooperation, one must first appreciate the problem.

Patentee Perspective

As I pointed out when the Pilot Program was first announced, Patentees typically prefer to utilize the time between initial determination and first action to consider their response strategy, line up expert witnesses and hire reexamination counsel.  Another factor that complicates cooperation with the program is that patents pursued in ex parte reexamination tend to be older (i.e., not eligible for inter partes reexamination). In such patents, it is rare that the same law firm is retained to serve as reexamination counsel. So, the Office is usually calling the wrong firm to seek waiver, assuming the firm/attorney is even reachable after 10-15 years.

It is true that much of the same strategy and expert work also needs to be done in preparation for an inter partes patent reexamination. While there is no opportunity for a similar delay in that proceeding, often times ex parte requests are quite unexpected. For example, request can be filed anonymously in ex parte patent reexamination. Inter partes reexamination tend to occur more often in the face of open, and ongoing adversity.

Thus, the lack of cooperation is not unreasonable in many circumstances.

What Can be Done by the USPTO?

Certainly, the Office needs to accelerate patent reexamination proceedings to the best of their ability and the waiver program is a sensible solution. At least two months are lost between the Order and first action when a Patentee refuses to waive, and then does not file a Statement. Another way to encourage compliance with this program, and to recover these two months, is to modify the shortened statutory response period. Typically, a Patentee has (2) months to respond to an office action in patent reexamination. The Office should consider changing this period to (1) month for Patentees that do not cooperate with the Waiver Program.

In other words, in the Office communication (interview summary) that notes the Patentee’s decision as to the waiver program, notice would be provided that a modified, shortened statutory period may apply to the proceeding. That is to say, for those Patentees that refuse to waive the right to file a Statement (including those that “could not be reached”) that then do not file a Statement, a shortened statutory response period (1 month) would apply for all office actions. As any reexamination proceeding continuing on to appeal will include at least a first action and final action, two months would be recovered for all long term ex parte patent reexamination proceedings.

This modified, shortened statutory response (1 month) is already in use in many patent reexaminations. The Office currently modifies the response period in ex parte patent reexamination when a parallel litigation is stayed pending the patent reexamination. (MPEP 2263)

Of course, some would argue that this solution would just encourage additional petitions for extension of time. To account for this the Office would also require as a component of any such petition going forward, a statement and explanation of non-cooperation with the program, non-cooperation weighing against an extension absent extraordinary circumstances.

With this solution Patentees would retain their statutory right to amend and submit evidence, and the Office would be able to reduce overall pendency for ex parte patent reexamination proceedings. 

Meeting Materials & Webcast Replay Provided

As mentioned previously, the USPTO has today posted the presentations and papers from the speakers of last week’s meeting. The materials can be found (here) along with a replay of the webcast (to be up later in the week). Earlier this week, I provided an overview of my slides.

Interference Model to Control Petition Explosion & Manage Filings

Last Wednesday, the USPTO conducted a public meeting to receive comments on their proposals to streamline patent reexamination. For those that missed the webcast last week, the PTO will be posting the presentations of the various speakers in the near future.

To recap, the meeting was organized into three parts. In the opening session, several speakers explained their belief that the “representative rejection” proposal was inconsistent with aspects of the MPEP. Additional speakers noted that the Office’s reliance upon In re Freeman (CAFC 1994) to support proposals requiring amendments in patent reexamination to be related to patentability (under35 USC § 305)  was misplaced. (arguing that the the oft cited language of Freeman was merely dicta). In the second portion of the program, Judge Robinson of the Federal District of Delaware, and Judge Essex of the ITC provided their perspectives on patent reexamination. In the final portion of the program, petition practice was discussed.

My slides on creating an inter partes patent reexamination pilot program for procedural petitions are found (here). The slides explain that

the reexamination petition crisis at the USPTO is a direct result of the increased use of inter partes patent reexamination. With many such petitions having to do with page limits, improper filings and the like, the Office would be best served disposing of these petitions by involving an ombudsman that is available by telephone, akin to interference paralegals. A later phase of the pilot program would further integrate inter partes patent reexamination as a BPAI proceeding (as may soon be required by the patent reform legislation) by allowing substantive, interview-like hearings.

With regard to the complaints of late mail/service in inter partes patent reexamination, I proposed that this problem would be avoided by requiring web portal filing as is the case in patent interference. As patent interferences have become less common as of late, and may be legislated away in the coming months, it would seem that the Office may have some bandwidth freeing up.

Later this week I will discuss my proposal relating to the Pilot Program for Waiving the Patent Owner Statement. This aspect of the USPTO proposals was not discussed in detail during the meeting.

Webcast Today at 1:30PM (EST)

As discussed back in April, the USPTO has proposed a collection of working concepts and initiatives in the Federal Register for the purpose of streamlining patent reexamination. Based upon public commentary, the USPTO will consider implementing/modifying the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here)

The proposals are directed to both ex parte and inter partes patent reexamination (see above link for more detail).

Today, the USPTO will conduct a public meeting to receive comments on their streamlining proposals.  For those that did not pre-register, or are unable to attend in person, you may tune into the webcast at 1:30PM here.

The meeting is scheduled for 1:30PM-5PM, today’s agenda may be found (here)

I will post any available meeting materials later today.

Public Meeting to be Held at USPTO June 1st

As discussed back in April, the USPTO has proposed a collection of working concepts and initiatives in the Federal Register for the purpose of stramlining patent reexaminaton. Based upon public commentary, the USPTO will consider implementing/modifying the various proposals via a formal rule-making process, or through internal policy changes. (a copy of the Federal Register Notice is found here)

The proposals are directed to both ex parte and inter partes patent reexamination (see above link for more detail). Written comments are due to be submitted June 29, 2011, however, the public meeting to discuss these proposals is scheduled for next week. In order to attend the meeting, the USPTO is requiring registration by May 25, 2011.

I will be delivering comments on the proposals along with other scheduled speakers. For those  unable to attend, I will publish my slides and any other available materials here, next week.

June Meeting to Consider Proposed Changes

As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).A short overview of each proposal is detailed next:Ex Parte & Inter Partes ProposalsStandardization of Patent Reexamination Request Formats (Proposals 1-2)Proposal 1 would require, as part of the presentation of the SNQ, an explanation of how the SNQ is different from issues previously considered by the Office. While an SNQ discussion should always explain how a technological teaching is “new,” the USPTO finds that this practice inconsistent. As such, Proposal 1 seems more of an attempt to codify a current best practice.  Proposal 2 also appears to be an attempt to codify a current best practice of identifying all limitations of a claim. Interestingly, the proposal states that this can be done via claim chart or narrative, but not both.SNQ Management (Proposals 3-4)Proposal 3 would allow examiners to more readily group proposed SNQs as cumulative with respect to others unless Requesters explain why seemingly cumulative SNQs are unique. If an examiner finds cumulative SNQs, one will be selected as representative of the group.  Proposal 4 outlines the manner by which representative rejections are grouped by an examiner, and how they are appealed together with all adopted rejections. The selection of a representative rejection is not petitionable, however, Inter Partes Requesters may comment on the selection of a particular rejection (more on that below)Limiting Requester Declaration Evidence to Rebuttal (Proposal 5)Proposal 5  would require most third party declaration evidence to be submitted together with the request. Later submissions would be limited to rebuttal of points raised by the examiner or patent owner. Any submission of such evidence after the request stage would require a statement as to how the evidence is limited to issues newly raised.Limiting Patent Owner Amendments to First Action (Proposal 6)Proposal 6 arguably reflects current practice. Namely, amendments must be submitted before a final rejection unless directed to a matter of form, claim cancellation or the like. This proposal alludes to the fact that Patentees refusing to waive the patent owner statement may surrender their right to amend altogether. (more on the change to the pilot program below)Requiring Statement of Compliance with 35 U.S.C. § 305 (Proposal 7)Proposal 7would require all amendments to be accompanied by a statement explaining how the change is directed to overcoming an SNQ. The concern here is that changes may be made to claims for reasons unrelated to patentability, such as claim construction. Of course, such changes are already improper based upon 35 U.S.C. § 305. This statement would be an additional safeguard for defendants seeking patent reexamination parallel to litigation claim construction proceedings. (i.e., inequitable conduct opportunity)Clarify Petition Practice (Proposal 8)Perhaps the most immediately helpful aspect of the various proposals is provided below. The chart below clearly explains when it is appropriate to oppose the most common patent reexamination petitions.            Examples of Petitions Filed in Reexamination ProceedingsRelief requestedPetitionable?Opposable?Review of refusal to grant ex parte or inter partes reexam (see MPEP 2248, 2648)Yes—1.181No.Vacate as ultra vires an order granting ex parte or inter partes reexam (see MPEP 2246, 2646)Yes—1.181Yes.Review of a finding of an SNQ in an order granting ex parte or inter partes reexam (see 75 FR 36357)No (but see 75 FR 36357in ex parte reexam)No.Vacate filing date of ex parte or inter partes reexam based on failure to comply with 37 CFR 1.510 or 1.915Yes—1.181Yes.Extension of time to respond to an Office action by Patent Owner in ex parte reexamYes—1.550(c)No.Extension of time to respond to an Office action by Patent Owner in inter partes reexamYes—1.956No.Extension of time to submit comments by Third Party Requester (see 35 USC 314(b)(2))NoNo.Extension of time to file a notice of appeal or brief on appeal by Patent Owner in ex parte reexam (see 37 CFR 41.31, 41.37, 41.43)Yes—1.550(c)No.Extension of time to file a notice of appeal or brief on appeal by any party in inter partes reexam (see 37 CFR 41.61, 41.66)Yes—1.183No.Striking another party’s improper paper (or portion thereof) from the fileYes—1.181Yes.Protection of proprietary information being submitted under sealYes—1.59(b)Yes.Waiver of page or word limit requirementYes—1.183No.Review of refusal to enter amendmentYes—1.181Yes.Withdrawal of final Office actionYes—1.181Yes.Revival of terminated proceeding based on Patent Owner’s “unavoidable” delay and acceptance of late paperYes—1.137(a)No.Revival of terminated proceeding based on Patent Owner’s “unintentional” delay and acceptance of late paperYes—1.137(b)No.For jurisdiction to be transferred to the Office of Patent Legal AdministrationNoNo.Suspend inter partes reexam for “good cause” under 35 USC 314(c)Yes—1.182Yes.Terminate inter partes reexam based on estoppel under 35 USC 317(b)Yes—1.182Yes.Ex Parte Proposals OnlyMake Pilot Program for Waiver of Patent Owner Statement Permanent (Proposal 1)Proposal 1  would permanently adopt the Program for Waiver in ex parte patent reexamination proceedings.Allow for First Action Final for Patentees Refusing to Waive Statement (Proposal 2)Proposal 2 recognizes that although the Waiver Program provides a great opportunity for the Office to reduce pendency, to date, Patentees are not cooperating. (see my most recent case study on this issue here). This rule would essentially punish those Patentees that do not agree to the waiver, by issuing a first action final. If the Patentee agrees to waiver, a first action would issue together with the grant, otherwise, a provisional first action is issued with the grant, and after the statement period, a final action is issued.Inter Partes Proposals OnlyAbility to Dispute Representative SNQ Finding (Proposal 1)Proposal 1 would allow a Requester to present arguments directed to those rejections held in abeyance as cumulative. (to either the examiner or Board)Consolidate ACP/RAN Practice to More Traditional Final Rejection (Proposal 2)Proposal 2 would eliminate the ACP/RAN practice and replace it with a final office action. This proposal would require amendments to 37 C.F.R. §§ 1.949-1.953. (This change would shave considerable time off of pendency figures).Eliminate Cross Appeal Practice (Proposal 3)Proposal 3 would no longer allow third parties to appeal those rejections that are not adopted in cases where the claims stand rejected on other grounds. The PTO points out that this change would be consistent with appellate practice of the district courts.OtherIn addition to these proposals, the USPTO seeks feedback on the following general propositions:1. Should the USPTO proceed with any efforts to streamline the procedures governing ex parte and/or inter partes reexamination proceedings?2. Should the USPTO place word limits on requests for ex parte and/or inter partes reexamination?3. Should the USPTO revise its existing page or word limits in inter partes reexamination following the request?4. Should the USPTO place any limitation or criteria on the addition of new claims by a Patent Owner in reexamination? If so, what kind of limitation or criteria?5. Should the USPTO change its interpretation of ‘‘a substantial new question of patentability’’ to require something more than ‘‘a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable’’? See MPEP §§ 2242, 2642. If so, how should it be interpreted?6. How much time should Patent Owners and Third Party Requesters ordinarily be given to submit a statement, response, or appeal where the time for filing the statement, response, or appeal is set by the USPTO rather than by statute?7. Under what conditions should the USPTO grant a Patent Owner’s request for an extension of time under 37 CFR 1.550(c) or 1.956, both of which provide that extensions of time may only be granted for ‘‘sufficient cause and for a reasonable time specified’’? 8. Should the USPTO require that any information disclosure statement (IDS) filed by a Patent Owner in a reexamination comply with provisions analogous to 37 CFR 1.97 and 1.98, and further require that any IDS filed after a Notice of Intent to Issue a Reexamination Certificate (NIRC) or notice of appeal be accompanied by:     (1) an explanation of why the information submitted could not have been submitted earlier, and (2) an explanation of the relevance of the information with regard to the claimed invention? 9. Under what conditions should a reexamination proceeding be merged with another reexamination or reissue proceeding? 10. What relief can and should be given to a Third Party Requester that shows that it did not receive a Patent Owner’s statement or response within a certain number of days after the date listed on the Patent Owner’s certificate of service? How many days and what kind of showing should be required? 11. Should the USPTO encourage and/or require that all correspondence in reexamination proceedings be conducted electronically (e.g., e-filing parties’ documents, e-mailing notices of Office actions and certificates)? 12. Should reexamination proceedings remain with the Board in cases where the Board has entered a new ground of rejection on appeal and the Patent Owner seeks to introduce new evidence and amendments? In particular, is it more efficient for three administrative patent judges or a single examiner to decide issues involving new evidence and amendments? 13. What other changes can and should the USPTO make in order to streamline reexamination proceedings?I will explore many of these issues in more detail in the weeks to come.
As discussed previously, the USPTO has been hard at work formulating proposed changes to patent reexamination that would reduce pendency and streamline these important office proceedings as a transitional step toward implementing the legislative changes of the America Invents Act. Tomorrow, the USPTO will publish a collection of working concepts and initiatives in the Federal Register. Based upon public commentary, the USPTO will later implement the various proposals via a formal rule-making process, or through internal policy changes. (an advance copy of the proposal is found here)

The proposals are directed to both ex parte and inter partes patent reexamination. Some of the more interesting proposals include an examiner identifying a representative SNQ from a group of cumulative SNQs, and a requirement that requesters explain how submitted SNQs are different with respect to each other. (See my January 2010 proposal of these very solutions here).

A short overview of each proposal is detailed next:

Ex Parte & Inter Partes Proposals

Standardization of Patent Reexamination Request Formats (Proposals 1-2)

Proposal 1 would require, as part of the presentation of the SNQ, an explanation of how the SNQ is different from issues previously considered by the Office. While an SNQ discussion should always explain how a technological teaching is “new,” the USPTO finds that this practice inconsistent. As such, Proposal 1 seems more of an attempt to codify a current best practice.

Proposal 2 also appears to be an attempt to codify a current best practice of identifying all limitations of a claim. Interestingly, the proposal states that this can be done via claim chart or narrative, but not both.

SNQ Management (Proposals 3-4)

Proposal 3 would allow examiners to more readily group proposed SNQs as cumulative with respect to others unless Requesters explain why seemingly cumulative SNQs are unique. If an examiner finds cumulative SNQs, one will be selected as representative of the group.

Proposal 4 outlines the manner by which representative rejections are grouped by an examiner, and how they are appealed together with all adopted rejections. The selection of a representative rejection is not petitionable, however, Inter Partes Requesters may comment on the selection of a particular rejection (more on that below)

Limiting Requester Declaration Evidence to Rebuttal (Proposal 5)

Proposal 5  would require most third party declaration evidence to be submitted together with the request. Later submissions would be limited to rebuttal of points raised by the examiner or patent owner. Any submission of such evidence after the request stage would require a statement as to how the evidence is limited to issues newly raised.

Limiting Patent Owner Amendments to First Action (Proposal 6)

Proposal 6 arguably reflects current practice. Namely, amendments must be submitted before a final rejection unless directed to a matter of form, claim cancellation or the like. This proposal alludes to the fact that Patentees refusing to waive the patent owner statement may surrender their right to amend altogether. (more on the change to the pilot program below)

Requiring Statement of Compliance with 35 U.S.C. § 305 (Proposal 7)

Proposal 7would require all amendments to be accompanied by a statement explaining how the change is directed to overcoming an SNQ. The concern here is that changes may be made to claims for reasons unrelated to patentability, such as claim construction. Of course, such changes are already improper based upon 35 U.S.C. § 305. This statement would be an additional safeguard for defendants seeking patent reexamination parallel to litigation claim construction proceedings. (i.e., inequitable conduct opportunity)

Clarify Petition Practice (Proposal 8)

Perhaps the most immediately helpful aspect of the various proposals is provided below. The chart below clearly explains when it is appropriate to oppose the most common patent reexamination petitions.

            Examples of Petitions Filed in Reexamination Proceedings

Relief requested

Petitionable?

Opposable?
Review of refusal to grant ex parte or inter partes reexam (see MPEP 2248, 2648) Yes—1.181 No.
Vacate as ultra vires an order granting ex parte or inter partes reexam (see MPEP 2246, 2646) Yes—1.181 Yes.
Review of a finding of an SNQ in an order granting ex parte or inter partes reexam (see 75 FR 36357) No (but see 75 FR 36357in ex parte reexam) No.
Vacate filing date of ex parte or inter partes reexam based on failure to comply with 37 CFR 1.510 or 1.915 Yes—1.181 Yes.
Extension of time to respond to an Office action by Patent Owner in ex parte reexam Yes—1.550(c) No.
Extension of time to respond to an Office action by Patent Owner in inter partes reexam Yes—1.956 No.
Extension of time to submit comments by Third Party Requester (see 35 USC 314(b)(2)) No No.
Extension of time to file a notice of appeal or brief on appeal by Patent Owner in ex parte reexam (see 37 CFR 41.31, 41.37, 41.43) Yes—1.550(c) No.
Extension of time to file a notice of appeal or brief on appeal by any party in inter partes reexam (see 37 CFR 41.61, 41.66) Yes—1.183 No.
Striking another party’s improper paper (or portion thereof) from the file Yes—1.181 Yes.
Protection of proprietary information being submitted under seal Yes—1.59(b) Yes.
Waiver of page or word limit requirement Yes—1.183 No.
Review of refusal to enter amendment Yes—1.181 Yes.
Withdrawal of final Office action Yes—1.181 Yes.
Revival of terminated proceeding based on Patent Owner’s “unavoidable” delay and acceptance of late paper Yes—1.137(a) No.
Revival of terminated proceeding based on Patent Owner’s “unintentional” delay and acceptance of late paper Yes—1.137(b) No.
For jurisdiction to be transferred to the Office of Patent Legal Administration No No.
Suspend inter partes reexam for “good cause” under 35 USC 314(c) Yes—1.182 Yes.
Terminate inter partes reexam based on estoppel under 35 USC 317(b) Yes—1.182 Yes.

Ex Parte Proposals Only

Make Pilot Program for Waiver of Patent Owner Statement Permanent (Proposal 1)

Proposal 1  would permanently adopt the Program for Waiver in ex parte patent reexamination proceedings.

Allow for First Action Final for Patentees Refusing to Waive Statement (Proposal 2)

Proposal 2 recognizes that although the Waiver Program provides a great opportunity for the Office to reduce pendency, to date, Patentees are not cooperating. (see my most recent case study on this issue here). This rule would essentially punish those Patentees that do not agree to the waiver, by issuing a first action final. If the Patentee agrees to waiver, a first action would issue together with the grant, otherwise, a provisional first action is issued with the grant, and after the statement period, a final action is issued.

Inter Partes Proposals Only

Ability to Dispute Representative SNQ Finding (Proposal 1)

Proposal 1 would allow a Requester to present arguments directed to those rejections held in abeyance as cumulative. (to either the examiner or Board)

Consolidate ACP/RAN Practice to More Traditional Final Rejection (Proposal 2)

Proposal 2 would eliminate the ACP/RAN practice and replace it with a final office action. This proposal would require amendments to 37 C.F.R. §§ 1.949-1.953. (This change would shave considerable time off of pendency figures).

Eliminate Cross Appeal Practice (Proposal 3)

Proposal 3 would no longer allow third parties to appeal those rejections that are not adopted in cases where the claims stand rejected on other grounds. The PTO points out that this change would be consistent with appellate practice of the district courts.

Other

In addition to these proposals, the USPTO seeks feedback on the following general propositions:

1. Should the USPTO proceed with any efforts to streamline the procedures governing ex parte and/or inter partes reexamination proceedings?

2. Should the USPTO place word limits on requests for ex parte and/or inter partes reexamination?

3. Should the USPTO revise its existing page or word limits in inter partes reexamination following the request?

4. Should the USPTO place any limitation or criteria on the addition of new claims by a Patent Owner in reexamination? If so, what kind of limitation or criteria?

5. Should the USPTO change its interpretation of ‘‘a substantial new question of patentability’’ to require something more than ‘‘a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable’’? See MPEP §§ 2242, 2642. If so, how should it be interpreted?

6. How much time should Patent Owners and Third Party Requesters ordinarily be given to submit a statement, response, or appeal where the time for filing the statement, response, or appeal is set by the USPTO rather than by statute?

7. Under what conditions should the USPTO grant a Patent Owner’s request for an extension of time under 37 CFR 1.550(c) or 1.956, both of which provide that extensions of time may only be granted for ‘‘sufficient cause and for a reasonable time specified’’?

 8. Should the USPTO require that any information disclosure statement (IDS) filed by a Patent Owner in a reexamination comply with provisions analogous to 37 CFR 1.97 and 1.98, and further require that any IDS filed after a Notice of Intent to Issue a Reexamination Certificate (NIRC) or notice of appeal be accompanied by:

     (1) an explanation of why the information submitted could not have been submitted earlier, and (2) an explanation of the relevance of the information with regard to the claimed invention?

 9. Under what conditions should a reexamination proceeding be merged with another reexamination or reissue proceeding?

 10. What relief can and should be given to a Third Party Requester that shows that it did not receive a Patent Owner’s statement or response within a certain number of days after the date listed on the Patent Owner’s certificate of service? How many days and what kind of showing should be required?

 11. Should the USPTO encourage and/or require that all correspondence in reexamination proceedings be conducted electronically (e.g., e-filing parties’ documents, e-mailing notices of Office actions and certificates)?

 12. Should reexamination proceedings remain with the Board in cases where the Board has entered a new ground of rejection on appeal and the Patent Owner seeks to introduce new evidence and amendments? In particular, is it more efficient for three administrative patent judges or a single examiner to decide issues involving new evidence and amendments?

 13. What other changes can and should the USPTO make in order to streamline reexamination proceedings?

I will explore many of these issues in more detail in the weeks to come. Also, as I will be coordinating the ABA response to these proposals, I welcome any and all comments.