Updated October 6th (see end of post)
While living dangerously, Star Scientific seems to have somehow avoided disaster. Although the petition decisions have not yet been posted to PAIR, a press release issued yesterday noted that the USPTO had revoked the NIRCs of May 12, 2010. (petitions granted-in-part). A revised press release seems to have issued later noting that the PTO was just “considering” reopening prosecution.
Back in May, we discussed Star’s submission of an interview agenda in place of an interview summary. (See 90/009,372 and 90/009,375). Subsequently, Star tried to convince the USPTO that the proposed agenda (which was submitted prior to the interview) actually was a summary of the the interview itself. On May 17, 2010, Star submitted the agenda again, with an expert declaration explaining that the PTO rules were satisfied by the interview agenda.
While the actual petition decisions are not yet available, it is clear that the PTO is accepting that Star submitted “something” thus avoiding termination (for now anyway), but is requiring Star either explain how the agenda reflects the actual discussion of the interview, or to petition for revival of the proceeding under 37 C.F.R. § 1.137 along with an actual interview summary. In their press release, Star reports the later action as the simple filing of a “routine petition”….which begs the question: Why didn’t Star just do that in the first place?
The much easier road to resolving this issue would have been for Star to simply provide an interview summary (i.e., not the agenda) along with the “routine petition,” which would have been decided within the Central Reexamination Unit, at most, in a few weeks time. Instead, Star filed a petition under 37 C.F.R. § 1.182. (provided to address issues not specifically provided for by the rules, unlike this situation). In doing so, their petition went to the Office of Patent Legal Administration (OPLA). Since OPLA has a lot more petitions to decide, there is a backlog of several months. Meanwhile, the files for Star’s reexaminations, were forward to the Office of Publications. Star is very fortunate that the reexamination certificates did not print in the interim.
Why Star chose the more tortuous route is known only to them, perhaps it was litigation inspired. Star’s reexamined patents are asserted in a litigation against RJR, a unit of Reynolds American Inc., now on appeal to the Federal Circuit. It may be that there was some concern about filing a petition to revive based upon uncertainties as to the propriety of this practice (Aristocrat v. IGT) However, cert was denied in that case by SCOTUS back in 2009, so, who knows…either way, I expect that Star will now, eventually get their reexaminations back on track.
Yet, clearly this is a road best avoided. Interview summaries are serious business in ex parte patent reexaminations.
The petition decision is now public (here). Two petitions were filed back in May. The CRU decided the first, since it did not identify an appropriate rule. (i.e., the CRU treated it as a petition under 1.181). The later petiton (filed a few days after the first) identified Rule 1.182 (considered by OPLA), that petiton will likely to be mooted now.