How to Effectively Prosecute AIA Post-Grant Proceedings
PLI October 20121
I.
POST GRANT REVIEWS ............................................................................................... 2
II.
TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS
(TPCBMP) ......................................................................................................................... 5
III.
INTER PARTES REVIEW ............................................................................................. 6
IV.
SUPPLEMENTAL EXAMINATION ............................................................................. 8
A.
B.
C.
D.
E.
F.
G.
H.
V.
RULES OF PRACTICE IN PATENT CASES ...................................................................10
FEES (§1.20) ...........................................................................................................11
FILING (§1.601) ......................................................................................................11
ITEMS OF INFORMATION (§1.605) ...........................................................................11
CONTENT OF REQUEST (§1.610) .............................................................................11
FORMAT OF PAPER FILED IN PROCEEDING (§1.615) ................................................12
CONDUCT OF PROCEEDING (§1.620) .......................................................................12
CONCLUSION; PUBLICATION OF CERTIFICATE; PROCEDURE FOLLOWING
(§1.625) ..................................................................................................................13
AIA CHANGES TO EX PARTE REEXAMINATION .............................................. 14
A.
B.
C.
D.
VI.
ESTOPPEL ATTACHED TO EX PART REEXAMINATION REQUEST ..............................14
DETERMINATION OF THE REQUEST FOR EX PARTE REEXAMINATION 37
C.F.R. § 1.515 ........................................................................................................15
SCOPE OF REEXAMINATION IN EX PARTE REEXAMINATION 37 C.F.R. §
1.552.......................................................................................................................15
FINAL RULES ..........................................................................................................15
1.
§ 1.510 REQUEST FOR EX PARTE REEXAMINATION. ...................................... 16
2.
§ 1.515 DETERMINATION OF THE REQUEST FOR EX PARTE REEXAMINATION. 16
3.
§ 1.552 SCOPE OF REEXAMINATION IN EX PARTE REEXAMINATION
PROCEEDINGS. .............................................................................................. 16
4.
37 CFR § 1.510 - REQUEST FOR EX PARTE REEXAMINATION ........................ 17
DERIVATION PROCEEDING SUMMARY .............................................................. 17
GENERAL BACKGROUND .................................................................................................... 17
A.
B.
C.
D.
1
REQUIREMENTS TO INSTITUTE A PROCEEDING ........................................................18
MISCELLANEOUS RULES .........................................................................................19
NOTES ON THE RULES .......................................ERROR! BOOKMARK NOT DEFINED.
DISCUSSION OF SPECIFIC RULES .......................ERROR! BOOKMARK NOT DEFINED.
Special thanks to the Intellectual Property Student Association of the University of the Pacific, McGeorge School
of Law, including Ronak Patel, Andrey Shostak, Jennifer Krenzin, and Wa La, for helping research and author this
document.
I. POST GRANT REVIEWS
Post grant review is a creation of the American Invents Act, that will allow the Patent
Trial and Appeal Board to review a single or multiple claims of a patent in connection with
§ 282(b)(2), or (3), which includes §§ 101, 102, 103, and 112 (excluding best mode). Post grant
reviews are triggered by anyone other than the patent owner who files on the date or within nine
months of the date when a patent issues or a reissue patent is granted. Where a challenged patent
is a reissue patent, and the subject claims are narrower than claims in the original patent, an
action may not be brought if such an action against the original patent would be barred by the
post grant review available to the original patent.
To file a post grant review, a challenger must demonstrate that, if not rebutted, it is “more
likely than not at least 1 of the claims challenged in the petition is unpatentable.” 2 This standard
requires a greater than 50% chance of success. Alternatively, under 35 U.S.C. 324(b), a
challenger may proceed if he or she can show that his or her “petition raises a novel or unsettled
legal question that is important to other patents or patent applications.” 3 The Board may choose
to review only some of the claims. In terms of usable prior art, the patentee is not limited to
printed publications or patents.
The time period for a patentee to file a preliminary response is three month; the
preliminary response can challenge the post grant review if the petition fails to satisfy the
requirements of chapter 32 of title 35 of the U.S.C. A preliminary response cannot propose
amendments or new testimonial evidence beyond that already of record. A petition is valid
where:
(1) The petition is accompanied by payment of the fee established by the Director
under 35 U.S.C. 321;
(2) the petition identifies all real parties in interest;
(3) the petition identifies, in writing and with particularity, each claim challenged,
the grounds on which the challenge to each claim is based, and the evidence
that supports the grounds for the challenge to each claim, including
(A) copies of patents and printed publications that the petitioner relies
upon in support of the petition and
2
3
35 U.S.C. § 324(a); Office Patent Trial Practice Guide, 74 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
35 U.S.C. § 324(b); Office Patent Trial Practice Guide, 74 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
2
(B) affidavits or declarations of supporting evidence and opinions, if the
petitioner relies on other factual evidence or on expert opinions;
(4) the petition provides such other information as the Director may require by
regulation; and
(5) the petitioner provides copies of any of the documents required under
paragraphs (2), (3), and (4) of 35 U.S.C. 322(a) to the patent owner or, if
applicable, the designated representative of the patent owner. 35 U.S.C.
322(b) provides that, as soon as practicable after the receipt of a petition under
35 U.S.C. 321, the Director will make the petition available to the public. 4
The director has three months from the filing of a preliminary response, or from the last date on
which such a response could have been filed, to decide whether to conduct a post grant review.
The filing date will not be issued until the payment for the petition has been paid.
For a petitioner to prevail, they must have standing which requires that they can at least
certify that post grant review is available and that the petition “is not barred or estopped from
requesting a post grant review challenging the patent claims.” 5 If, on its face, a petition does not
demonstrate standing, its merits will not be discussed. Furthermore, a petition must “identify the
precise relief requested for the claims challenged.” 6 This requires the petitioner to identify the
challenged claims, note specific statutory grounds of that challenge, the proper construction of
the claims, why that construction and the grounds for challenge indicate unpatentability, “and the
exhibit numbers of the evidence relied upon with a citation to the portion of the evidence that is
relied upon to support the challenge.” 7 A petition must also list all real parties in interest. There
is a one-month period to correct defects where a petition does not meet the statutory
requirements, unless the statutory period for post grant review has expired.
Service can be made by express mail or, if the parties agree, electronically; personal
service is not required. A patentee may disclaim any of their claims; if they do, no post grant
review will be instituted for those claims. If the proceeding has been instituted and has not been
dismissed, the Board will make a determination within one year, subject to a six-month extension
for good cause, or a time period alteration to permit joinder under § 325(c) (joinder must be
4
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48685 (Aug. 14, 2012).
5
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48691 (Aug. 14, 2012).
6
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48691 (Aug. 14, 2012).
7
37 C.F.R. § 42.204(b) Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings,
and Transitional Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48691 (Aug. 14,
2012).
3
requested within one month of institution). Post grant reviews become available on September
16, 2012, and apply to patents arising under the first-to-file provisions of the AIA. Where
multiple petitions are filed for post grant review, the Director may consolidate those petitions;
where a petition relies on prior art previously considered by the Board, the director may choose
to reject a petition.
Additional discovery may be requested only where “evidence directly related to factual
assertions advanced by a party to the proceeding” 8 and the request meets the good cause
standard. The good cause standard is similar, but not as high as (or considering as much as), than
the interest of justice standard used for inter partes review. Good cause is met where a party
shows “a specific factual reason to justify the needed discovery.” 9
During a post grant review, a patent owner can file a single motion in order to amend a
patent by canceling a single or multiple challenged claims, or by proposing a reasonable number
of substitute claims for each challenged claim, or both. Further motions can be filed where a
patent owner and a petitioner jointly request a change that would materially advance a settlement
between the parties. Additionally, a patent owner may themselves request a change where good
cause allows for it. 10 However, no amendment which enlarges the scope of the patent or which
injects new matter into the patent will be allowed. Additionally, new claims are subject to
intervening rights described in § 252.
Disputes may be resolved through settlement between the patent owner and the
petitioner. If parties settle a dispute, the post grant review will be terminated, unless the Board
has already reached a decision on the merits. Where no petitioner remains, the Board may
terminate the proceeding or issue a final decision. If a settlement is reached, any agreements or
collateral agreements connected with the settlement must be disclosed in writing; the agreement
will be treated as business confidential information except where other agencies request the
information, or a member of the public, with good cause, makes such a request.
An unsuccessful challenger can appeal to the Federal Circuit. If a final written decision
has issued on a post grant review, the decision can serve as estoppel against the petitioner or real
8
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48693 (Aug. 14, 2012).
9
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48693 (Aug. 14, 2012).
10
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48686 (Aug. 14, 2012).
4
parties in interest or in privity with the petitioner from relitigating the issue considered in the
post grant review or issues that could have been raised in the post grant review actions before the
PTO, in certain civil actions, including district court actions, and proceedings before the United
States International Trade Commission. However, where a post grant review was terminated by
cause of settlement, estoppel does not attach.
Where a post-grant review has been filed, the petitioner or the real party in interest may
not file a district court action against the patent. This, however, excludes counterclaims by the
petitioner or real party in interest in suits for infringement lobbied against them. An action in a
district court prior to filing a post grant review petition precludes such review. If the district
court action occurs after the petition has been filed, than the action is subject to an automatic
stay, unless certain conditions are met. If the patentee, however, brings an action for a
preliminary injunction within three months of the patent’s issuance, the motion may not be
stayed.
II. TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS
(TPCBMP)
TPCBMP is available for patents claiming “a method or corresponding apparatus for
performing data processing or other operations used in the practice, administration, or
management of a financial product or service, except that the term does not include patents for
technological inventions.” 11
TPCBMP proceeds as would a post grant review, with some differences. For one, as a
prerequisite for using TPCBMP, the petitioner or real party interest must be a charged with
infringement suit by the patentee. A party is charged with infringement where a controversy is
real and substantial, such that the underlying patent would be subject to a declaratory judgment
proceeding. In TPCBMP, a patent owner’s ability to cancel a claim under 35 U.S.C. 282(b)(2),
(3) is limited by 35 U.S.C. 321(b) rules on prior art (the petitioner may only use
prior art that is described by section 102(a) of such title of such title (as in effect
on the day before such effective date); or . . . . prior art that . . . . discloses the
invention more than 1 year before the date of the application for patent in the
United States; and . . . . would be described by section 102(a) of such title (as in
effect on the day before the effective date set forth in section 3(n)(1)) if the
11 11
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48687 (Aug. 14, 2012).
5
disclosure had been made by another before the invention thereof by the applicant
for patent. 12
Furthermore, reviews under the TPCBMP are not subject to the filing time requirements
of post grant reviews, nor are they subject to estoppel rules relating to civil proceedings outside
of the PTO, or to the rules regarding challenges to claims in reissue patents. An action under
TPCBMP may not be filed, however, in the time that a post grant review could be filed.
III. INTER PARTES REVIEW
Inter partes review is a mechanism for a third party to challenge a patent’s validity in
respect to validity under §§ 102 or 103, even for patents issued before that date. In an inter partes
review, printed publications and patents are the only prior art that may be used. A petition for
inter partes review may be filed “after the later of either (1) 9 months after the grant of the patent
or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the
post grant review.” 13
To file for inter partes review, the third party must be able to show a reasonable
likelihood of success as to at least one claim. A valid petition, in addition to having paid the fee
and identified each real party in interest, will “identify, in writing and with particularity, each
claim challenged, the grounds on which the challenge to each claim is based, and the evidence
that supports the grounds for the challenge to each claim, including: (A) Copies of patents and
printed publications that the petitioner relies upon in support of the petition and (B) affidavits or
declarations of supporting evidence and opinions, if the petitioner relies on expert opinions. “14
Additionally, a petition must meet any other requirements imposed by regulations. Finally, a
petitioner must provide the patent owner or their designated representative with documents
required by 35 U.S.C. § 313(a)(2)-(4). A petition may be challenged by a preliminary response
which indicates the petitions failure to meet the requirements of chapter 31 of U.S.C. Title 35.
To institute a inter partes review, a petition must demonstrate that there is a “reasonable
likelihood that petitioner would prevail with respect to at least one of the claims challenged in
12
America Invents Act § 18(a)(1)(C).
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48682 (Aug. 14, 2012).
14
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48682 (Aug. 14, 2012).
13
6
the petition.” 15 The Director will decide if they should institute a review within three months
from when the preliminary response has been filed; if no preliminary response is filed, the
director will decide within three months of the last date a petition could have been filed. The
Director will notify the patent owner, the petitioner, and the public of whether or not a review is
instituted, and what date the review shall occur. The ultimate decision to institute a review or to
deny a review cannot be appealed.
A petition for inter partes review is subject to the same service and time frame for
corrections. Additionally, the board has the same flexibility in determining which claims to grant
review.
Where a petitioner or real party in interest files a civil action challenging one or more
claims of a patent prior to requesting inter partes review, inter partes review cannot be instituted.
If the civil case is filed after the petition for review, the civil case is subject to an automatic stay
until certain conditions are satisfied. However, a review is not precluded nor is a case stayed
where the petitioner or real party in interest has only filed a counterclaim. Where a complaint has
been served on the petitioner or real party in interest, any action for inter partes review must be
brought within one year of that complaint being served, except for joinder; the Director may join
any party to an inter partes review who files a petition. If such a petition is properly filed, the
director will determine whether joinder is appropriate (although they will first allow for a
preliminary response, and wait until after such a response could have been found). Where other
proceedings or matters on the patent are being considered, the Director may choose how that
review or those proceedings advance, and may provide for the “stay, transfer, consolidation, or
termination of any such matter or proceeding.” 16
If, in the course of a proceeding, the Board is considering a claim in an expired patent,
the board will give that claim the broadest possible construction.
As with post grant proceedings, a patentee may amend their claims by either cancelling
some or all challenged claims, or by proposing substitute claims, though only a reasonable
amount of such claims may be proposed. The first motion to amend will be accepted, and
subsequent motions to amend will be accepted if good cause exists. Motions to amend may also
15
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48682 (Aug. 14, 2012).
16
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
Program for Covered Business Method Patents; Final Rule, 74 Fed. Reg. 48680, 48682 (Aug. 14, 2012).
7
proceed if the petitioner and patent owner jointly request an amendment which materially
advances settlement between the parties. However, no claims may be offered which would
enlarge a claim’s scope, or which injects new matter. Where a new claim has been used, the new
claim will be subject to intervening rights in the same way that reissue patents are under 35
U.S.C. § 252.
The Patent Trial and Appeal Board will be responsible for these reviews; where a
proceeding has not been dismissed, the Board will issue a final determination within a year. If
good cause can be shown, a (not more than) six-month extension may be granted. The Director
may also alter the time period to allow for joinder. A petitioner will prevail where they can
establish unpatentability by a preponderance of the evidence.
Where settlement has been reached, the patentee and petitioner, as to that petitioner, may
dismiss an action upon joint request unless the Board has already reached a decision on the
merits. If no petitioner remains in the case, the PTO may issue a final decision or dismiss the
case. Like post grant proceedings, any and all agreements that were contemplated in reaching
settlement or that are associated with the settlement must be filed with the PTO. Like post grant
proceedings, this information is treated as business confidential information.
A party to an inter partes review may appeal the decision to the Federal Circuit. Where a
final decision has been issued and the decision is not appealed, the decision can serve as estoppel
against the petitioner and real parties in interest. This estoppel extends to not only the claims that
were challenged, but also as to any claims that could have reasonably been raised. However,
estoppel does not attach where a decision was reached by settlement.
IV. SUPPLEMENTAL EXAMINATION
The Leahy-Smith America Invents Act (AIA) was enacted on September 16, 2011. 17 In
addition to substantial changes affecting the initial application and grant of a patent, the AIA
creates new procedures for post grant review of patents. 18 Two of these procedures, post grant
review and inter partes review, are only available for non-patent owners, and must be requested
in the proper time frame (within 9 months of issuance and more than 9 months after issuance,
respectively). 19 In contrast, the new supplemental examination (SE) procedure is only available
17
Leahy Smith America Invents Act (AIA), PUB. L. NO. 112-29, 125 Stat. 284 (2011).
Leahy Smith America Invents Act, tit. 35, ch. 31, sec. 6, §§ 311-319 (2011) (inter partes review); Leahy Smith
America Invents Act, tit. 35, ch. 32, sec. 6, §§ 321-329 (2011) (post grant review).
19
See 35 U.S.C. § 331-319 (2011); 35 U.S.C. §§ 321-329 (2011).
18
8
to patent owners, and can be requested at any time during a patent’s enforceability. 20 These new
procedures under the AIA take effect on September 16, 2012, and apply to all patents issued
before, on, or after that date. 21
The purpose and effect of the SE procedure under the AIA is to allow patent owners to
cleanse a patent that may have been tainted by conduct relating to the issuance. 22 Specifically,
SE is appropriate where information relevant to patentability was omitted, inadequately
considered, or incorrectly provided to the Office. 23 The primary benefit of this procedure for
patent owners is to preclude opposing parties from asserting a defense of unenforceability of
relevant claims due to inequitable conduct. 24 Also, because the AIA requires that the SE be
conducted within three months of a properly filed request, a patent owner seeking review will
have a relatively quick disposition of the SE.25 Any patent owner may file a request during the
period of enforceability, with two exceptions. 26 The first arises when, before an SE request is
filed, specific allegations have been pled in a civil action or by notice under the FDCA. 27 The
second arises when, before SE and any ordered reexamination are concluded, the defense is
raised in a patent enforcement action. 28
If a patent owner wishes to seek SE, the procedure begins with the filing of a request. 29
The regulations that govern the request, the proceeding, and associated fees are issued and
administered by the United States Patent and Trademark Office (Office). 30 Provided the request
is filed properly, the Office will examine whether the additional information provided raises a
substantial new question of patentability (SQP). 31 The standard is “whether there is a substantial
likelihood that a reasonable examiner would consider the item of information important in
determining patentability.” 32 If the Office determines that one or more SQP were presented,
20
Leahy Smith America Invents Act, tit. 35, ch. 25, sec. 12, § 257 (2011).
35 U.S.C.A. § 311 (2011); 35 U.S.C.A. § 321 (2011); 35 U.S.C.A. § 257 (2011).
22
Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To
Revise Reexamination Fees, Final Rule, 77 Fed Reg. 48,828 (Aug. 14, 2011) (codified at 27 C.F.R. pt. 1).
23
Id.
24
Id.
25
Id.; 35 U.S.C.A. § 257(a).
26
35 U.S.C.A. § 257(a), (c)(2)(A)-(B).
27
Id.
28
Id.
29
35 U.S.C.A. § 257(a).
30
See 37 C.F.R. pt. 1.
31
35 U.S.C.A. § 257(a).
32
See Manual of Patent Examining Procedure §§ 2222 (Rev. 8, July 2010) (MPEP).
21
9
reexamination of the patent shall be ordered. 33 A public certificate stating the Office’s
conclusion on whether an SQP was raised shall be issued regardless. 34
Although SE and reexamination proceedings are generally initiated and directed by the
patent owner, the AIA explicitly states that the statute should not be read to preclude the right of
the Director to independently investigate misconduct and impose sanctions in connection with
the proceedings. 35 More specifically, if the possibility of material fraud arises, the Director shall
take all relevant actions in completing the proceeding and also notify the Attorney General for
possible further action. 36 The Office has indicated 37 that material fraud, as used in this
subsection, will be interpreted as narrower than inequitable conduct under Therasense, Inc. v.
Becton, Dickinson & Co, 38, itself narrower than the current rule on inequitable conduct and the
materiality standard 39.
A. RULES OF PRACTICE IN PATENT CASES 40
The authority for issuing regulations concerning the rules of patent practice is derived
from 35 U.S.C. § 2(b)(2), which gives the Office broad power to govern patent proceedings. The
AIA also specifically authorizes the Office to issue regulations governing the fees and
procedures associated with SE. 41 Under this authority, the Office has published proposed rules 42,
considered comments submitted by the public 43, and issued revised final rules to amend the fees
associated with filing and add new regulations governing the SE procedure. 44 New regulations
cover: filing, items of information, content of the request, format of filed papers, conduct of the
proceeding, and conclusive procedure. 45 In revising the proposed rules, the Office simplified the
requirements for the request to parallel the requirements for post grant reexamination. 46 One
significant difference remains between the two procedures: only patents and printed publications
33
35 U.S.C.A. § 257(b).
35 U.S.C.A. § 257(a).
35
35 U.S.C.A. § 257(f).
36
35 U.S.C.A. § 257(e)
37
See Final Rule, supra note 6, at 48,829; 37 C.F.R. § 1.625(d)(4).
38
Therasense, 649 F.3d 1276 (Fed. Cir. 2011).
39
37 C.F.R. §1.56 (1992).
40
(amending 37 C.F.R. pt. 1)
41
35 U.S.C.A. § 257(d)(1)-(2).
42
Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To
Revise Reexamination Fees, Proposed Rules, 77 Fed. Reg. 3,666 (Jan. 25, 2012).
43
See Final Rule, supra note 6, at 48, 837.
44
See 37 C.F.R. pt. 1.
45
37 C.F.R. pt. 1, sub. E, §§ 1.601, 1.605, 1.615, 1.620, 1.625.
46
Final Rule, supra at note 6, at 48,830.
34
10
may be filed to support an action initially filed as a post grant reexamination, whereas an SE
request and any resulting reexamination is not limited to patents and printed publications but
may also include any other relevant written documents. 47
B. FEES (§1.20)
§ 1.20 amends the fee schedule to reflect the cost of new and altered procedures. In SE
proceedings, the patent owner shall pay: $5,140 for the request; $16,120 for an order of ex parte
examination (refunded if not ordered); and $170 per non-patent document over 20 pages, plus
$280 for each additional 50 pages or fraction thereof. 48
C. FILING (§1.601)
A request may be filed at any time during the patent’s period of enforceability49, by the
owner of entire right, title, and interest 50. Third parties are prohibited from participating. 51
D. ITEMS OF INFORMATION (§1.605)
The patent owner shall include written 52 items of information, including any
document believed to be relevant to the patent, to support the request and provide the basis of
examination to be considered, reconsidered, or corrected. 53 Only twelve items are permitted per
request, but any number of requests may be filed. 54 The discussion in the request will be
considered one item for each item of information raised entirely in the body of the request. 55
Each item submitted is counted separately, except that accompanying translations and summaries
of documents over 50 pages are not considered additional items of information. 56
E. CONTENT OF REQUEST (§1.610)
Fees are due with the request. 57 The request must also include 58: identification of patent
number; 59 a list of items in request, subject to §1.98(b) where relevant; 60 a list of the type,
47
37 C.F.R. §§ 1.605(b), 1.625(d)(2).
37 C.F.R. § 1.20(k)(1)-(3).
49
37 C.F.R. § 1.601(c).
50
37 C.F.R. § 1.601(a).
51
37 C.F.R. § 1.601(b).
52
37 C.F.R. § 1.605(c) (in accordance with § 1.2).
53
37 C.F.R. § 1.605(b).
54
37 C.F.R. § 1.605(a).
55
37 C.F.R. § 1.605(d).
56
Id.
57
37 C.F.R. § 1.610(a).
58
37 C.F.R. § 1.610(b).
59
37 C.F.R. § 1.610(b)(1).
48
11
identifying number, and filing date of any prior/concurrent post-patent Office proceedings; 61
identification of each claim to be examined; 62 explanation of relevance and manner of applying
each item to each claim; 63 a copy of the patent and any disclaimers/certificates issued; 64 a copy
of each item of information, with translations of non-English items, except that copies of the
request as an item and copies of US patents or applications publications are not required; 65
summary of any document over 50 pages, with citations to relevant portions; 66 identification of
the entirety of ownership, submitted by patent owner in compliance with §3.73(c). 67
The request may also include: itemized coversheet; table of contents; explanation of how
claims are patentable over items provided; explanation as to each item and whether the item
raises an SNQ. 68
A filing date will be granted if the request is compliant with §§1.605, 1.615 and this
section; if the request is not found to be compliant (discretionary), the patent owner will be
notified and given the opportunity for timely compliance. 69 Upon compliance, the receipt date of
the corrected request is regarded as the filing date; if compliance never occurs, the fee will be
refunded. 70
F. FORMAT OF PAPER FILED IN PROCEEDING (§1.615)
All papers filed must be must be formatted per §1.52(a), and third party
documents, patents, applications, court documents and non-patent literature must be in original
formatting (as to font, spacing, margins, etc.), but may be redacted. 71
G. CONDUCT OF PROCEEDING (§1.620)
Within three months of filing date, the Office will examine the items of information and
the patent claims in the request to determine if an SQP exists, based on claims in effect at the
60
37 C.F.R. § 1.610(b)(2).
37 C.F.R. § 1.610(b)(3).
62
37 C.F.R. § 1.610(b)(4).
63
37 C.F.R. § 1.610(b)(5).
64
37 C.F.R. § 1.610(b)(6).
65
37 C.F.R. § 1.610(b)(7).
66
37 C.F.R. § 1.610(b)(8).
67
37 C.F.R. § 1.610(b)(9).
68
37 C.F.R. § 1.610(c)(1)-(4).
69
37 C.F.R. § 1.610(d).
70
Id.
71
37 C.F.R. § 1.615.
61
12
time. 72 Generally the examination should be limited to review of items as applied to specific
patent claims. 73 The determination on any SQP issue becomes part of official record of patent. 74
The Office may suspend action on any petition or other paper until the supplemental examination
certificate is issued under §1.625. 75 If any other prior or concurrent post-patent Office
proceeding on the patent arises, the patent owner must, as soon as possible, file a notice
consisting of: identification of the type, identifying number, and filing date of the proceeding
(without any discussion of issues). 76 Improper papers filed will not be entered and/or will be
expunged. 77 Interviews are prohibited in an SE proceeding, as are amendments. 78 If the Office
becomes aware of a potential material fraud, the proceeding shall continue and the issue shall be
referred to the Attorney General, per §257(e). 79
H. CONCLUSION; PUBLICATION OF CERTIFICATE; PROCEDURE FOLLOWING (§1.625)
When the SE is concluded, an SE certificate will be issued electronically indicating
whether or not an SQP was raised. 80 If an SQP was raised, ex parte reexamination will be
ordered under §257, and an ex parte reexamination certificate stating such will be issued publicly
upon conclusion of reexamination. 81 If no SQP is raised, the certificate will be issued and ex
parte reexamination fee assessed under §1.20(k)(2) will be refunded under §1.26. 82
An ordered ex parte reexamination will be conducted per §§1.530-1.570 (governing ex
parte reexamination), with a few exceptions: first, there is no right to file a statement under
§1.530, and second, the reexamination may be conducted on the basis of any information
allowed under §1.605, and is therefore not limited to patents, printed publications, and subject
matter added or deleted during reexamination (notwithstanding §1.552(a)). 83 In the ex parte
reexamination, issues beyond the scope of patents, printed publications, and subject matter
addition or deletion can be considered and resolved, notwithstanding §1.552(c). 84 The standard
72
37 C.F.R. § 1.620(a).
Id.
74
37 C.F.R. § 1.620(a).
75
37 C.F.R. § 1.620(b).
76
37 C.F.R. § 1.620(d).
77
37 C.F.R. § 1.620(c).
78
37 C.F.R. § 1.620(f).
79
37 C.F.R. § 1.620(g); 35 U.S.C.A. § 257(e).
80
37 C.F.R. § 1.625(a).
81
37 C.F.R. § 1.625(b).
82
37 C.F.R. § 1.625(c).
83
37 C.F.R. § 1.625(d).
84
37 C.F.R. § 1.625(d)(3).
73
13
for information material to patentability will be defined by §1.56(b), notwithstanding
§1.555(b). 85
V. AIA CHANGES TO EX PARTE REEXAMINATION
The AIA leaves the existing Ex Parte Reexamination Procedures largely intact with the
following notable changes:
A. ESTOPPEL ATTACHED TO EX PART REEXAMINATION REQUEST
Section 6(a) and (d) of the AIA provides for an estoppel that may attach with
respect to the filing of an ex parte reexamination request subsequent to a final
written decision in an inter partes review or post grant review proceeding.
35 U.S.C. § 315(e)(1); 35 U.S.C. § 325(e)(1); 77 Fed. Reg. 46616 (August 6,
2012).
This final rule revises the ex parte reexamination rules to require that a third party
request for ex parte reexamination contain a certification by the third party
requester that the statutory estoppel provisions of inter partes review and post
grant review do not bar the third party from requesting ex parte reexamination.
Id.
There is no requirement in the certification requiring a third party requestor to reveal their
identity in the ex parte reexamination request, thereby allowing the request to be made
anonymously. This final rule does not include the proposed 37 C.F.R. § 1.510 (b)(7) which
stated,
A statement identifying the real party(ies) in interest to the extent necessary to
determine whether any inter partes review or post grant review filed subsequent to
an ex parte reexamination bars a pending ex parte reexamination filed by the real
part(ies) in interest or its privy from being maintained
77 Fed. Reg. 448 (January 5, 2012).
A real part in interest that wishes to remain anonymous when filing a request for
reexamination under 37 CFR 1.510 can do so by utilizing the services of a
registered practitioner. In that case , the practitioner would be certifying that the
real party in interest was not estopped from filing the request. Conversely, an
individual filing a request for reexamination under 37 CFR 1.510 on behalf of
himself cannot remain anonymous as he is required to sign the document that
includes the 37 CFR 1.510 (b)(6) certification.
77 Fed. Reg. 46618 (August 6, 2012).
85
37 C.F.R. § 1.620(d)(4).
14
B. DETERMINATION OF THE REQUEST FOR EX PARTE REEXAMINATION 37 C.F.R. §
1.515
The rules changes state that the Office will not consider patent-owner statements of claim scope
when deciding when to order or institute a post-grant proceeding:
“A written statement * * * shall not be considered by the Office for any purpose
other than to determine the proper meaning of a patent claim in a proceeding that
is ordered or instituted pursuant to section 304, 314, or 324.” The statute prohibits
the use of the statement for any purpose other than determining the claim scope in
a proceeding that has already been ordered or instituted. Therefore, the Office
may not, and will not, consider such statements when the Office is deciding
whether to order or institute a post-patent proceeding.
Id., 46619 (emphasis added).
C. SCOPE OF REEXAMINATION IN EX PARTE REEXAMINATION 37 C.F.R. § 1.552
While the Office previously considered statements of claim scope submitted with a
reexam request to determine claim scope, this rules now explicitly state that such statements may
be referenced in other Office proceedings
Section 6(g) of the AIA amends 35 U.S.C. 301 to expand the information that
may be submitted in the file of an issued patent to include written statements of a
patent owner filed in a proceeding before a Federal court or the USPTO in which
the patent owner took a position on the scope of any claim of the patent. See 37
CFR 1.501. The amendment limits the Office’s use of such written statements to
determining the meaning of a patent claim in ex parte reexamination proceedings
that have already been ordered and in inter partes review and post grant review
proceedings that already been instituted.
Id., 46616.
In other words any statement of the patent owner and any accompanying
information submitted pursuant to 37 CFR 1.501(a)(2) which is of record in the
patent being reexamined (which includes any reexamination files for the patent)
may be used after a reexamination proceeding has been ordered to determine the
proper meaning of a patent claim when applying patents or printed publication.
Id., 46627.
D. FINAL RULES
37 CFR Parts 1, 5, 10, 11, and 41 Changes To Implement Miscellaneous Post Patent
Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 46615, 46631 (August 6,
2012). http://www.gpo.gov/fdsys/pkg/FR-2012-08-06/pdf/2012-18530.pdf
15
1. § 1.510 R EQUEST FOR EX PARTE REEXAMINATION.
(a) Any person may, at any time during the period of enforceability of a patent,
file a request for an ex parte reexamination by the Office of any claim of the
patent on the basis of prior art patents or printed publications cited under § 1.501,
unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request
must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
(b) * * *
(2) An identification of every claim for which reexamination is requested, and a
detailed explanation of the pertinency and manner of applying the cited prior art
to every claim for which reexamination is requested. For each statement of the
patent owner and accompanying information submitted pursuant to § 1.501(a)(2)
which is relied upon in the detailed explanation, the request must explain how that
statement is being used to determine the proper meaning of a patent claim in
connection with the prior art applied to that claim and how each relevant claim is
being interpreted. If appropriate, the party requesting reexamination may also
point out how claims distinguish over cited prior art.
*****
(6) A certification by the third party requester that the statutory estoppel
provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the
requester from filing the ex parte reexamination request.
*****
2. § 1.515 DETERMINATION OF THE REQUEST FOR EX PARTE REEXAMINATION.
(a) Within three months following the filing date of a request for an ex parte
reexamination, an examiner will consider the request and determine whether or
not a substantial new question of patentability affecting any claim of the patent is
raised by the request and the prior art cited therein, with or without consideration
of other patents or printed publications. A statement and any accompanying
information submitted pursuant to § 1.501(a)(2) will not be considered by the
examiner when making a determination on the request. The examiner’s
determination will be based on the claims in effect at the time of the
determination, will become a part of the official file of the patent, and will be
given or mailed to the patent owner at the address provided for in § 1.33(c) and to
the person requesting reexamination.
*****
3. § 1.552 SCOPE OF REEXAMINATION IN EX PARTE REEXAMINATION
PROCEEDINGS.
*****
16
(d) Any statement of the patent owner and any accompanying information
submitted pursuant to § 1.501(a)(2) which is of record in the patent being
reexamined (which includes any reexamination files for the patent) may be used
after a reexamination proceeding has been ordered to determine the proper
meaning of a patent claim when applying patents or printed publications.
4. 37 CFR § 1.510 - R EQUEST FOR EX PARTE REEXAMINATION
(a) Any person may, at any time during the period of enforceability of a patent,
file a request for an ex parte reexamination by the Office of any claim of the
patent on the basis of prior art patents or printed publications cited under § 1.501,
unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request
must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
(b) * * *
(2) An identification of every claim for which reexamination is requested, and a
detailed explanation of the pertinency and manner of applying the cited prior art
to every claim for which reexamination is requested. For each statement of the
patent owner and accompanying information submitted pursuant to § 1.501(a)(2)
which is relied upon in the detailed explanation, the request must explain how that
statement is being used to determine the proper meaning of a patent claim in
connection with the prior art applied to that claim and how each relevant claim is
being interpreted. If appropriate, the party requesting reexamination may also
point out how claims distinguish over cited prior art.
*****
(6) A certification by the third party requester that the statutory estoppel
provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the
requester from filing the ex parte reexamination request.
*****
VI. DERIVATION PROCEEDING SUMMARY
Citations: Changes to Implement Derivation Proceedings,
General Background
35 U.S.C. 135 in effect on March 16, 2013, will provide for petitions to institute a
derivation proceeding at the USPTO for certain applications.” 77 FR 7037.
“These provisions… will… apply to applications for patent, and any patent
issuing thereon, that are subject to first-inventor-to-file provisions of the [AIA].
The new rules for initiating and conducting these proceedings are proposed… as a
new subpart E of new part 42 of title 37 of the Code of Federal Regulations.
77 Fed. Reg. 7037 (Feb. 10, 2012).
Derivation proceedings were created to ensure that the first person to file the
application is actually a true inventor. This new proceeding will ensure that a
17
person will not be able to obtain a patent for the invention that he did not actually
invent. If a dispute arises as to which of two applicants is a true inventor (as
opposed to who invented it first), it will be resolved through derivation
proceeding by the Board.
Id., 7029.
A. REQUIREMENTS TO INSTITUTE A PROCEEDING
An inventor seeking a derivation proceeding must file an application. 35 U.S.C.
135(a). An inventor, however, may copy an alleged deriver's application, make
any necessary changes to reflect accurately what the inventor invented, and
provoke a derivation proceeding by the timely filing of a petition and fee.
Id., 7029.
The petition must: (1) state with particularity the basis for finding that a named
inventor in the earlier application derived the claimed invention from an inventor
named in the petitioner's application and, without authorization, filed the earlier
application, (2) be filed within one year of the first publication by the earlier
applicant of a claim to the same or substantially the same invention, (3) be made
under oath, and (4) be supported by substantial evidence. 77 FR 7029. More
specifically, the requirements are listed in the proposed section 42.405 of title 37
of the Code of Federal Regulations, which can be found on
Id., 7040.
Proposed § 42.407(b) would provide petitioners a one month time frame to
correct defective requests to institute a derivation proceeding, unless the statutory
deadline in which to file a petition for derivation has expired.
Id., 7031.
Proposed § 42.406(a) would require that the petitioner serve the respondent at the
correspondence address of record. Petition may also attempt service at any other
address known to the petitioner as likely to effect service.
Id., 7031.
[I]f the Director determines that the petition demonstrates that the standards for
instituting a derivation proceeding are met, the Director may institute a derivation
proceeding[. The rule also provides] that the determination of whether to initiate a
derivation proceeding is final and nonappealable. A derivation is unlikely to be
declared even where the Director thinks the standard for instituting a derivation
proceeding is met if the petitioner's claim is not otherwise in condition for
allowance.
Id., 7029.
18
B. MISCELLANEOUS RULES
Proposed § 42.410(a) will provide that parties to a derivation proceeding may
determine such contest, or any aspect thereof, by arbitration, except that nothing
shall preclude the Office from determining the patentability of the claimed
inventions involved in the proceeding. The proposed rule is consistent with 35
U.S.C. 135(f) because it would permit arbitration but would not preclude the
Office from independently determining issues of patentability during the course of
the proceeding.” 77 FR 7031. “Given the short time period set for conducting
trials, it is anticipated that the alternative dispute resolution options will be
infrequently used.
Id., 7032-7033.
It will cost $400 to file a petition for derivation. This fee must accompany the
petition, and no filing date will be given until payment is complete. 77 FR 7040.
Total derivation proceeding costs, however, will be much higher. “It is expected
that petitions for derivation will have the same complexity and cost as a petition
for post-grant review because derivation proceedings raise issues of
communication, which have similar complexity to the public use and sale and
written description issues that can be raised in a post-grant review. Thus, the
Office estimates that the cost of preparing a petition for derivation will be
$61,333.
Id., 7037.
One half of derivations are anticipated to end in the preliminary motion period,
while the other half are anticipated to proceed to decision on derivation… The
costs associated with derivations through the preliminary motion period and
through the derivation period should be comparable to the corresponding costs of
current contested cases before the trial section of the Board.
Id., 7038.
Petitions to institute derivation proceedings, while distinct from interference
practice, raise similar issues to those that may be raised in interferences in a
motion for judgment on priority of invention. Currently, motions for judgment on
priority of invention, including issues such as conception, corroboration, and
diligence, are generally limited to 50 pages. Thus, the proposed 50 page limit is
considered sufficient in all but exceptional cases.
Id., 7035.
The proposed rule would provide that petitions to institute a trial must comply
with the stated page limits, but may be accompanied by a motion that seeks to
waive the page limits. The petitioner must show in the motion how a waiver of the
page limits is in the interests of justice. A copy of the desired non-page limited
petition must accompany the motion. Generally, the Board would decide the
motion prior to deciding whether to institute the trial.
19
Id., 7035.
20