Reexamination and Reissue

We are nationally recognized as experts filing or responding to ex parte and inter partes reexamination requests.  We have participated in the development of the America Invents Act, and have consulted with the U.S. Patent and Trademark Office in the drafting of the new rules according to the new patent statute enacted in 2011.  Reexamination requests are an alternative to patent litigation, proceeding before the USPTO. With our comprehensive knowledge of the USPTO, along with our experience in prior art searching, we are well positioned to assist clients with reexamination issues.

Reexamination is one alternative to IP protection, providing a means to correct errors that may have occurred during prosecution of a patent.  This tool is available to anyone after a patent has been granted.  

Just to give an example of the types of Reexaminations filed and potential results, see The Reexam Center, a website that updates the latest Reexamination Request filings in the USPTO:  http://reexamcenter.com/2012/01/daily-reexamination-report-january-24-2012/.

Recently, major changes have been made to patent legislation, the most notable changes affecting Reexamination procedures.  Though the USPTO has not established its own rules to accommodate these changes, the new language of the act gives a clear indication of the substantial changes under way.  Below is a summary.

Patent Reexaminations under AIA

In addition to an entirely new patent procedure, the AIA contains substantial revisions to the current inter partes re-examination proceedings (which are now termed "inter partesreview").  Section 6(a) of the AIA sets forth these revisions to inter partesreview.  The most significant of these is a change in the standard for granting a request (now termed a "petition") forinter partes review, from raising a "substantial new question of patentability" under current law to "a reasonable likelihood that the petitioner will prevail with regard to at least one claim" (§ 314(a)).  The revisions to the statute maintain the express prohibition against the patentee requesting inter partes review (§ 311(a)), as well as limiting the scope of review to patents and printed publications (§ 311(b)).  To accommodate the new post-grant review proceedings, petitions for inter partes review are permitted at the later of 9 months from the grant date of a patent or reissued patent, or the date of termination of post-grant review (§ 311(c)(1) or (2)).  Also consistent with current law are provisions that the Director's decision whether to grant inter partes review cannot be appealed (§ 314(d)).

Inter partes review petitions cannot be filed anonymously, requiring identification of all real parties in interest (§ 312(a)(2)), and must identify "in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence supporting the challenge to each claim" (§ 312(a)(3)).  The petition must be accompanied by copies of all patents or printed publications and any affidavits containing supporting evidence or opinion (§§ 312(a)(3)(A) and (3)(B)), as well as "any other information that the Director may require by regulation" (§312(a)(4)).  The petition and all supporting evidence must be supplied to the patent owner or a designated representative (§312(a)(5)).  As with other proceedings concerning granted patents, inter partes review is public and made available "[a]s soon as practicable after receipt of a petition" for review (§ 312(b)).

The patentee has the option of responding to the petition within a time period set by the Director, which response is limited to providing reasons why the petition fails to meet any of the requirements for its grant (§313).  Petitions must put forth evidence (presumably in light of any evidence or argument in the patentee's response) that if unrebutted would establish a "reasonable likelihood" that at least one challenged claim would be invalidated (§ 314(a)).  The Director must make the determination to institute post-grant review within three months after receiving the patentee's response or when the time for that response has expired (§ 314(b)), by notifying the petitioner and the patentee (and the public), wherein the notice contains the date on which the review will commence (§ 314(c)).

There are additional limits to when post-grant review petitions can be filed.  The bill prohibits grant of inter partes review to a petitioner who has filed a "civil action challenging the validity of a claim of the patent" (§ 315(a)(1)) (which includes declaratory judgment actions but expressly excludes counterclaims in patent infringement litigation; § 315(a)(3)).  Should an inter partes review petitioner file such an action after filing the petition, the statute provides for an "automatic" stay of such a civil action (§ 315(a)(2)) until either the patent owner moves for the stay to be lifted (§ 315(a)(2)(A)), the patent owner files a civil action alleging infringement against the petitioner (§ 315(a)(2)(B)), or the petitioner moves for dismissal of the civil action (§ 315(a)(2)(C)).  In addition, an inter partes review proceeding will not be instituted if the petition is filed "more than one year after the date on which the petitioner . . . is served with a complaint alleging" patent infringement (§ 315(b)).  The bill grants the Director the authority to consolidate petitions in the case of multiple filings by third parties (§ 315(c)), as well as determining whether to "stay, transfer, consolidate[e] or terminat[e]" ex parte or inter partes review proceedings, interferences or (presumably) derivation proceedings (§ 315(d)).  The bill also contains estoppel provisions, wherein a petition is estopped from "request[ing] or maintain[ing] a proceeding before the Office with respect to any claim on any ground that the petition raised or reasonably could have raised during post-grant review" (§ 315(e)(1), and is also estopped from bringing a civil action (e.g., a declaratory judgment action) or an action before the International Trade Commission based on any ground that was raised or reasonably could have been raised during the inter partes review (§ 315(e)(2)).

Unlike current inter partes reexamination, however, inter partes review proceedings are to be held before the Patent Trial and Appeal Board and not replicate ex parte examination under 35 U.S.C. §§ 132-133 (§ 316(c)).  The Director is granted the authority under these provisions of the bill to establish regulations, including:

(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;

(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a);

(3) establishing procedures for the submission of supplemental information after the petition is filed;

(4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;

(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—

(A) the deposition of witnesses submitting affidavits or declarations; and

(B) what is otherwise necessary in the interest of justice;

(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;

(7) providing for protective orders governing the exchange and submission of confidential information;

(8) providing for the filing by the patent owner of a response to the petition under section 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;

(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information sub- mitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent;

(10) providing either party with the right to an oral hearing as part of the proceeding;

(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c);

(12) setting a time period for requesting joinder under section 315(c); and

(13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.

The only constraint the Section puts on the Director is a consideration of "the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter" (§ 316(b)).

The patentee is given the right to file one motion to amend one or more of the challenged claims, either by cancelling the claims outright or proposing a "reasonable number" of substitute claims for each cancelled claim (§ 316(d)(1)(B)).  Any further motion to amend can be filed only as an agreed motion between the patentee and the petitioner (§ 316(d)(2)) (although the Director is given the authority to promulgate regulations affecting this statutory limitation), and any amendments filed in any motion under this section "may not enlarge the scope of the claims . . . or introduce new matter" (§ 316(d)(3)).  The petitioner bears the burden of proof by a preponderance of the evidence (§ 316(e)).

An inter partes review can be terminated by settlement (§ 317) or decision of the Board (§ 318).  While similar to current provisions for settlement in interferences, the provisions differ in that whether review is terminated or the Board renders a decision is at the discretion of the Director (§ 317(a)).  Review terminated by settlement does not raise any of the estoppels provided for in (§ 315(e)).  As with interferences, any such settlement must be in writing and filed with the Office before review will be terminated and, although the settlement will not be published with the remainder of the review proceedings, settlements will be available to Federal Government agencies upon written request, or anyone upon a showing of "good cause" (§ 317(b)).

The provisions regarding decisions of the Board provide for a certificate "canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable" (§ 318(b)).  Amendments or new claims can raise intervening rights pursuant to 35 U.S.C. § 252 (§ 318(c)).  The Office is tasked with making available the length of time it takes for the Board to complete its review (§ 318(d)).

Any party is entitled to appeal a "adverse" decision after post-grant review, under any of the provisions of 35 U.S.C. §§ 141-144 (§ 319).

The Office must establish regulations for implementing these changes "not later than" a year after the enactment date of the bill into law (Section 6(c)(1)) and "shall apply to all patents issued before, on or after" the effective date (Section 6(c)(2)(A)).  The Director also has discretion to limit the number ofinter partes review petitions granted for the first four years after enactment, provided that the number is at least as many requests/petitions that were granted "in the last full fiscal year prior to the enactment date" of the revised law (Section 6(c)(2)(B)).  The bill also contains "transition provisions" (Section 6(c)(3)) amending the current statute to incorporate the changed standard (from "substantial new question of patentability" under current law to "a reasonable likelihood that the petitioner will prevail with regard to at least one claim") (Section 6(c)(3)(A)) for inter partes review requests filed between the date of the bill's enactment and the effective date of the revisions (Section 6(c)(3)(B)).  Inter partes reexamination shall proceed under current law and regulation "as if subsection (a) had not been enacted" for requests filed before the effective date (September 16, 2012)(Section 6(c)(3)(C)).