America (Possibly) Reinvents Ex Parte and Inter Partes Reexamination

By Joseph Mandour on May 4, 2011

flag-thumb-200x132-33959 California – The “America Invents Act” (the “Act”) (S. 23 & H.R. 1249), formerly known as the Patent Reform Act of 2011, are two similar bills currently making their way through the Houses of Congress.

This is the fourth consecutive session in which Congress has attempted to alter the U.S. patent system, and proposed changes include switching patent priority from “first to invent” to “first to file”. The U.S. system has not undergone a serious change since the enactment of the American Inventors Protection Act in 1999.

The Act would provide a transition period of several years during which inter partes reexamination could still be requested but does not propose to alter ex parte reexamination. Therefore, according to the USPTO’s announcement appearing in the Federal Register on April 25, 2011, it must “continue its efforts to improve the existing reexamination system.” (http://www.gpo.gov/fdsys/pkg/FR-2011-04-25/html/2011-9805.htm).

In any event, David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, reaffirmed the importance of reexamination recently in a press release: “We recognize that [it] is one of the most important functions of the USPTO, because these patents often have significant commercial value and are usually involved in concurrent litigation. [And] [b]y resolving these disputes more quickly, we can make patent reexamination a better mechanism for reviewing patent validity.” (http://www.uspto.gov/news/pr/2011/11-28.jsp).

A public meeting will be held on June 1st at the USPTO in order to solicit public opinions on several changes under consideration concerning the streamlining of the procedures governing ex parte and inter partes reexamination proceedings. These changes have ostensibly been designed to achieve faster and more efficient resolution of the substantial new question of patentability (SNQ) for which reexamination has been ordered. The proposed changes fall into three categories: 1) changes which affect both ex parte and inter partes reexaminations, 2) changes which only affect ex parte reexamination and 3) changes affecting only inter partes reexamination.

In outline form, they are (see the relevant CFR for more detail at http://www.gpo.gov/fdsys/pkg/FR-2011-04-25/html/2011-9805.htm):

1) Proposed Changes to Both Ex Parte and Inter Partes Reexaminations:
A. Requester Must Separately Explain How Each SNQ Presented in the Request Is “New” Relative to Other Examinations of the Patent Claims.
B. Requester Must Explain How the References Apply to Every Limitation of Every Claim for Which Reexamination Is Requested.
C. Requester Must Explain How Multiple SNQs Raised in the Same Request Are Non-Cumulative of Each Other; Cumulative SNQs Will Be Deemed to Constitute a Single SNQ.
D. The Examiner May Select One or More Representative Rejections From Among a Group of Adopted Rejections.
E. Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request.
F. Patent Owner’s Amendments and Evidence Will Be Mainly Limited to the First Action Response.
G. Claim Amendments Will Not Be Entered Unless Accompanied by a Statement Explaining How the Proposed New Claim Language Renders the Claims Patentable in Light of an SNQ.
H. Petitions Practice Will Be Clearly Defined.

2) Proposed Changes Specific to Ex Parte Reexamination:
A. Make Permanent the Pilot That Allows the Patent Owner to Optionally Waive the Patent Owner’s Statement.
B. Where the Patent Owner Does Not Waive the Statement, the Order Granting Reexamination Will Include a Provisional FAOM, Which May Be Made Final in the Next Action.

3) Proposed Changes Specific to Inter Partes Reexamination:
A. Third Party Requester May Dispute the Examiner’s Designation That a Rejection is “Representative” of Other Rejections in the Group.
B. Final Office Action Closes Prosecution and Triggers Appeal Rights.
C. Third Party Requester’s Appellant Brief is Limited To Appealing An Examiner’s Decision That a Claim is Patentable; Additional Bases To Cancel A Rejected Claim Can Only Be Argued in a Respondent Brief Following Patent Owner’s Appellant Brief.

The USPTO invites comments on the proposed changes as well as thirteen other specific questions posed at the end of the notice in the April 25th CFR. If you are interested, now is the time to weigh-in on the possible reinvention of the U.S. ex parte and inter partes reexamination process.

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Posted in: Patent Registration