Our friends at Birch, Stewart, Kolasch and Birch sent in this article discussing inter partes reexamination, a fairly new proceeding in the PTO. This post is a comprehensive guide to practice before the PTO in inter partes reexamination. The article covers topics such as what patents qualify for inter partes reexamination, who can request the proceeding and how to demonstrate a substantial new questions of patentability. Here is an excerpt and link to the full article.
The Creation of the Inter Partes Reexamination Procedure and Goals Thereof
Reexamination is a procedure established by statute which permits the USPTO to reconsider the patentability of the claims in the issued patent in view of prior art which was not considered in the original prosecution of the application. [1 ]The reexamination statute was amended on November 29, 1999 by Public Law 106-113. Public Law 106-113 authorized the extension of reexamination proceedings via an optional inter partesreexaminaiton procedure in addition to the existing ex parte reexamination procedure. The final rules to implement the statutory inter partes reexamination option was published in the Federal Register on December 7, 2000 [2] and in the Official Gazette on January 2, 2001. [3]
Legislative history of the statute establishing ex parte reexamination shows that Congress intended that “reexamination will permit efficient resolution of questions about the validity of issued patents without recourse to expensive and lengthy litigation. ” [4] Congress intended, therefore, that ex parte reexamination be an alternative to protracted or expensive patent litigation by providing an alternative means for testing the validity of patent claims through the USPTO.
Similarly, a major goal of an inter partes reexamination procedure is to provide a third party requester (hereinafter referred to as “TPR”) with a greater opportunity to participate in reexamination proceedings, while maintaining most of the features which make reexamination a desirable alternative to litigation in the Federal Courts. Further, the optional inter partesalternative also provides TPRs with appeal rights to appeal to the Board of Patent Appeals and Interferences (“BPAI”) and to participate in the patent owner’s appeal to the BPAI. Also, for any inter partes reexamination proceeding commenced on or after November 2, 2002, the TPR also has the appeal rights to appeal to the Court of Appeals for the Federal Circuit and to participate in the patent owner’s appeal to the Federal Circuit. However, a review of the actual length of inter partes reexamination procedures show that such reexaminations are not always faster than Court proceedings.
Patents That Qualify for Inter Partes Reexamination
For a patent issued from an original application filed prior to November 29, 1999, the statutory inter partes reexamination option is not available, wherein only the ex partereexamination is available. However, as held by the Federal Circuit, an “original application” can include a later filed related application (e.g., continuations, divisionals, continuations-in-part, continued prosecution applications and national stage phase of international applications), even though the parent patent was filed before the critical date of November 29, 1999.[5]
In Cooper Technologies, the Court of Appeals for the Federal Circuit determined that a U.S. patent which issued from a U.S. patent application which was filed on April 14, 2003, as a patent which issued from an original application filed on or after November 29, 1999 and, therefore, was a proper subject of an inter partes reexamination proceeding. The appellant argued that the application filed on April 14, 2003, which issued as the U.S. Patent in the inter partes reexamination proceeding involved in this decision, was not the original application from which the patent issued. Instead, the appellant argued that the initial application from which the patent in the inter partes reexamination patent issued was a parent application, which was filed in 1993, benefit of which was claimed under 35 U.S.C. § 120 through a number of intervening U.S. patent applications. The Court disagreed with the appellant and based its decision in large part on what was determined to be the USPTO’s reasonable published interpretation of an “original application” in the inter partes reexamination statute.
Compared to Ex Parte Reexamination
Compared to an ex parte reexamination procedure, an inter partes reexamination proceeding provides a third party requester (hereinafter referred to as “TPR”) with a greater opportunity to participate, while maintaining most of the features which make reexamination a desirable alternative to litigation in the Federal Courts.
The inter partes reexamination starts with the filing of a request for reexamination, wherein the request must set forth the facts relevant to the reexamination, primarily facts pertaining to the application of the new prior art to the claims for which reexamination is requested. Typically, should the United States Patent & Trademark Office (“USPTO”) grant the inter partes reexamination, a first Office Action issues. With certain timelines, the patent owner files a response to the Office Action and the TPR can respond to any response filed by the patent owner.
However, mistakes are made by both the patent owner and TPR during the course of the inter partes reexamination proceeding. In fact, mistakes can be made at any stage of the inter partes reexamination proceeding (i.e., initial requirements for filing the request for inter partes reexamination all the way to appeal). Certain inter partes reexamination proceedings are discussed below that highlight such mistakes, with suggestions on how to avoid such problems in the future.
Click here for the full article Inter Partes Reexamination Mechanics And Results.
You can hear more on the issue of Reexamination on February 11, 2011 at PLI’s Reissue & Reexamination Strategies and Tactics With Concurrent Litigation 2011.
[1] 35 United States Code (“U.S.C.”) §§ 301-307, 311-318 and 37 Code of Federal Regulations Patents, Trademarks, and Copyrights (“C.F.R.”) §§ 1.510-1.570.
[2] 65 Fed. Reg. 76756.
[3] 1243 O.G. 12.
[4] H.R. Rep. 96-1307 Part I, 96 Cong. 2d Sess. for (1980), U.S. Code Cong. & Admin. News 1980, pages 6460, 6462-3.
Tags: Board of Patent Appeals & Interferences, BPAI, ex parte reexamination, inter partes reexamination, prior art, reexamination proceedings, third party requester, USPTO
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