MPEP 2600 discloses the proper procedure for Inter Parte Reexaminations. This Inter Parte Reexamination procedure is being phased out through the America Invents Act. Replacing this procedure is two new procedure called the Post Grant Review and the Inter Parte Review. The America invents act section 6 establishes a one-year time period in which inter partes re-examination is utilized with a different threshold for granting the examination. Previous inter partes re-examination required a substantial new question of patentability to initiate the inter partes re-examination. With the new inter partes review the requester must only show a reasonable likelihood that they will prevail with respect to at least one claim in the challenged patent. The effective date of the new procedures was September 16th, 2012.
Differences between ex parte reexaminations and inter parte reexaminations?
Inter parte reexaminations are only used on patents which issued from applications filed on or after November 29th, 1999. If the request is granted the first office action is mailed with the notice granting the request. No interviews are permitted during inter parted reexamination. A third party has more rights in an inter parte reexamination. They can respond to patent owner’s replies at each office action, appeal to the board and even participate in the patent owner’s appeal to the board of appeal. If a request for inter parted reexamination is denied there is a partial refund. Estoppels are used after conducting an inter parte reexamination. This means that if the reexamination favored the patentability of a claim from the patent being reviewed, a party who requested the reexamination can never get a court action on the basis of issues raised or could have been raised during the reexamination. This includes the patent owner. The rules for the inter parte review are similar except certification that an estoppel does not apply and the identity of the party making the request must be identified. There is also no small entity discount.
A third party requester can file written comments only once to a patent owner’s reply to each office action and they must be filed within 30 days of receiving the patent owners reply to the office action. There is not extension of time available. Any written comments must be limited to issues raised in an office and a reply. Citations of additional prior art can be used but are limited to what is necessary to respond to either the patent owner’s reply or issues raised by the examiner in an office action.
Appealing in an inter parte reexamination:
The examiner issues a notice of the right to appeal as a final action for a rejection and/or allowance on each claim. No amendments are allowed after this notice is issued. Parties can appeal the notice within 1 month of the date of the notice. A party can stipulate and request the issuance of he notice of the right to appeal anytime after a patent owner’s reply to an initial office action. If a party does appeal through the filing of a notice, all other parties can file a cross notice appeal within 14 days. If no parties appeal then the reexamination is terminated and a inter parte reexamination certificate will issue.
For the appeal process in inter parte reexamination there is a nine step process.
The appeal brief is due two months from the notice of appeal followed by the respondents brief which is due one month from the servicing of the appeal brief. The examiner’s answer follows and there can be no new grounds for rejection. A rebuttal brief is due one month from the examiner’s answer and a request for oral hearing is due 2 months from the examiners answer if it is desired. The oral hearing allows for 20 mins from the examiner and 30 minutes for each of the parties involved. There is then a decision by the board. A petition for a rehearing can be submitted and is due one month from the initial decision by the board. This can be appealed to the federal circuit court by the patent owner.
The effect of inter parte reexamination on other proceedings:
Just as in ex parte reexamination, the patent owner needs to disclose any other proceedings concerning the patent to the examiner.
For multiple reexaminations, they can be merged or one suspending until the other proceeding concludes. For instances where there is an inter parte and ex parte proceeding, the rules for the inter parted proceeding will govern the reexamination. However, the ex parte requestor will get none of the additional rights from the inter parte reexamination. One reexamination certificate issues from this merger.
For a reexamination and an interference, the commissioner is allowed to suspend one proceeding until the other is concluded.
For reexamination and reissue proceedings, the reissue can be merged or one of the proceedings suspended until the other has concluded. If there is a merger, the inter parte rules govern the prosecution. Identical papers should be filed and the same claims must be pending in both circumstances. The reissue patent will serve as the reexamination certificate.
Reexamination and litigation. A patent owner can try and stay the court action until the inter parte reexamination has concluded. The commissioner also has the power to suspend the reexamination with regards to the litigation.
America Invents Act Update – Post Grant Review
A new tool is created in section 6 of the America invents act that allows for third parties to challenge issued patents on almost any ground. It works with inter partes review to replace inter partes re-examination. Only patents issuing from first-inventor-to-file provisions can be subject to post grant review.
Post-grant review allows third party to challenge any claim as un-patentable based on 101, 102, 103, or 112. However, best mode is not permitted as bases for post-grant review. As such, the grounds on which a claim can be challenged is more inclusive in this post grant review versus the inter partes review or inter partes re-examination which a claim can only be challenged on the basis of novelty or obviousness.
Post grant review must complete within one year (Time may be extended 6 months for good cause).
Petitions for post grant review must include: Identity of real parties in interest, Identification of claims in question and the grounds for which these claims are sought to be reviewed, Copies of evidence relied upon, Explanation of the grounds for standing, Each challenged claim must have a claim construction, Explanation why the claims are un-patentable, Relevance of evidence submitted and the required fees ($35,800 for up to 20 claims and $800 for each additional claim).
The petition will be made available to the public by the director as soon as possible, however, a party may file motion to seal if submissions are confidential.
If a civil suit has already been filed by the third party the third-party is barred from requesting a post-grant review
The patent owners is allowed a preliminary response once the review has been requested setting forth reasons why no review should be instituted. Three months allotted to submit this preliminary response if desired.
The director must determine if the information presented in the petition for the post-grant review and the information submitted in the preliminary response by the patent owner demonstrates that is more likely than not that at least one claim in the petition is un-patentable. The post-grant review may also be instituted if the petition raises a novel or unsettled legal question that is important to other patents or patent applications.
The patent owner has the opportunity to present evidence detailing why each claim is valid if the office does Institute a post-grant review. The patent owner may also propose a substitute for any challenged claims or cancel any challenged claims. There are normally 3 months allowed for the patent owner to file an amendment or response.
Opportunity to conduct discovery available to both parties. Routine discovery includes: Cited documents, Cross-examination of declaration testimony, Information inconsistent with positions advanced at proceeding. Additional discovery is available if it is mutually agreed by both parties and a motion is filed seeking additional discovery.
Petitioner is allowed to file supplemental information by filing a motion within 1 month from trial date. Belated filing may be allowed if can show good reason why not earlier filed and that it is in the interest of justice.
Oral hearing allowed to be requested by both parties
Post-grant review will be terminated if the settlement by both parties is achieved, however, if the settlement comes after a decision on the merits by the board their decision is final.
The director’s decision whether to institute a post-grant review is final and non-appealable.
The petitioner is barred (estopped) from filing a civil action or requesting a proceeding before the office on any ground that the petitioner raised or reasonably could have raised during the post-grant review. The petitioner or owner can not obtain a new patent on a claim that was not allowed through the proceedings.
Request for rehearing must identify specifically each topic the requester believes the board overlooked and where it was addressed. This may be requested no later than nine months after the grant of a patent or issuance of a reissue patent. Once this nine months has elapsed the petitioner should then use the inter partes review.
America Invents Act Update – Inter Partes Review (Not Reexamination!)
Section 6 of the America invents act creates a new post-grant review proceeding called inter partes review replacing inter partes re-examination proceedings. Inter partes review can only be requested by third-party similar to the inter partes re-examination.
A third-party files a petition with intent to cancel one or more claims of the patent on the grounds of a 102 or 103 rejection. All real parties in interest must be identified in writing in the petition and the grounds for which the claims are being challenged, which is similar to the inter partes re-examination. The petition must be served to the patent owner. The petition will be made public by the director as soon as possible, however, a party may protect confidential information by filing a motion to seal.
The petition for inter partes review must include the follow: Identity of real parties in interest; Identification of claims in question and the grounds for which these claims are sought to be reviewed; Copies of evidence relied upon; Explain the grounds for standing; Each challenged claim must have a claim construction; Explanation as to why they are unpatentable; Relevance of evidence submitted; Required fee ($27,200 for up to 20 claims and $600 for each additional claim). The petitioner may supplement information in petition through motion filed within one month of trail institution.
Only patents and printed publications are generally accepted, however expert opinions may also be included if they support the grounds on which the challenge to any claims are based.
If the third party filed a civil action challenging the validity of a claim of the patent before the petition for inter partes review was submitted the inter partes review will not be granted. Or, if the patent owner serviced a complaint alleging infringement more than one year before the petition for inter partes review was filed.
The patent owner will have a chance to respond to claims of patentability once the inter-parties review is requested, although this primary response is not mandatory. There is a three month time period for filing the preliminary response. If the inter partes review is granted a patent owner will be given a chance to present evidence as to why the patent claims in question are valid, provide substitute or amended claims, or cancel any challenged claims.
Both parties have the opportunity to conduct discovery. A standard discovery provides for: Cited documents; Cross-examination of declaration testimony; Information inconsistent with positions advanced during the proceeding. The parties can mutually agree or a single party may file a motion seeking additional discovery.
Both parties allowed to request an oral hearing
The director will terminate the inter partes review if a joint request to terminate is entered prior to the ruling on the merits.
Once a decision is made regarding the granting of the inter partes review it is final and nonappealable. The patent trial and appeal Board will file a final written decision, after this decision the petitioner is barred from initiating a proceeding before the international Trade Commission, requesting a proceeding before the office or filing a civil action on any grounds that was raised or reasonably could have been raised during inter partes review.
Both parties are allowed to appeal the decision of the patent trial and appeal Board. A request for appeal must specifically identify the reason the appealer believes that the board did not fully address the items of issue and where each matter was addressed in the petition.
The inter-partes review may be requested nine months after the grant of the patent, issuance of a re-issue or after the termination of the post-grant review proceeding if these proceedings are instituted and terminate more than nine months after the patent is granted.
Inter-partes review must be concluded within one year (6 month extension can be granted for good cause).
Differences between inter partes re-examinations and inter-partes review:
Some major difference in the inter partes review versus the inter partes re-examinations exist in that in an inter partes review a reasonable likelihood of the third party prevailing with respect to at least one claim is needed versus in the inter partes re-examination proceeding third-party had to show a substantial new question of patentability for the petition to be granted.
Inter partes reexaminations will not be converted into inter partes review proceedings. This includes inter partes reexamination started before the effective date but which continue past the effective date.