Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (April 2019), 16654-16658 [2019-08022]
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16654
Federal Register / Vol. 84, No. 77 / Monday, April 22, 2019 / Notices
filed on paper or in PDF format. No page
fees are triggered by sequence listings
that are submitted via EFS-Web in the
proper text format. The average length
of a sequence listing filed on paper or
in PDF format in an international
application is 150 pages, which would
carry an additional fee of $2,250 if the
international application were already
at least 30 pages long without the
listing. The USPTO estimates that
approximately 520 of the 6,000
sequence listings filed per year on paper
or in PDF format will be for
international applications.
The USPTO charges a fee for the
handling of mega sequence listings, i.e.,
sequence listings of 300 MB or more.
Pricing for this fee is divided into two
tiers with Tier 1 for file sizes 300 MB
to 800 MB and Tier 2 for file sizes
greater than 800 MB. The USPTO also
charges a fee, i.e., the Late Furnishing
Fee for Providing a Sequence Listing in
Response to an Invitation Under PCT
Rule 13ter, to encourage timely filing of
sequence listings in international
applications and to facilitate the
effective administration of the patent
system.
TABLE 2—FILING FEE COSTS
IC No.
1
1
1
1
1
1
1
1
1
1
Item
.............................
.............................
.............................
.............................
.............................
.............................
.............................
.............................
.............................
.............................
1 .............................
1 .............................
1 .............................
Totals ..............
Total fees
(a)
(b)
(a) × (b) = (c)
160
80
32
520
20
13
2
1
1
1
$1,200.00
600.00
300.00
2,250.00
1,000.00
500.00
250.00
10,000.00
5,000.00
2,500.00
$192,000.00
48,000.00
9,600.00
1,170,000.00
20,000.00
6,500.00
500.00
10,000.00
5,000.00
2,500.00
91
300.00
27,300.00
312
150.00
46,800.00
3
75.00
225.00
.......................................................................................................
28,536
........................
1,538,425.00
Postage Costs
Mailed submissions may include the
sequence listing on either paper or CD,
the CRF copy of the listing on CD, and
a transmittal letter containing the
required identifying information. The
USPTO estimates that the average
postage cost for a paper or CD sequence
listing submission will be $6.55 (USPS
Priority Mail, flat rate envelope) and
that 5,300 sequence listings will be
mailed to the USPTO per year, for a
total of $34,715.00 in postage costs.
With filing fee costs totaling
$1,538,425.00 and postage costs totaling
$34,715.00, the USPTO estimates that
the total annual non-hourly cost burden
for this collection will amount to
$1,573,140.00.
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Fee amount
Size fees under 37 CFR 1.16(s) and 1.492(j), large entity ..............
Size fees under 37 CFR 1.16(s) and 1.492(j), small entity ..............
Size fees under 37 CFR 1.16(s) and 1.492(j), micro entity .............
Size fees for international applications .............................................
Submission of sequence listings of 300MB to 800MB (large entity)
Submission of sequence listings of 300MB to 800MB (small entity)
Submission of sequence listings of 300MB to 800MB (micro entity)
Submission of sequence listings of more than 800MB (large entity)
Submission of sequence listings of more than 800MB (small entity)
Submission of sequence listings of more than 800MB (micro entity).
Late Furnishing Fee for Providing a Sequence Listing in Response
to an Invitation Under PCT Rule 13ter (large entity).
Late Furnishing Fee for Providing a Sequence Listing in Response
to an Invitation Under PCT Rule 13ter (small entity).
Late Furnishing Fee for Providing a Sequence Listing in Response
to an Invitation Under PCT Rule 13ter (micro entity).
Therefore, the USPTO estimates that
the total fee costs for this collection will
total $1,538,425.00.
IV. Request for Comments
Comments submitted in response to
this notice will be summarized or
included in the request for OMB
approval of this information collection;
they also will become a matter of public
record.
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Comments are invited on:
(a) Whether the proposed collection of
information is necessary for the proper
performance of the functions of the
agency, including whether the
information shall have practical utility;
(b) The accuracy of the agency’s
estimate of the burden (including hours
and cost) of the proposed collection of
information, including the validity of
the methodology and assumptions used;
(c) Ways to enhance the quality,
utility, and clarity of the information to
be collected; and
(d) Ways to minimize the burden of
the collection of information on
respondents, including through the use
of automated collection techniques or
other forms of information technology,
e.g., permitting electronic submission of
responses.
Marcie Lovett,
Chief, Records and Information Governance
Branch, Office of the Chief Administrative
Officer, United States Patent and Trademark
Office.
[FR Doc. 2019–08027 Filed 4–19–19; 8:45 am]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO–P–2019–0008]
Notice Regarding Options for
Amendments by Patent Owner
Through Reissue or Reexamination
During a Pending AIA Trial Proceeding
(April 2019)
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Notice.
AGENCY:
The United States Patent and
Trademark Office (‘‘USPTO’’ or
‘‘Office’’) provides notice of information
regarding existing Office practice as it
pertains to reissue and reexamination
procedures for amending claims
available to patent owner during the
pendency of a trial proceeding under
the America Invents Act (‘‘AIA’’)
involving the same patent. On October
29, 2018, the Office published a notice
requesting comments on proposed
modifications to current motion to
amend (‘‘MTA’’) practice and
procedures in AIA trial proceedings. In
SUMMARY:
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response to that notice, the Office
received a number of comments and
questions requesting clarification
regarding existing reissue and
reexamination procedures at the Office
available while an AIA trial proceeding,
including any appeal, involving the
same patent is pending. In response to
those comments and questions, this
notice provides a summary of current
practice regarding reissue and
reexamination options in which patent
owners may amend claims before and
after the Patent Trial and Appeal Board
(‘‘PTAB’’ or ‘‘Board’’) issues a final
written decision in an AIA trial
proceeding. This notice also provides
summary information about factors the
Office currently considers when
determining whether to stay or suspend
a reissue proceeding, or stay a
reexamination, that involves a patent
involved in an AIA proceeding, and also
when and whether to lift such a stay or
suspension.
FOR FURTHER INFORMATION CONTACT: Rae
Lynn P. Guest, Lead Administrative
Patent Judge by telephone at (571) 272–
9797 or Stephen Stein, Managing
Quality Assurance Specialist, Central
Reexamination Unit at (571) 272–1544.
SUPPLEMENTARY INFORMATION:
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I. Background
On October 29, 2018, the Office
published a request for comments
(‘‘RFC’’) on a proposed procedure for
motions to amend filed in inter partes
reviews, post-grant reviews, and
covered business method patent reviews
(collectively AIA trials) before the
PTAB. See Request for Comments on
MTA Practice and Procedures in Trial
Proceedings Under the America Invents
Act Before the Patent Trial and Appeal
Board, 83 FR 54319 (Oct. 29, 2018)
(hereinafter RFC or MTA RFC). The
Office received 49 comments in
response to this RFC as of December 21,
2018 (the closing date for comments).
See Comments on Motion to Amend
Practice and Procedures in AIA Trials,
U.S. Patent & Trademark Office, https://
go.usa.gov/xEXS2 (comments received
by December 21, 2018, in response to
the RFC) (last visited Feb. 8, 2019)
(hereinafter PTAB RFC Comments
website). On March 15, 2019, the Office
published a notice of a pilot program for
MTA practice and procedures in AIA
trial proceedings before the Board. See
Notice Regarding a New Pilot Program
Concerning Motion to Amend Practice
and Procedures in Trial Proceedings
under the America Invents Act before
the Patent Trial and Appeal Board, 84
FR 9497 (March 15, 2019). In addition
to the comments addressed in the MTA
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program notice, the Office received a
number of comments and questions
relating to reissue or reexamination as
an alternative vehicle for claim
amendments. The comments included
requests for clarification regarding
existing reissue and reexamination
procedures at the Office.
In response to those comments and
questions, this notice provides a
summary of various pertinent practices
regarding existing Office procedures
that apply to reissue and reexamination,
including after a petitioner files an AIA
petition challenging claims of the same
patent, after the Board institutes a trial,
and after the Board issues a final written
decision. This notice also provides
summary information about factors the
Office currently considers when
determining whether to stay or suspend
a reissue proceeding, or stay a
reexamination proceeding, that involves
a patent at issue in an AIA proceeding,
and when and whether to lift such a
stay or suspension.
This notice is only meant to
summarize existing practice, and not to
amend, supersede, or otherwise alter it.
This notice should not be cited in
papers submitted to the Office. Instead,
applicants, parties, and the public
should consult relevant statutes,
regulations, case law, and the Office’s
Manual of Patent Examining Procedure
(MPEP) for a full assessment of the
issues, and for sources of citations in
papers submitted to the Office.
II. Options for Amendments Through
Reissue or Reexamination
The Office will consider a reissue
application or a request for
reexamination any time before, but not
after, either: (1) The Office issues a
certificate that cancels all claims of a
patent, e.g., a trial certificate in an AIA
trial proceeding, or (2) the U.S. Court of
Appeals for the Federal Circuit
(‘‘Federal Circuit’’) issues a mandate in
relation to a decision that finds all
claims of a patent are invalid or
unpatentable. The Office will not issue
a trial certificate relating to a patent at
issue in an AIA proceeding until after
either: (i) The deadline for the filing of
a notice of appeal to the Federal Circuit
under 35 U.S.C. 142 has passed (i.e., 63
days after the date of a final written
decision or, if a request is timely filed,
63 days after the date of a decision on
a request for rehearing relating to the
final written decision) (37 CFR 90.3); or
(ii) all decisions or determinations in
relation to an appeal to the Federal
Circuit regarding the patent are finally
resolved.
Thus, patent owners may avail
themselves of a reissue application or a
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request for reexamination before,
during, or after an AIA trial proceeding
results in a final written decision, as
long as the application or request is
timely filed as discussed above (i.e.,
before the Office issues a certificate that
cancels all relevant claims, or before the
Federal Circuit issues a relevant
mandate, as applicable).1 For example,
a patent owner may file a reissue
application or a request for
reexamination within 63 days of a final
written decision regarding the patent at
issue. Actions taken by the Office in
response to such an application or
request will depend on the timing of the
filing and other relevant facts and
issues, as explained in further detail
below.
Reissue
Under the current statutory scheme, a
patent owner may file a reissue
application to amend claims before,
during, or after an AIA trial proceeding
concludes with a final written decision,
as discussed above. In particular,
although 35 U.S.C. 251 requires an
‘‘error,’’ both the Office and the Federal
Circuit have recognized that the error
requirement is satisfied by the patent
owner’s failure to previously present
narrower claims. See In re Tanaka, 640
F.3d 1246, 1251 (Fed. Cir. 2011); MPEP
1402(I). In other words, no admissions
as to the patentability of original claims
are required in a reissue application,
and the oath accompanying a reissue
application may include a statement
about the error requirement related to
the original patent’s failure to earlier
present narrower claims.2 A reissue
then proceeds through examination in
much the same way as an application
for a patent under original examination.
35 U.S.C. 251(c).
As stated in 37 CFR 1.178(a), an
‘‘application for reissue of a patent shall
constitute an offer to surrender that
patent, and the surrender shall take
effect upon reissue of the patent.’’ A
patent owner may abandon a reissue
application at any time before reissue of
the patent, for example, after obtaining
a favorable result in a final written
decision in an AIA proceeding or on
appeal. Before reissuance of a patent,
the original patent is not surrendered
and remains in effect.3 As discussed
1 If a certificate issues cancelling all of the claims
of the patent, see MPEP 1449.01 for guidance on
further prosecution of a reissue application, or
MPEP 2286 (IV) for guidance on further prosecution
of a reexamination proceeding.
2 See MPEP 1414(II) for guidance on the
specificity in identification of the error that must
be provided in the reissue declaration.
3 Cf. MPEP 1460 (‘‘In the situation where multiple
reissue applications are filed, the original patent is
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above, a reissue application must be
filed before the issuance of a trial
certificate that cancels all claims of a
patent in an AIA trial proceeding or
before the Federal Circuit issues a
mandate in relation to a decision that
determines or affirms that all claims of
a patent are invalid or unpatentable. See
MPEP 1449.01.
A reissue proceeding involves
expedited prosecution. Under 37 CFR
1.176, ‘‘[a]pplications for reissue will be
acted on by the examiner in advance of
other applications,’’ and, as stated in
MPEP 708.01, ‘‘[r]eissue applications,
particularly those involved in stayed
litigation, should be given priority.’’
Further, under MPEP 1442, reissue
applications have ‘‘special status’’ and
‘‘will be taken up for action ahead of
other ‘special’ applications.’’ The Office
may stay examination of a reissue
application, however, pending a final
written decision in an AIA trial
proceeding addressing the same patent,
as discussed in more detail below.
Office procedures provide for third
party notice (by announcement of the
reissue application in the Official
Gazette, see MPEP 1430) and a (limited)
opportunity for a third party to be heard
(by filing a protest, see MPEP 1441.01).
In addition, any 35 U.S.C. 315(b) bar
triggered by service of a complaint
alleging infringement of the original
patent may not apply to the reissued
patent. See Eizo Corp. v. Barco N.V.,
Case IPR2014–00358, Paper 21 at 7–8
(PTAB July 14, 2015); cf. Click-To-Call
Techs., LP v. Ingenio, Inc., 899 F.3d
1321, 1336–37 (Fed. Cir. 2018) (rejecting
petitioners’ effort to deem a reexamined
patent a ‘‘new patent’’ for the purposes
of 35 U.S.C. 315(b), noting that
‘‘‘[u]nlike reissue, reexamination does
not result in the surrender of the
original patent and the issuance of a
new patent’’’) (quoting Aspex Eyewear,
Inc. v. Marchon Eyewear, Inc., 672 F.3d
1335, 1341–42 (Fed. Cir. 2012)).
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Ex Parte Reexamination
A patent owner also may seek to
amend its claims by filing a request for
ex parte reexamination before, during,
or after an AIA trial proceeding
concludes with a final written decision,
as discussed above. Reexamination
presents considerations, however, not
present with regard to reissue
applications. Of particular note, under
35 U.S.C. 303, the Director is required
to determine whether a request for
reexamination raises ‘‘a substantial new
surrendered when at least one reissued patent has
been granted and there are no pending applications
for reissue of the original patent.’’); 35 U.S.C.
251(b); 37 CFR 1.177; MPEP 1451.
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question [SNQ] of patentability affecting
any claim of the patent concerned.’’
An SNQ is not raised if the ‘‘question
of patentability has already been . . .
decided in an earlier concluded
examination or review of the patent by
the Office’’ (MPEP 2242(I)). Thus, an
SNQ for reexamination cannot be a
question raised in a ground already
decided in a final written decision. In re
Swanson, 540 F.3d 1368, 1377 (Fed. Cir.
2008) (quoting H.R. Rep. No. 96–1307(I),
at 6466 (1980)) (the SNQ requirement
bars ‘‘reconsideration of any argument
already decided by the office, whether
during the original examination or an
earlier reexamination’’); accord id. at
1380. Thus, after the Board issues a final
written decision on the patent in an AIA
proceeding, an SNQ in a later-filed
request for reexamination on that patent
must differ from any question raised in
a ground addressed in a final written
decision.
In addition, current Office
interpretation requires that the
‘‘substantial new question of
patentability [is] established for the
existing claims in the patent in order to
grant reexamination’’ (MPEP 2242(I))
and that the reexamination ‘‘request
should be decided on the wording of the
patent claims in effect at that time
(without any proposed amendments)’’
(MPEP 2221). Thus, an SNQ cannot be
established based on new questions
raised in relation to amended or new
claims proposed during reexamination.
See also 35 U.S.C. 303 (requiring the
SNQ affect ‘‘any claim of the patent’’).
Once an SNQ has been established for
the original claims in a reexamination
proceeding, however, an SNQ is not
required for examination of amended or
new claims.
On the other hand, prior to the
issuance of a final written decision, an
SNQ may be established based on a
question raised in a ground presented in
an AIA petition. See MPEP 2242(I).4 If
the Central Reexamination Unit (CRU)
grants a reexamination request,
however, the Office may stay the
reexamination pending a final written
decision in an AIA trial proceeding
addressing the same patent, as
discussed in more detail below.
In contrast to reissue, a reexamination
results in the issuance of a certificate in
4 MPEP 2242(I) provides (emphasis in original
and added):
If the prior art patents and printed publications
raise a substantial question of patentability of at
least one claim of the patent, then a substantial new
question of patentability as to the claim is present,
unless the same question of patentability has
already been: . . . (B) decided in an earlier
concluded examination or review of the patent by
the Office. . . .
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the original patent, rather than the
issuance of a new patent. Therefore, the
35 U.S.C. 315(b) bar triggered by service
of a complaint alleging infringement of
the original patent applies to a
reexamined patent, even if the
reexamination involves amended
claims. See Click-To-Call Techs., 899
F.3d at 1336–37 (rejecting petitioners’
effort to deem a reexamined patent a
‘‘new patent’’ for the purposes of 35
U.S.C. 315(b)); BioDelivery Sciences
Int’l, Inc. v. MonoSol Rx, LLC, Case
IPR2013–00315, Paper 31 at 3–5 (PTAB
Nov. 13, 2013).
Also in contrast to a reissue
proceeding, which may address all
statutory requirements relating to
patentability (i.e., 35 U.S.C. 101, 102,
103, 112), a reexamination proceeding
generally addresses only issues relating
to 35 U.S.C. 102 and 103, and 35 U.S.C.
112 under limited circumstances (i.e.,
only as raised by newly added subject
matter in an amendment). In addition, a
reexamination proceeding must be
based on prior art consisting of patents
and printed publications (35 U.S.C. 301,
302). For example, a reexamination
proceeding does not address issues
involving public use or sale.
Considerations for When a Parallel
Office Proceeding Will Be Stayed or
Suspended
This notice provides additional
information as to how the Office may
handle the imposition of a stay or the
lifting of a stay in a reissue or
reexamination proceeding (‘‘parallel
Office proceeding’’) in view of a copending AIA proceeding involving the
same patent. Any parallel Office
proceeding, however, will be evaluated
based on its particular facts and
circumstances.
The Director has authority to
determine the approach with regard to
a possible stay of a reissue or ex parte
reexamination proceeding. 35 U.S.C.
315(d), 325(d). The Director has
previously authorized the Board to enter
an order to effect a stay, transfer,
consolidation, or termination of parallel
Office proceedings involving the same
patent during the pendency of an AIA
trial proceeding. 37 CFR 42.3(a),
42.122(a), 42.222(a). Under that
authority, the Board ordinarily will stay
a parallel Office proceeding where good
cause exists. Good cause for staying a
case may exist if, for example, an ongoing AIA proceeding, which is subject
to statutory deadlines, is addressing the
same or overlapping claims of a patent
at issue in a parallel Office proceeding.
Parties to an AIA trial proceeding may
request authorization to file motions to
stay or motions to lift stays at any time
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during the pendency of the AIA
proceeding. The Board typically will
consider motions to stay a concurrent
Office proceeding (or may impose a stay
sua sponte) any time after institution of
an AIA trial proceeding and before the
filing of a notice of appeal or the
deadline for filing a notice of an appeal
to the Federal Circuit under 35 U.S.C.
142 has passed (i.e., 63 days after the
date of a final written decision or, if a
request is timely filed, 63 days after the
date of a decision on a request for
rehearing relating to the final written
decision). See 37 CFR 42.3(a), 42.122(a),
42.222(a), 90.3.
In deciding whether to grant a stay of
a parallel proceeding involving the same
patent within the Office, the Office
(typically the Board) may consider a
number of factors, including, but not
limited to:
• Whether the claims challenged in
the AIA proceeding are the same as or
depend directly or indirectly from
claims at issue in the concurrent
parallel Office proceeding;
• Whether the same grounds of
unpatentability or the same prior art are
at issue in both proceedings;
• Whether the concurrent parallel
Office proceeding will duplicate efforts
within the Office;
• Whether the concurrent parallel
Office proceeding could result in
inconsistent results between
proceedings (e.g., whether substantially
similar issues are presented in the
concurrent parallel Office proceeding);
• Whether amending the claim scope
in one proceeding would affect the
claim scope in another proceeding;
• The respective timeline and stage of
each proceeding;
• The statutory deadlines of the
respective proceedings;
• Whether a decision in one
proceeding would likely simplify issues
in the concurrent parallel Office
proceeding or render it moot.
See, e.g., CBS Interactive Inc. v.
Helferich Patent Licensing, LLC., Case
IPR2013–00033, Paper 15 (PTAB Nov. 6,
2012) (order to stay a concurrent
reexamination); Stride Rite Children’s
Group, LLC v. Shoes By Firebug LLC,
Case IPR2017–01810, Paper 23 (PTAB
Jul. 12, 2018) (order to stay a concurrent
reissue). See also, e.g., Arctic Cat, Inc.
v. Polaris Indus., Inc., Case IPR2015–
01781, Paper 78 (PTAB Sept. 25, 2018)
(denying stay because of meaningful
distinctions between issues raised in a
reexamination and an IPR); Acrux DDS
Pty, Ltd. v. Kaken Pharma. Co. Ltd.,
Case IPR2017–00190, Paper 11 (PTAB
Mar. 1, 2017) (denying stay requested
prior to trial institution); Mastercard
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Int’l Inc. v. D’Agostino, Case IPR2014–
00543, Paper 14 (PTAB October 2, 2014)
(denying stay because a Notice of Intent
to Issue a Reexamination Certification
already had been entered in the copending reexamination); cf. Ultratec,
Inc. v. Sorenson Comm’ns, Inc., No. 13–
cv–346–bbc, 2013 WL 6044407, at
*2–3 (W.D. Wisc. Nov. 14, 2013)
(assessing some of the same factors in
determining whether to stay district
court litigation in light of pending inter
partes review petitions).
The Board also may deny institution
under 35 U.S.C. 325(d) of a requested
AIA trial proceeding if a parallel Office
proceeding, for example, is in a more
advanced stage and involves
overlapping issues with the proposed
AIA trial proceeding.
The Patents Organization (which are
the offices under the Commissioner for
Patents, hereinafter ‘‘Patents’’) also may
decide to suspend proceedings in a
parallel reissue application either sua
sponte or on request of the applicant
under 37 CFR 1.103. See also MPEP
1442.02. Patents typically will consider
similar factors to those discussed above
but will weigh them in view of relevant
facts and circumstances at the time
suspension is being considered.
For example, action in a reissue
application typically will be suspended
(either sua sponte or if requested by
petition) when there is concurrent
litigation or a pending trial before the
PTAB. MPEP 1442.02. However, the
Office may or may not suspend a reissue
application, using its discretion based
upon the facts of the situation, for
example if it is evident to the CRU
examiner, or the applicant indicates,
that ‘‘the . . . trial before the PTAB has
been terminated’’; ‘‘there are no
significant overlapping issues between
the application and the litigation or
pending trial before the PTAB’’; or ‘‘it is
applicant’s desire that the application
be examined at that time.’’ Id.
Considerations for Lifting a Stay of
Parallel Office Proceedings
In deciding whether to lift a stay of a
parallel proceeding involving the same
patent within the Office, the Board may
consider a number of factors, including,
but not limited to:
• Whether factors considered when
ordering the stay (i.e., factors indicating
good cause) have changed from when
the stay was ordered;
• Whether the patent owner has
requested adverse judgment or canceled
all claims at issue in the AIA trial
proceeding;
• Whether the patent owner is
requesting rehearing or appealing the
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16657
final written decision in the AIA trial
proceeding to the Federal Circuit;
• Whether the patent owner agrees to
abide by the estoppel provisions set
forth in 37 CFR 42.73(d)(3) (i.e., not
obtain a claim patentably indistinct
from a claim cancelled or found
unpatentable during an AIA trial
proceeding); and
• Whether lifting the stay would be in
the interests of the efficient
administration of the Office and
integrity of the patent system (cf. 35
U.S.C. 316(b)).
See, e.g., Sienna Biopharmaceuticals,
Inc. v. William Marsh Rice Univ., Case
IPR2017–00045, Paper 54 (PTAB Jun. 4,
2018) (lifting a stay of an ex parte
reexamination); see also, e.g., Unified
Patents Inc. v. Heslop, Case IPR2016–
01464, Paper 14 (PTAB Feb. 23, 2017)
(denying request to lift stay where
similar, if not identical, issues in the
inter partes review would needlessly
duplicate efforts within the Office); CBS
Interactive Inc. v. Helferich Patent
Licensing, LLC, Case IPR2013–00033,
Paper 19 (PTAB Dec. 20, 2012) (denying
request to lift stay due to overlapping
issues and the conduct of parallel
proceedings would burden the Office
and the parties). Patents may consider
similar factors when determining
whether to lift a suspension of a reissue
proceeding.
When ordering the stay of a parallel
Office proceeding, the Board generally
indicates that the stay will remain in
place ‘‘pending the termination or
completion of the instant proceeding.’’
Thus, absent a motion to lift the stay, a
stay typically will remain in place until
at least after the deadline for the filing
of a notice of an appeal to the Federal
Circuit under 35 U.S.C. 142 has passed.
The issuance of a trial certificate
signifies the completion of a trial
proceeding and the end of the Board’s
jurisdiction, and thus automatically lifts
a stay entered with the language above.
If a patent owner files a motion to lift
a stay of a parallel Office proceeding
after the Board issues a final written
decision (and after any requests for
rehearing are resolved, if applicable),
the Board typically will lift the stay,
absent reasons not to do so, e.g., in view
of factors as discussed above. For
example, the Board typically will lift the
stay of a parallel Office proceeding if the
patent owner proposes amendments in
that proceeding in a meaningful way not
previously considered by the Office.
Meaningful amendments may include
those that narrow the scope of claims
considered in an AIA proceeding or
otherwise attempt to resolve issues
identified in the final written decision.
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16658
Federal Register / Vol. 84, No. 77 / Monday, April 22, 2019 / Notices
Additional Considerations for Lifting a
Suspension of a Reissue Proceeding
Non-exhaustive factors considered by
the Office when determining whether
the Board will lift a stay, or Patents will
lift a suspension, of a parallel reissue
application are discussed above. Further
information specific to reissue
proceedings are provided below.
After a final written decision issues in
an AIA proceeding (and after any
requests for rehearing are resolved, if
applicable), if requested by the patent
owner, Patents may lift a suspension of
or otherwise decide to proceed with,
i.e., not suspend, a related reissue
proceeding while an appeal to the
Federal Circuit regarding the final
written decision is pending. For
example, Patents may lift a suspension
if the reissue application attempts to (1)
resolve issues with the original or
proposed substitute claims identified in
the final written decision (e.g., amends
the claims in a meaningful way not
previously considered by the Office,
also taking into account estoppel
provisions set forth in 37 CFR
42.73(d)(3)), if applicable; or (2) correct
an unrelated issue with the patent (e.g.,
correction of a priority claim,
inventorship, or a drawing). Otherwise,
Patents generally will not lift a
suspension or proceed with prosecution
of a reissue application after the Board
issues a final written decision and while
a Federal Circuit appeal of that decision
is ongoing.
If a Federal Circuit appeal of a final
written decision in an AIA trial remains
ongoing when allowable subject matter
is identified in the reissue application,
the Office typically will not pass that
application to allowance until the
Federal Circuit appeal concludes. In
that situation, after an appeal to the
Federal Circuit concludes, a patent
owner may confer with the examiner
and decide how to proceed with the
reissue application (e.g., proceed to
issuance, file a request for continued
examination (‘‘RCE’’) for further
amendments/prosecution, or abandon
the reissue application). The examiner
also may need to reevaluate the status
of allowable subject matter in view of a
decision by the Federal Circuit.
As long as patent owner files the
reissue application in a timely manner
as discussed above, and raises issues
different than those already considered
in the AIA proceeding (e.g.,
amendments meaningfully different
than those in a previously presented
motion to amend), the Office typically
will consider the reissue application
(subject to possible considerations for
suspension discussed above).
VerDate Sep<11>2014
17:22 Apr 19, 2019
Jkt 247001
Additional Considerations for Lifting a
Stay of an Ex Parte Reexamination
Non-exhaustive factors considered by
the Board when determining whether to
lift a stay of a parallel reexamination are
discussed earlier. As noted previously,
under certain circumstances, the Office
will proceed with a reexamination after
the Board issues a final written decision
relating to the same patent.
Unlike reissue applications, patent
owners do not have the option to
abandon ex parte reexamination
applications. Once started,
reexaminations proceed with special
dispatch to completion. See 35 U.S.C.
305. Thus, after the Office determines
that it is appropriate to lift a stay, or that
a stay is not appropriate, a
reexamination typically will continue to
completion, notwithstanding a Federal
Circuit appeal of a final written decision
on the same patent.
If the Office identifies allowable
subject matter in a reexamination
proceeding, or after conclusion of a
reexamination determining that some or
all claims of a patent are unpatentable,
the Office typically will issue a notice
of intent to issue a reexamination
certificate (‘‘NIRC’’) and reexamination
certificate even if a Federal Circuit
appeal remains ongoing, unless the
patent owner timely files a notice of
appeal in the ex parte reexamination
proceeding. A patent owner who is
dissatisfied with an examiner’s decision
to reject claims in an ex parte
reexamination proceeding may appeal
the final rejection of any claim to the
Board by filing a notice of appeal within
the required time. See MPEP 2273,
2687; 35 U.S.C. 134. In order to ensure
that the reexamination certificate does
not cancel original patent claims that
are separately on appeal at the Federal
Circuit, the patent owner must timely
file an appeal in the reexamination
proceeding of any final rejection of
those original claims.
Dated: April 16, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2019–08022 Filed 4–19–19; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Patent Cooperation Treaty
ACTION:
Proposed collection; comment
request.
PO 00000
Frm 00022
Fmt 4703
Sfmt 4703
The United States Patent and
Trademark Office (USPTO), as required
by the Paperwork Reduction Act of
1995, invites comments on a proposed
extension of an existing collection:
0651–0021 (Patent Cooperation Treaty).
DATES: Written comments must be
submitted on or before June 21, 2019.
ADDRESSES: You may submitted
comments by any of the following
methods:
• Email: InformationCollection@
uspto.gov. Include ‘‘0651–0021
comment’’ in the subject line of the
message.
• Federal Register Portal: https://
www.regulations.gov.
• Mail: Marcie Lovett, Chief, Records
and Information Governance Branch,
Office of the Chief Administrative
Officer, United States Patent and
Trademark Office, P.O. Box 1450,
Alexandria, VA 22313–1450.
FOR FURTHER INFORMATION CONTACT:
Requests for additional information
should be directed to Rafael Bacares,
Senior Legal Advisor, Office of Patent
Legal Administration, United States
Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313–1450; by
telephone at 571–272–3276; or by email
at Rafael.Bacares@uspto.gov with
‘‘0651–0021 comment’’ in the subject
line. Additional information about this
collection is also available at https://
www.reginfo.gov under ‘‘Information
Collection Review.’’
SUPPLEMENTARY INFORMATION:
SUMMARY:
I. Abstract
This collection of information is
required by the Patent Cooperation
Treaty (PCT), which became operational
in June 1978 and is administered by the
International Bureau (IB) of the World
Intellectual Property Organization
(WIPO) in Geneva, Switzerland. The
provisions of the PCT have been
implemented by the United States in
Part IV of Title 35 of the U.S. Code
(Chapters 35–37) and Subpart C of Title
37 of the Code of Federal Regulations
(37 CFR 1.401–1.499). The purpose of
the PCT is to provide a standardized
filing format and procedure that allows
an applicant to seek protection for an
invention in several countries by filing
one international application in one
location, in one language, and paying
one initial set of fees.
The information in this collection is
used by the public to submit a patent
application under the PCT and by the
United States Patent and Trademark
Office (USPTO), to fulfill its obligation
to process, search, and examine the
application as directed by the treaty.
The USPTO acts as the United States
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[Federal Register Volume 84, Number 77 (Monday, April 22, 2019)]
[Notices]
[Pages 16654-16658]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-08022]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2019-0008]
Notice Regarding Options for Amendments by Patent Owner Through
Reissue or Reexamination During a Pending AIA Trial Proceeding (April
2019)
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') provides notice of information regarding existing Office
practice as it pertains to reissue and reexamination procedures for
amending claims available to patent owner during the pendency of a
trial proceeding under the America Invents Act (``AIA'') involving the
same patent. On October 29, 2018, the Office published a notice
requesting comments on proposed modifications to current motion to
amend (``MTA'') practice and procedures in AIA trial proceedings. In
[[Page 16655]]
response to that notice, the Office received a number of comments and
questions requesting clarification regarding existing reissue and
reexamination procedures at the Office available while an AIA trial
proceeding, including any appeal, involving the same patent is pending.
In response to those comments and questions, this notice provides a
summary of current practice regarding reissue and reexamination options
in which patent owners may amend claims before and after the Patent
Trial and Appeal Board (``PTAB'' or ``Board'') issues a final written
decision in an AIA trial proceeding. This notice also provides summary
information about factors the Office currently considers when
determining whether to stay or suspend a reissue proceeding, or stay a
reexamination, that involves a patent involved in an AIA proceeding,
and also when and whether to lift such a stay or suspension.
FOR FURTHER INFORMATION CONTACT: Rae Lynn P. Guest, Lead Administrative
Patent Judge by telephone at (571) 272-9797 or Stephen Stein, Managing
Quality Assurance Specialist, Central Reexamination Unit at (571) 272-
1544.
SUPPLEMENTARY INFORMATION:
I. Background
On October 29, 2018, the Office published a request for comments
(``RFC'') on a proposed procedure for motions to amend filed in inter
partes reviews, post-grant reviews, and covered business method patent
reviews (collectively AIA trials) before the PTAB. See Request for
Comments on MTA Practice and Procedures in Trial Proceedings Under the
America Invents Act Before the Patent Trial and Appeal Board, 83 FR
54319 (Oct. 29, 2018) (hereinafter RFC or MTA RFC). The Office received
49 comments in response to this RFC as of December 21, 2018 (the
closing date for comments). See Comments on Motion to Amend Practice
and Procedures in AIA Trials, U.S. Patent & Trademark Office, https://go.usa.gov/xEXS2 (comments received by December 21, 2018, in response
to the RFC) (last visited Feb. 8, 2019) (hereinafter PTAB RFC Comments
website). On March 15, 2019, the Office published a notice of a pilot
program for MTA practice and procedures in AIA trial proceedings before
the Board. See Notice Regarding a New Pilot Program Concerning Motion
to Amend Practice and Procedures in Trial Proceedings under the America
Invents Act before the Patent Trial and Appeal Board, 84 FR 9497 (March
15, 2019). In addition to the comments addressed in the MTA program
notice, the Office received a number of comments and questions relating
to reissue or reexamination as an alternative vehicle for claim
amendments. The comments included requests for clarification regarding
existing reissue and reexamination procedures at the Office.
In response to those comments and questions, this notice provides a
summary of various pertinent practices regarding existing Office
procedures that apply to reissue and reexamination, including after a
petitioner files an AIA petition challenging claims of the same patent,
after the Board institutes a trial, and after the Board issues a final
written decision. This notice also provides summary information about
factors the Office currently considers when determining whether to stay
or suspend a reissue proceeding, or stay a reexamination proceeding,
that involves a patent at issue in an AIA proceeding, and when and
whether to lift such a stay or suspension.
This notice is only meant to summarize existing practice, and not
to amend, supersede, or otherwise alter it. This notice should not be
cited in papers submitted to the Office. Instead, applicants, parties,
and the public should consult relevant statutes, regulations, case law,
and the Office's Manual of Patent Examining Procedure (MPEP) for a full
assessment of the issues, and for sources of citations in papers
submitted to the Office.
II. Options for Amendments Through Reissue or Reexamination
The Office will consider a reissue application or a request for
reexamination any time before, but not after, either: (1) The Office
issues a certificate that cancels all claims of a patent, e.g., a trial
certificate in an AIA trial proceeding, or (2) the U.S. Court of
Appeals for the Federal Circuit (``Federal Circuit'') issues a mandate
in relation to a decision that finds all claims of a patent are invalid
or unpatentable. The Office will not issue a trial certificate relating
to a patent at issue in an AIA proceeding until after either: (i) The
deadline for the filing of a notice of appeal to the Federal Circuit
under 35 U.S.C. 142 has passed (i.e., 63 days after the date of a final
written decision or, if a request is timely filed, 63 days after the
date of a decision on a request for rehearing relating to the final
written decision) (37 CFR 90.3); or (ii) all decisions or
determinations in relation to an appeal to the Federal Circuit
regarding the patent are finally resolved.
Thus, patent owners may avail themselves of a reissue application
or a request for reexamination before, during, or after an AIA trial
proceeding results in a final written decision, as long as the
application or request is timely filed as discussed above (i.e., before
the Office issues a certificate that cancels all relevant claims, or
before the Federal Circuit issues a relevant mandate, as
applicable).\1\ For example, a patent owner may file a reissue
application or a request for reexamination within 63 days of a final
written decision regarding the patent at issue. Actions taken by the
Office in response to such an application or request will depend on the
timing of the filing and other relevant facts and issues, as explained
in further detail below.
---------------------------------------------------------------------------
\1\ If a certificate issues cancelling all of the claims of the
patent, see MPEP 1449.01 for guidance on further prosecution of a
reissue application, or MPEP 2286 (IV) for guidance on further
prosecution of a reexamination proceeding.
---------------------------------------------------------------------------
Reissue
Under the current statutory scheme, a patent owner may file a
reissue application to amend claims before, during, or after an AIA
trial proceeding concludes with a final written decision, as discussed
above. In particular, although 35 U.S.C. 251 requires an ``error,''
both the Office and the Federal Circuit have recognized that the error
requirement is satisfied by the patent owner's failure to previously
present narrower claims. See In re Tanaka, 640 F.3d 1246, 1251 (Fed.
Cir. 2011); MPEP 1402(I). In other words, no admissions as to the
patentability of original claims are required in a reissue application,
and the oath accompanying a reissue application may include a statement
about the error requirement related to the original patent's failure to
earlier present narrower claims.\2\ A reissue then proceeds through
examination in much the same way as an application for a patent under
original examination. 35 U.S.C. 251(c).
---------------------------------------------------------------------------
\2\ See MPEP 1414(II) for guidance on the specificity in
identification of the error that must be provided in the reissue
declaration.
---------------------------------------------------------------------------
As stated in 37 CFR 1.178(a), an ``application for reissue of a
patent shall constitute an offer to surrender that patent, and the
surrender shall take effect upon reissue of the patent.'' A patent
owner may abandon a reissue application at any time before reissue of
the patent, for example, after obtaining a favorable result in a final
written decision in an AIA proceeding or on appeal. Before reissuance
of a patent, the original patent is not surrendered and remains in
effect.\3\ As discussed
[[Page 16656]]
above, a reissue application must be filed before the issuance of a
trial certificate that cancels all claims of a patent in an AIA trial
proceeding or before the Federal Circuit issues a mandate in relation
to a decision that determines or affirms that all claims of a patent
are invalid or unpatentable. See MPEP 1449.01.
---------------------------------------------------------------------------
\3\ Cf. MPEP 1460 (``In the situation where multiple reissue
applications are filed, the original patent is surrendered when at
least one reissued patent has been granted and there are no pending
applications for reissue of the original patent.''); 35 U.S.C.
251(b); 37 CFR 1.177; MPEP 1451.
---------------------------------------------------------------------------
A reissue proceeding involves expedited prosecution. Under 37 CFR
1.176, ``[a]pplications for reissue will be acted on by the examiner in
advance of other applications,'' and, as stated in MPEP 708.01,
``[r]eissue applications, particularly those involved in stayed
litigation, should be given priority.'' Further, under MPEP 1442,
reissue applications have ``special status'' and ``will be taken up for
action ahead of other `special' applications.'' The Office may stay
examination of a reissue application, however, pending a final written
decision in an AIA trial proceeding addressing the same patent, as
discussed in more detail below.
Office procedures provide for third party notice (by announcement
of the reissue application in the Official Gazette, see MPEP 1430) and
a (limited) opportunity for a third party to be heard (by filing a
protest, see MPEP 1441.01). In addition, any 35 U.S.C. 315(b) bar
triggered by service of a complaint alleging infringement of the
original patent may not apply to the reissued patent. See Eizo Corp. v.
Barco N.V., Case IPR2014-00358, Paper 21 at 7-8 (PTAB July 14, 2015);
cf. Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1336-37
(Fed. Cir. 2018) (rejecting petitioners' effort to deem a reexamined
patent a ``new patent'' for the purposes of 35 U.S.C. 315(b), noting
that ```[u]nlike reissue, reexamination does not result in the
surrender of the original patent and the issuance of a new patent''')
(quoting Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335,
1341-42 (Fed. Cir. 2012)).
Ex Parte Reexamination
A patent owner also may seek to amend its claims by filing a
request for ex parte reexamination before, during, or after an AIA
trial proceeding concludes with a final written decision, as discussed
above. Reexamination presents considerations, however, not present with
regard to reissue applications. Of particular note, under 35 U.S.C.
303, the Director is required to determine whether a request for
reexamination raises ``a substantial new question [SNQ] of
patentability affecting any claim of the patent concerned.''
An SNQ is not raised if the ``question of patentability has already
been . . . decided in an earlier concluded examination or review of the
patent by the Office'' (MPEP 2242(I)). Thus, an SNQ for reexamination
cannot be a question raised in a ground already decided in a final
written decision. In re Swanson, 540 F.3d 1368, 1377 (Fed. Cir. 2008)
(quoting H.R. Rep. No. 96-1307(I), at 6466 (1980)) (the SNQ requirement
bars ``reconsideration of any argument already decided by the office,
whether during the original examination or an earlier reexamination'');
accord id. at 1380. Thus, after the Board issues a final written
decision on the patent in an AIA proceeding, an SNQ in a later-filed
request for reexamination on that patent must differ from any question
raised in a ground addressed in a final written decision.
In addition, current Office interpretation requires that the
``substantial new question of patentability [is] established for the
existing claims in the patent in order to grant reexamination'' (MPEP
2242(I)) and that the reexamination ``request should be decided on the
wording of the patent claims in effect at that time (without any
proposed amendments)'' (MPEP 2221). Thus, an SNQ cannot be established
based on new questions raised in relation to amended or new claims
proposed during reexamination. See also 35 U.S.C. 303 (requiring the
SNQ affect ``any claim of the patent''). Once an SNQ has been
established for the original claims in a reexamination proceeding,
however, an SNQ is not required for examination of amended or new
claims.
On the other hand, prior to the issuance of a final written
decision, an SNQ may be established based on a question raised in a
ground presented in an AIA petition. See MPEP 2242(I).\4\ If the
Central Reexamination Unit (CRU) grants a reexamination request,
however, the Office may stay the reexamination pending a final written
decision in an AIA trial proceeding addressing the same patent, as
discussed in more detail below.
---------------------------------------------------------------------------
\4\ MPEP 2242(I) provides (emphasis in original and added):
If the prior art patents and printed publications raise a
substantial question of patentability of at least one claim of the
patent, then a substantial new question of patentability as to the
claim is present, unless the same question of patentability has
already been: . . . (B) decided in an earlier concluded examination
or review of the patent by the Office. . . .
---------------------------------------------------------------------------
In contrast to reissue, a reexamination results in the issuance of
a certificate in the original patent, rather than the issuance of a new
patent. Therefore, the 35 U.S.C. 315(b) bar triggered by service of a
complaint alleging infringement of the original patent applies to a
reexamined patent, even if the reexamination involves amended claims.
See Click-To-Call Techs., 899 F.3d at 1336-37 (rejecting petitioners'
effort to deem a reexamined patent a ``new patent'' for the purposes of
35 U.S.C. 315(b)); BioDelivery Sciences Int'l, Inc. v. MonoSol Rx, LLC,
Case IPR2013-00315, Paper 31 at 3-5 (PTAB Nov. 13, 2013).
Also in contrast to a reissue proceeding, which may address all
statutory requirements relating to patentability (i.e., 35 U.S.C. 101,
102, 103, 112), a reexamination proceeding generally addresses only
issues relating to 35 U.S.C. 102 and 103, and 35 U.S.C. 112 under
limited circumstances (i.e., only as raised by newly added subject
matter in an amendment). In addition, a reexamination proceeding must
be based on prior art consisting of patents and printed publications
(35 U.S.C. 301, 302). For example, a reexamination proceeding does not
address issues involving public use or sale.
Considerations for When a Parallel Office Proceeding Will Be Stayed or
Suspended
This notice provides additional information as to how the Office
may handle the imposition of a stay or the lifting of a stay in a
reissue or reexamination proceeding (``parallel Office proceeding'') in
view of a co-pending AIA proceeding involving the same patent. Any
parallel Office proceeding, however, will be evaluated based on its
particular facts and circumstances.
The Director has authority to determine the approach with regard to
a possible stay of a reissue or ex parte reexamination proceeding. 35
U.S.C. 315(d), 325(d). The Director has previously authorized the Board
to enter an order to effect a stay, transfer, consolidation, or
termination of parallel Office proceedings involving the same patent
during the pendency of an AIA trial proceeding. 37 CFR 42.3(a),
42.122(a), 42.222(a). Under that authority, the Board ordinarily will
stay a parallel Office proceeding where good cause exists. Good cause
for staying a case may exist if, for example, an on-going AIA
proceeding, which is subject to statutory deadlines, is addressing the
same or overlapping claims of a patent at issue in a parallel Office
proceeding.
Parties to an AIA trial proceeding may request authorization to
file motions to stay or motions to lift stays at any time
[[Page 16657]]
during the pendency of the AIA proceeding. The Board typically will
consider motions to stay a concurrent Office proceeding (or may impose
a stay sua sponte) any time after institution of an AIA trial
proceeding and before the filing of a notice of appeal or the deadline
for filing a notice of an appeal to the Federal Circuit under 35 U.S.C.
142 has passed (i.e., 63 days after the date of a final written
decision or, if a request is timely filed, 63 days after the date of a
decision on a request for rehearing relating to the final written
decision). See 37 CFR 42.3(a), 42.122(a), 42.222(a), 90.3.
In deciding whether to grant a stay of a parallel proceeding
involving the same patent within the Office, the Office (typically the
Board) may consider a number of factors, including, but not limited to:
Whether the claims challenged in the AIA proceeding are
the same as or depend directly or indirectly from claims at issue in
the concurrent parallel Office proceeding;
Whether the same grounds of unpatentability or the same
prior art are at issue in both proceedings;
Whether the concurrent parallel Office proceeding will
duplicate efforts within the Office;
Whether the concurrent parallel Office proceeding could
result in inconsistent results between proceedings (e.g., whether
substantially similar issues are presented in the concurrent parallel
Office proceeding);
Whether amending the claim scope in one proceeding would
affect the claim scope in another proceeding;
The respective timeline and stage of each proceeding;
The statutory deadlines of the respective proceedings;
Whether a decision in one proceeding would likely simplify
issues in the concurrent parallel Office proceeding or render it moot.
See, e.g., CBS Interactive Inc. v. Helferich Patent Licensing, LLC.,
Case IPR2013-00033, Paper 15 (PTAB Nov. 6, 2012) (order to stay a
concurrent reexamination); Stride Rite Children's Group, LLC v. Shoes
By Firebug LLC, Case IPR2017-01810, Paper 23 (PTAB Jul. 12, 2018)
(order to stay a concurrent reissue). See also, e.g., Arctic Cat, Inc.
v. Polaris Indus., Inc., Case IPR2015-01781, Paper 78 (PTAB Sept. 25,
2018) (denying stay because of meaningful distinctions between issues
raised in a reexamination and an IPR); Acrux DDS Pty, Ltd. v. Kaken
Pharma. Co. Ltd., Case IPR2017-00190, Paper 11 (PTAB Mar. 1, 2017)
(denying stay requested prior to trial institution); Mastercard Int'l
Inc. v. D'Agostino, Case IPR2014-00543, Paper 14 (PTAB October 2, 2014)
(denying stay because a Notice of Intent to Issue a Reexamination
Certification already had been entered in the co-pending
reexamination); cf. Ultratec, Inc. v. Sorenson Comm'ns, Inc., No. 13-
cv-346-bbc, 2013 WL 6044407, at *2-3 (W.D. Wisc. Nov. 14, 2013)
(assessing some of the same factors in determining whether to stay
district court litigation in light of pending inter partes review
petitions).
The Board also may deny institution under 35 U.S.C. 325(d) of a
requested AIA trial proceeding if a parallel Office proceeding, for
example, is in a more advanced stage and involves overlapping issues
with the proposed AIA trial proceeding.
The Patents Organization (which are the offices under the
Commissioner for Patents, hereinafter ``Patents'') also may decide to
suspend proceedings in a parallel reissue application either sua sponte
or on request of the applicant under 37 CFR 1.103. See also MPEP
1442.02. Patents typically will consider similar factors to those
discussed above but will weigh them in view of relevant facts and
circumstances at the time suspension is being considered.
For example, action in a reissue application typically will be
suspended (either sua sponte or if requested by petition) when there is
concurrent litigation or a pending trial before the PTAB. MPEP 1442.02.
However, the Office may or may not suspend a reissue application, using
its discretion based upon the facts of the situation, for example if it
is evident to the CRU examiner, or the applicant indicates, that ``the
. . . trial before the PTAB has been terminated''; ``there are no
significant overlapping issues between the application and the
litigation or pending trial before the PTAB''; or ``it is applicant's
desire that the application be examined at that time.'' Id.
Considerations for Lifting a Stay of Parallel Office Proceedings
In deciding whether to lift a stay of a parallel proceeding
involving the same patent within the Office, the Board may consider a
number of factors, including, but not limited to:
Whether factors considered when ordering the stay (i.e.,
factors indicating good cause) have changed from when the stay was
ordered;
Whether the patent owner has requested adverse judgment or
canceled all claims at issue in the AIA trial proceeding;
Whether the patent owner is requesting rehearing or
appealing the final written decision in the AIA trial proceeding to the
Federal Circuit;
Whether the patent owner agrees to abide by the estoppel
provisions set forth in 37 CFR 42.73(d)(3) (i.e., not obtain a claim
patentably indistinct from a claim cancelled or found unpatentable
during an AIA trial proceeding); and
Whether lifting the stay would be in the interests of the
efficient administration of the Office and integrity of the patent
system (cf. 35 U.S.C. 316(b)).
See, e.g., Sienna Biopharmaceuticals, Inc. v. William Marsh Rice Univ.,
Case IPR2017-00045, Paper 54 (PTAB Jun. 4, 2018) (lifting a stay of an
ex parte reexamination); see also, e.g., Unified Patents Inc. v.
Heslop, Case IPR2016-01464, Paper 14 (PTAB Feb. 23, 2017) (denying
request to lift stay where similar, if not identical, issues in the
inter partes review would needlessly duplicate efforts within the
Office); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case
IPR2013-00033, Paper 19 (PTAB Dec. 20, 2012) (denying request to lift
stay due to overlapping issues and the conduct of parallel proceedings
would burden the Office and the parties). Patents may consider similar
factors when determining whether to lift a suspension of a reissue
proceeding.
When ordering the stay of a parallel Office proceeding, the Board
generally indicates that the stay will remain in place ``pending the
termination or completion of the instant proceeding.'' Thus, absent a
motion to lift the stay, a stay typically will remain in place until at
least after the deadline for the filing of a notice of an appeal to the
Federal Circuit under 35 U.S.C. 142 has passed. The issuance of a trial
certificate signifies the completion of a trial proceeding and the end
of the Board's jurisdiction, and thus automatically lifts a stay
entered with the language above.
If a patent owner files a motion to lift a stay of a parallel
Office proceeding after the Board issues a final written decision (and
after any requests for rehearing are resolved, if applicable), the
Board typically will lift the stay, absent reasons not to do so, e.g.,
in view of factors as discussed above. For example, the Board typically
will lift the stay of a parallel Office proceeding if the patent owner
proposes amendments in that proceeding in a meaningful way not
previously considered by the Office. Meaningful amendments may include
those that narrow the scope of claims considered in an AIA proceeding
or otherwise attempt to resolve issues identified in the final written
decision.
[[Page 16658]]
Additional Considerations for Lifting a Suspension of a Reissue
Proceeding
Non-exhaustive factors considered by the Office when determining
whether the Board will lift a stay, or Patents will lift a suspension,
of a parallel reissue application are discussed above. Further
information specific to reissue proceedings are provided below.
After a final written decision issues in an AIA proceeding (and
after any requests for rehearing are resolved, if applicable), if
requested by the patent owner, Patents may lift a suspension of or
otherwise decide to proceed with, i.e., not suspend, a related reissue
proceeding while an appeal to the Federal Circuit regarding the final
written decision is pending. For example, Patents may lift a suspension
if the reissue application attempts to (1) resolve issues with the
original or proposed substitute claims identified in the final written
decision (e.g., amends the claims in a meaningful way not previously
considered by the Office, also taking into account estoppel provisions
set forth in 37 CFR 42.73(d)(3)), if applicable; or (2) correct an
unrelated issue with the patent (e.g., correction of a priority claim,
inventorship, or a drawing). Otherwise, Patents generally will not lift
a suspension or proceed with prosecution of a reissue application after
the Board issues a final written decision and while a Federal Circuit
appeal of that decision is ongoing.
If a Federal Circuit appeal of a final written decision in an AIA
trial remains ongoing when allowable subject matter is identified in
the reissue application, the Office typically will not pass that
application to allowance until the Federal Circuit appeal concludes. In
that situation, after an appeal to the Federal Circuit concludes, a
patent owner may confer with the examiner and decide how to proceed
with the reissue application (e.g., proceed to issuance, file a request
for continued examination (``RCE'') for further amendments/prosecution,
or abandon the reissue application). The examiner also may need to
reevaluate the status of allowable subject matter in view of a decision
by the Federal Circuit.
As long as patent owner files the reissue application in a timely
manner as discussed above, and raises issues different than those
already considered in the AIA proceeding (e.g., amendments meaningfully
different than those in a previously presented motion to amend), the
Office typically will consider the reissue application (subject to
possible considerations for suspension discussed above).
Additional Considerations for Lifting a Stay of an Ex Parte
Reexamination
Non-exhaustive factors considered by the Board when determining
whether to lift a stay of a parallel reexamination are discussed
earlier. As noted previously, under certain circumstances, the Office
will proceed with a reexamination after the Board issues a final
written decision relating to the same patent.
Unlike reissue applications, patent owners do not have the option
to abandon ex parte reexamination applications. Once started,
reexaminations proceed with special dispatch to completion. See 35
U.S.C. 305. Thus, after the Office determines that it is appropriate to
lift a stay, or that a stay is not appropriate, a reexamination
typically will continue to completion, notwithstanding a Federal
Circuit appeal of a final written decision on the same patent.
If the Office identifies allowable subject matter in a
reexamination proceeding, or after conclusion of a reexamination
determining that some or all claims of a patent are unpatentable, the
Office typically will issue a notice of intent to issue a reexamination
certificate (``NIRC'') and reexamination certificate even if a Federal
Circuit appeal remains ongoing, unless the patent owner timely files a
notice of appeal in the ex parte reexamination proceeding. A patent
owner who is dissatisfied with an examiner's decision to reject claims
in an ex parte reexamination proceeding may appeal the final rejection
of any claim to the Board by filing a notice of appeal within the
required time. See MPEP 2273, 2687; 35 U.S.C. 134. In order to ensure
that the reexamination certificate does not cancel original patent
claims that are separately on appeal at the Federal Circuit, the patent
owner must timely file an appeal in the reexamination proceeding of any
final rejection of those original claims.
Dated: April 16, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2019-08022 Filed 4-19-19; 8:45 am]
BILLING CODE 3510-16-P
