Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (April 2019), 16654-16658 [2019-08022]

Download as PDF 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. amozie on DSK9F9SC42PROD with NOTICES 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. VerDate Sep<11>2014 Estimated annual responses 17:22 Apr 19, 2019 Jkt 247001 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] BILLING CODE 3510–16–P PO 00000 Frm 00018 Fmt 4703 Sfmt 4703 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: E:\FR\FM\22APN1.SGM 22APN1 Federal Register / Vol. 84, No. 77 / Monday, April 22, 2019 / Notices 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: amozie on DSK9F9SC42PROD with NOTICES 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 VerDate Sep<11>2014 17:22 Apr 19, 2019 Jkt 247001 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 PO 00000 Frm 00019 Fmt 4703 Sfmt 4703 16655 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 E:\FR\FM\22APN1.SGM Continued 22APN1 16656 Federal Register / Vol. 84, No. 77 / Monday, April 22, 2019 / Notices 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)). amozie on DSK9F9SC42PROD with NOTICES 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. VerDate Sep<11>2014 17:22 Apr 19, 2019 Jkt 247001 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. . . . PO 00000 Frm 00020 Fmt 4703 Sfmt 4703 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 E:\FR\FM\22APN1.SGM 22APN1 amozie on DSK9F9SC42PROD with NOTICES Federal Register / Vol. 84, No. 77 / Monday, April 22, 2019 / Notices 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 VerDate Sep<11>2014 17:22 Apr 19, 2019 Jkt 247001 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 PO 00000 Frm 00021 Fmt 4703 Sfmt 4703 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. E:\FR\FM\22APN1.SGM 22APN1 amozie on DSK9F9SC42PROD with NOTICES 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: http:// 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 http:// 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 E:\FR\FM\22APN1.SGM 22APN1

Agencies

[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