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Reexamination at the USPTO

Reexamination at the USPTO. Robert Clarke Director, Office of Patent Legal Administration. Reexamination Filings. Reexamination Filings. Filings: What happened in 1996-97?. 1996-97 Federal Circuit cases. In re RECREATIVE TECHNOLOGIES CORP., 83 F.3d 1394 (Fed. Cir. 1996)

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Reexamination at the USPTO

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  1. Reexamination at the USPTO Robert Clarke Director, Office of Patent Legal Administration

  2. Reexamination Filings

  3. Reexamination Filings

  4. Filings: What happened in 1996-97?

  5. 1996-97 Federal Circuit cases • In re RECREATIVE TECHNOLOGIES CORP., 83 F.3d 1394 (Fed. Cir. 1996) • In re Portola Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997) (overruled by statute in 2002)

  6. Filings: What Happened in 2002?

  7. 2002 Amendments • Public Law 107-273 [November 2, 2002, selected sections] • SEC. 13105. DETERMINATION OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY IN REEXAMINATION PROCEEDINGS. • (a) In General.--Sections 303(a) and 312(a) of title 35, United States Code, are each amended by adding at the end the following: ``The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.''.

  8. 2002 Amendments • Public Law 107-273 [November 2, 2002, selected sections] • SEC. 13106. APPEALS IN INTER PARTES REEXAMINATION PROCEEDINGS. • (a) Appeals by Third-Party Requester in Proceedings.--Section 315(b) of title 35, United States Code, is amended to read as follows: ``(b) Third-Party Requester.--A third-party requester-- (1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent…

  9. In re Swanson (Fed. Cir. 2008) • Consideration of a question of patentability in district court or at the CAFC does not prevent the same question of patentability from being a substantial new question of patentability before the USPTO in reexamination since different rules and standards apply. • Following the amendment to 35 USC 303(a), previously considered references may be applied in a new light to form a substantial new question of patentability. This might include (as in the facts of Swanson) where the reexamination considers the previously-considered reference for a different teaching or purpose than in the initial examination.

  10. Reexamination Filing Requirements

  11. Filing Date Requirements • Rules were amended in 2006 to clarify reexamination filing date requirements. See Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, 71 Fed. Reg. 44219 (August 4, 2006) (final rule). • The rules as amended provide the USPTO, the patent owner whose patent is challenged, and the public as a whole, with a better understanding of the nature of the requester’s challenge, and requires the requester to specify, with precision, the basis of each challenge, so that it can be specifically addressed.

  12. Filing Date Requirements The main focus of the conditions necessary to receive a filing date (in addition to the fee requirement): • A statement identifying each substantial new question of patentability (SNQ) • An identification of every claim for which reexamination is requested • A detailed explanation of how all of the cited documents apply to the limitations of each claim under reexamination

  13. Filing Date Requirements Statement identifying each substantial new question of patentability (SNQ) • The request must point out how any substantial new questions of patentability raised differ from those raised in the previous examination of the patent before the Office. • It is not sufficient that a request for reexamination merely proposes one or more rejections of a patent claim or claims as a basis for reexamination. • It must first be demonstrated that a patent or printed publication that is relied upon in a proposed rejection presents a new, non-cumulative technological teaching that was not previously considered.

  14. Filing Date Requirements • Statement identifying each substantial new question • The SNQ must be “new,” i.e., the requester must point out at least one new teaching or provide new evidence, as the basis for the SNQ, that was not discussed or considered on the record during the reexamination of the patent. • “A[n] SNQ may be based solely on old art where the old art is being presented [or] viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request” (emphasis added). MPEP 2242 II and 2642 II.

  15. Filing Date Requirements • Statement identifying each substantial new question of patentability (SNQ) • The new question of patentability must be “substantial.” • "A prior art patent or printed publication raises a substantial new question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable."  MPEP 2242.

  16. Filing Date Requirements Statement identifying each substantial new question of patentability (SNQ) • In order for a second or subsequent request for reexamination to be granted, the second or subsequent request must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination. • Once the second or subsequent request has provided a “different” SNQ based on the claims in effect at the time of the determination, the second or subsequent request may also provide information directed to any proposed new or amended claim in the pending reexamination.

  17. Filing Date Requirements An identification of every claim for which reexamination is requested • If reexamination is requested for less than all of the patent claims, the USPTO will generally review on the merits only the claims for which reexamination is requested. • See Notice of Clarification of Office Policy to Exercise Discretion in Reexamining Less Than All the Patent Claims, 1311 Off. Gaz. Pat. Office 197 (October 31, 2006); MPEP 2240, 2640. • In the examination stage of the proceeding, the USPTO will generally only examine the claim(s) for which: • reexamination was requested, and • a substantial new question of patentability (SNQ) was found in the order.

  18. Filing Date Requirements A detailed explanation of how all of the cited documents apply to the limitations of each claim under reexamination • For each identified SNQ/proposed rejection, the detailed explanation must explain how all of the cited documents identified as a basis for the SNQ/proposed rejection meet each of the limitations of the claims that are proposed to be rejected. See MPEP 2217 and 2617.

  19. Tips for Filing Reexamination Requests Tips for Avoiding a Notice of Failure to Comply or a Decision Vacating Filing Date • Propose specific rejections. For example: • Claims 1-5 are anticipated by A. • Claims 1-5 are obvious over A in view of B. • Avoid shotgun statements such as: • The claims are anticipated and/or obvious over one or more of A, B, C, or D, taken alone or in combination. • The claims are obvious over A in view of the “prior art” (where the prior art is generally identified, in another portion of the request, as any one or more of a list of secondary references.)

  20. Tips for Filing Reexamination Requests Tips for Avoiding a Notice of Failure to Comply or a Decision Vacating Filing Date (continued) • Ensure that each of thereferences cited in the request is identified as the basis of at least one SNQ or as part of a proposed rejection based on an SNQ, and is specifically discussed in the corresponding detailed explanation • the detailed explanation must explain how all of the cited documents identified as a basis for the SNQ/proposed rejection meet each of the limitations of the claims that are proposed to be rejected, with the exception of a patent owner request, in which the patent owner may explain how the claims are distinguished from the documents identified as a basis for the SNQ. • Avoid the citation of references in the request without an explanation of how the references are specifically to be applied to the claims.

  21. Contact Information Robert Clarke robert.clarke@uspto.gov (571) 272-7735

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