Comments on the USPTO’s Proposed Streamlined Patent Reexamination Regulations Greg H. Gardella Elizabeth Iglesias Jason

1. Comments on the USPTO’s Proposed Streamlined Patent Reexamination RegulationsGreg H. GardellaElizabeth IglesiasJason SullivanIrell & Manella, LLP

2. Presentation Topic A5-A7: Compact Prosecution & Submission of Amendments/Evidence • A.5. Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request • A.6. Patent Owner’s Amendments and Evidence Will Be Mainly Limited to the First Action Response • A.7. Claim Amendments Will Not Be Entered Unless Accompanied by a Statement Explaining How the Proposed New Claim Language Renders the Claims Patentable in Light of an SNQ

3. A5: Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request A.5 proposes: • “[R]equir[e] the Requester to submit all necessary evidence in the initial request [to] reduce the need for later submissions.” • “[A]ny further submission of evidence . . . by the Third Party Requester in the proceeding will be limited to rebutt[al].” • “Third Party Requester must identify the specific point to be rebutted and explain how the new evidence rebuts it.” • Would apply to both ex parte and inter partes reexams.

4. A5: Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request Our comments: • Existing CRU approach under Rules 116 and 948 has, in practice, been akin to a “could not have been submitted earlier” standard • There is a need to balance the interests of: • Encouraging early submission of evidence. • Recognizing the practical impossibility of submitting evidence on every conceivable issue up front.

5. A5: Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request • Public interest not served by overly strict standard: • Public cannot initiate another RX on same basic issues in order to present evidence. • Evidence could be case dispositive. • Consider standard of “reasonable foreseeability” • Should Requester reasonably have foreseen the issue and presented the evidence earlier?

6. A5: Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request • Some situations where Requester perhaps should not be expected to have foreseen the issue and presented the evidence earlier: • Examiner adopts claim interpretation inconsistent with and substantially narrower than the dictionary definition • Examiner finds prior art deficient as to teaching a fundamental technological principle (e.g. how TCP/IP works). • Patent Owner imports one of many dependent claims into independent claim, creating new combinations.

7. A6: Patent Owner’s Amendments and Evidence Will Be Mainly Limited to the First Action Response Item A.6 proposes: • Patent Owner’s submission of amendments and evidence will be limited to the earlier of (1) her optional statement under 35 U.S.C. 304 (ex parte only), or (2) her response to an FAOM. • “Any further submission of amendments or declaration evidence . . . will be limited to overcoming a new ground of rejection entered in any non-final Office action.” • Would apply to both ex parte and inter partes reexams.

8. A6: Patent Owner’s Amendments and Evidence Will Be Mainly Limited to the First Action Response Our comments: • Same issues with respect to Examiner findings that could not reasonably have been foreseen (see discussion supra). • Additionally, final rejections may include new grounds of rejection (e.g., for new claims). • The “reasonable foreseeability” standard would accommodate this scenario.

9. A7: Claim Amendments Will Not Be Entered Unless Accompanied by a Statement Explaining How the Proposed New Claim Language Renders the Claims Patentable in Light of an SNQ Item A.7 proposes: • “Examiner will only enter an amendment or new claim if it is accompanied by a statement explaining how the proposed language “renders the claims patentable over the references raising an SNQ.” • “The amendment will not be entered if the necessary statement is either missing or conclusory.” • “[O]nce the amendment is entered, a rejection based on broadening is the only substantive ground of rejection available . . . .” • Would apply to both ex parte and inter partes reexams.

10. A7: Claim Amendments Will Not Be Entered Unless Accompanied by a Statement Explaining How the Proposed New Claim Language Renders the Claims Patentable in Light of an SNQ Our comments: • Good proposal so long as “SNQ” is interpreted broadly. • 35 U.S.C. 305: “patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited . . . .” • The statute is not limited to amendments specifically addressing the SNQ. • Nor should PTO practice as to amendments be so limited.

11. A7: Claim Amendments Will Not Be Entered Unless Accompanied by a Statement Explaining How the Proposed New Claim Language Renders the Claims Patentable in Light of an SNQ Our comments: • Example of an amendment that distinguishes prior art but doesn’t necessary address “the SNQ”: • Claim 1 includes elements A, B, C, and D. • SNQ relates to element C. • PO does not amend C. • Rather, PO presents new element E. • Should this amendment be refused under the statutory language?