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Comments on Proposed Rules for Compact Prosecution U.S. Patent and Trademark Office – June 1, 2011 Public Meeting

Comments on Proposed Rules for Compact Prosecution U.S. Patent and Trademark Office – June 1, 2011 Public Meeting. Robert Greene Sterne, Sterne Kessler Goldstein & Fox . Proposed Compact Prosecution. A5. Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request

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Comments on Proposed Rules for Compact Prosecution U.S. Patent and Trademark Office – June 1, 2011 Public Meeting

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  1. Comments on Proposed Rules for Compact ProsecutionU.S. Patent and Trademark Office – June 1, 2011 Public Meeting Robert Greene Sterne, Sterne Kessler Goldstein & Fox

  2. Proposed Compact Prosecution • A5. Requester’s Declaration and Other Evidence Will Be Mainly Limited to the Request • A6. Patent Owner’s Amendments and Evidence Will be Mainly Limited to the First Action Response • 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 Streamlined Patent Reexamination Proceedings, 76 Fed. Reg. 22854, 22856-58 (April 25, 2011)

  3. Impact of Restrictions on Requesters – A5. • A5. Restrictions on the Requester’s ability to admit evidence • Generally conforms with current practice • Properly restricts limited statutory role of Requesters to once commenting on Patent Owner responses and corresponding Office action • Any formal rule or procedure should recognize the Requester’s need to introduce rebuttal evidence

  4. Impact of Restrictions on Patent Owners – A6. • A6. Restrictions on the Patent Owner’s ability to admit evidence and amend • Severe negative impact on Patent Owner, especially with concurrent litigation • Unrealistic to force amendments in advance of knowing whether substantive arguments or Rule 131 declarations will be persuasive • Particularly onerous where litigation is at an advanced stage (i.e., past Markman) or where significant past damages are in play • Recognized problem in past reexam rulemakings; potentially addressed if RCR’s are formalized

  5. Impact on Restrictions on Amendments – A7. • A7. Restrictions scope of amendments • Seems like a reasonable restriction given In re Freeman • But, further cuts against unfettered application of broadest reasonable interpretation • There is a difference in the statutory language between inter partes and ex parte reexamination that would suggest different treatment—ex parte is narrower • Serves to ensure reexam is not converted into a de facto reissue

  6. Counter Proposal for IPR • The CRU needs the opportunity to ask questions of the participants. • Patent Owners need more than one opportunity to overcome the rejections • Requesters need corresponding opportunities to rebut. • Request for continued reexamination? • Different tracks for reexam?

  7. Disclaimers • Authors • Robert Greene Sterne • Michael Messinger • Lori Gordon • Jon Wright • Jason Eisenberg • Rich Coller • This presentation is intended to foster dialog on the proposed rule topics. It does not necessarily reflect the views of the authors, their clients or their firm.

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