The Federal Circuit recently surprised many patent reexamination practitioners by holding in Belkin v. Kappos that the Board of Patent Appeals and Interferences (“the Board”) lacked jurisdiction to consider claim rejections proposed by a reexamination Requester that were not adopted by the USPTO because they were deemed not to raise a substantial new question (“SNQ”) of patentability. Prior to the Belkin decision, the relevant regulation seemed to permit an aggrieved Requester to appeal the USPTO’s refusal to adopt proposed rejections of claims for which reexamination had been granted on other grounds: “the requester may appeal to the Board with respect to any final decision favorable to patentability, including any final determination not to make a proposed rejection, of any … claim of the patent” (37 CFR 41.61(a)(2); emphasis added). However, the Federal Circuit held that a decision of no SNQ was not a “decision favorable to patentability” and thus did not trigger a right to appeal by the Requester. Because a finding of no SNQ is by statute “final and non-appealable” (35 USC 312(c)), the Federal Circuit affirmed the Board’s finding of no jurisdiction to consider arguments on appeal based on references that the USPTO had previously determined did not raise an SNQ.
In Belkin, the Requester sought inter partes reexamination of a patent and in doing so proposed 10 grounds of rejection based on four different prior art references. In granting reexamination on some claims but denying reexamination on others, the USPTO declined to adopt several of the proposed rejections, finding three out of the four prior art references did not raise SNQs. Following generally accepted practice and what was believed to be clear guidance from the USPTO’s own “Manual of Patent Examining Procedure” (“MPEP”), the Requester petitioned for reconsideration of the claims for which reexamination was denied but believed that the rules forbade any such petition regarding the claims for which reexamination was granted. But the Requester was no doubt surprised to learn from the court’s Belkin decision both that despite USPTO guidance in MPEP 2648 to the contrary, it should have petitioned with regard to the unadopted grounds corresponding to claims for which reexamination was granted and that it could not raise on appeal invalidity arguments relating to any of the three references. In short, the Requester in Belkin was the first to be ensnared in an undetectable and unexpected trap from which there was no escape.
Although Belkin will have decreasing relevance over time since new inter partes reexamination requests can no longer be filed, Requesters in pending inter partes reexamination proceedings may be wise to consider the following tactics:
If you recently received a decision granting inter partes reexamination in whole or part but one or more of your proposed rejections was not adopted, file a petition under 37 CFR 1.927 seeking review of that decision. Even though MPEP 2648 says that you shouldn’t do so, the implication of Belkin is that it will be your only opportunity for review.
If you fall into the above category but more than one month has passed since the mailing date of the decision, technically it is too late to file a Rule 927 petition. But because the Belkin decision was so unexpected and seemingly contradicted accepted practice and guidance from the USPTO, consider filing a Rule 927 petition anyway, along with a petition under Rule 183 asking the USPTO to suspend the one-month deadline and to accept the Rule 927 petition in the interests of justice.
If during the reexamination proceeding the USPTO declines (expressly or otherwise) to adopt a proposed grounds of rejection set forth in Requester’s Comments, consider filing a Rule 927 petition within one month of first discovering the non-adoption. Although the full effect of Belkin is unclear at this time, its language and holding suggest that no unadopted proposed rejection – regardless of when or how raised – may be pursued by Requester on appeal.
Given the typically low rate of reversal on petitions of this type, consider filing an ex parte reexamination addressing perceived weaknesses in the art grounds denied consideration. If filed relatively early in the inter partes reexamination proceeding, through merger, any questions that arise from the ex parte submission may be addressed with those raised by the inter partes reexamination.
Please contact John Phillips, Principal in Fish’s San Diego office with any questions or comments.