USPTO to Allow Pre-Order Patent Owner Responses in Reexaminations

Need to know

• The U.S. Patent and Trademark Office (USPTO) is instituting a new process in ex parte reexamination (EPRx) proceedings that will permit a patent owner to submit a pre-order paper to dispute the existence of a substantial new question (SNQ) of patentability.

On April 1, the USPTO announced a new process for EPRx proceedings in which a request for reexamination filed on or after April 5 will permit a patent owner to submit a paper arguing that the request for EPRx does not raise an SNQ, prior to the statutory deadline for the Office to make the SNQ determination. 35 U.S.C. § 303(a) requires the Director to determine whether a request for EPRx raises an SNQ within three months of the date the request is filed. Under the previous process, patent owners could not file a substantive response disputing the requester’s arguments/evidence until after the Director had determined that an SNQ existed and had ordered reexamination. Under the new process, the Office will waive certain rules and thereby allow patent owners to submit information at the pre-order stage.

Content of paper

A patent owner’s pre-order paper is limited to 30 pages and must be compliant with the requirements of 37 C.F.R. 1.52. The paper is limited to arguments to support the patent owner’s assertion that the Office should maintain the decision of patentability made during examination despite the argued teachings in the request for EPRx. The paper can be supported by a declaration, but substantive arguments must be made in the paper itself. The Office notes that the paper should not address why the USPTO should exercise discretion under 35 U.S.C. § 325(d), nor should it include arguments that an alleged teaching is not new.

Generally, a requester may not file a paper in response to the patent owner’s pre-order paper, although exceptions may be granted in some cases, such as to address alleged misrepresentations of fact or law. If a requester believes that an exception applies, it may file a responsive paper accompanied by a grantable petition under 37 C.F.R. 1.182 and the accompanying fee. A requester’s responsive paper is limited to 10 pages and must be compliant with the requirements of 37 C.F.R. 1.52.

Both patent owner pre-order papers and requester responsive papers must be served in the manner provided by 37 CFR 1.248.

Timing

A patent owner’s pre-order paper must be filed as soon as practicable, but in no case later than 30 days from the date of service of the request for EPRx on the patent owner. Requester responsive papers, if filed, must be filed within 15 calendar days from the date of service of the patent owner pre-order paper. These time periods are not extendable.

Waiver of existing rules

The Office is automatically waiving the provisions of 37 C.F.R. 1.530(a) (“Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520…”) and the second sentence of 37 C.F.R. 1.540 (“No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte reexamination requester pursuant to § 1.535 will be considered prior to examination.”). The memo explains that, in extraordinary situations, the Director may waive certain regulations that are not requirements of statute and cites the increased volume of EPRx filings and the need to obtain information from patent owners prior to SNQ determinations as necessitating these waivers.

Treatment of patent owner pre-order papers

The Office will review the request for EPRx and the contents of any patent owner pre-order paper and requester responsive paper, after which it will determine whether an SNQ is established. If no SNQ is established, the Office will not order EPRx. If an SNQ is established, the Office will order EPRx. The existing guidance in Manual of Patent Examining Procedure §§ 2216 and 2242 that an SNQ must be based on new teachings remains in effect. If the Office orders EPRx, the patent owner can maintain and expand arguments from its pre-order paper in a patent owner statement under 37 C.F.R. 1.530 or in response to an office action, if desired.

Takeaways

The new pre-order paper gives patent owners a valuable opportunity to address arguments made in EPRx requests at an earlier stage than was previously possible. It is likely to be an important tool as patent owners attempt to avoid reexamination being ordered and thereby avoid the costs and risks of a full EPRx proceeding.

Even if EPRx is ordered, a patent owner’s pre-order paper can still help shape the examiner’s interpretation of claim terms and the prior art in the first office action. This may benefit patent owners significantly, given that most EPRx proceedings involve only one non-final office action.

The new pre-order paper provides advantages for patent owners compared with patent owner statements filed after the grant of EPRx.

• First, the pre-order paper allows the patent owner to influence the initial SNQ determination instead of arguing later in a patent owner statement against a position the examiner has already adopted.
• Second, the pre-order paper process limits the response by the requester much more than patent owner statement procedures. Patent owners typically avoid filing patent owner statements because such filings open the door for requesters to submit new arguments and evidence on “any issue appropriate for reexamination” with no page limits. MPEP § 2251. By contrast, after a new pre-order paper is filed, the requester must justify the need for a response as an exception (e.g., to address alleged misrepresentations of fact or law), and the requester’s response is limited to 10 pages.