On April 25, 2011, the USPTO published a Notice of Public Meeting to discuss proposed changes to reexamination practice. The proposed changes are the latest in an ongoing and largely successful effort by the USPTO to improve the pace of reexamination proceedings while still maintaining quality. The current proposals are unrelated to patent reform legislation that is pending before Congress.
Although the USPTO has not yet promulgated new rules, it has broadly proposed changes for both ex parte and inter partes reexamination proceedings. Some of the proposed changes would be fairly significant departures from current practice, while some would be relatively minor.
The most significant change from current practice would be the move to a “representative rejection” approach. Under current practice, Examiners review all proposed rejections that are based on at least one reference that raises a substantial new question of patentability (“SNQ”). The “representative rejection” approach, in contrast, would allow an Examiner to find that one proposed rejection in a Request for Reexamination is representative of other proposed rejections, in the sense that if the one rejection fails, all others would fail as well. However, if the representative rejection is overcome during the proceeding, the Examiner would be required to revisit the other rejections to determine whether any other rejection could be sustained against the claims.
Reexamination Requesters and Patent Owners would have the right to comment on the appropriateness of the chosen rejection(s), but the designation of a rejection as representative would not be petitionable. Non-chosen rejections would not be waived for the purposes of appeal. If this change is adopted, Requestors may adopt their drafting styles to meet the new practice.
The proposed “representative rejection” approach clearly has the potential to significantly reduce Examiner workload, and in that sense could be a major step forward. At the same time, it will create different incentives for Examiners, making the net effect somewhat unclear.
For example, it is unclear whether there would be more or less incentive to allow claims over the representative rejection. There could be more incentive for allowance, because the Examiner already has found that all other rejections are cumulative, and may not intensively revisit that finding. On the other hand, if significant effort is required to revisit the finding of representativeness, then there could be an incentive to maintain the rejection over the representative claim.
Treatment of “Cumulative” Substantial New Questions of Patentability (SNQs)
A similar change would allow Examiners to find that SNQs detailed in a Request for Reexamination are cumulative of one another. SNQs would be cumulative if they are based on the same new technological teaching, even if they are based on different publications. An Examiner would be allowed to select representative rejections for each set of cumulative SNQs.
This proposed change could dovetail well with that of the “representative rejection” approach, but it is not clear why the USPTO is separately proposing a change to the treatment of SNQs. Notably, a finding to adopt or not adopt a SNQ can affect the scope of the reexamination proceedings and the ability to appeal certain issues. In contrast, the adoption or non-adoption of proposed rejections does not significantly affect procedural rights. Presumably, an SNQ that is cumulative of an adopted SNQ is deemed to be adopted, but the Notice is not entirely clear on this point.
Requester Declaration Evidence
A third relatively major practice change would limit Requester declaration evidence in inter partes reexamination proceedings to the Request for Reexamination (with some exceptions). Currently Requesters can submit new prior art only under the conditions set forth in 37 CFR § 1.948, but declaration evidence can be freely submitted with comment filings any time prior to the Action Closing Prosecution.
The proposed changes also would require that Patent Owners explain how any claim amendment renders the claims patentable in light of an SNQ. This is not a real change, inasmuch as it has been required in ex parte reexamination for a long time, and in inter partes reexamination more recently. It is a controversial measure, however, because of the relatively free wording of the inter partes amendment right (35 USC § 314(a)):
(a) . . . In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.
as compared to the ex parte amendment right (35 USC § 305):
. . . In any reexamination proceeding under this chapter, the 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 under the provisions of section 301 of this title, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.
Inter Partes “Final Office Actions”
Another major change would be the merger of “Actions Closing Prosecution” and “Right of Appeal Notices” in inter partes reexamination proceedings, creating a single “Final Office Action,” similar to ex parte reexamination and application prosecution practice.
Waiver of Patent Owner’s Statement
The last change of significance would be the modification and enshrinement into regulation of the current ex parte reexamination pilot program allowing waiver of the Patent Owner’s statement in response to the decision ordering ex parte reexamination. Currently, Patent Owners have the right to file statements responding to the Office’s decision to grant ex parte reexamination. Under the current pilot program, the USPTO will call Patent Owners and ask whether the statement will be waived.
Under the proposed change, if the Patent Owner refuses to waive the statement, the USPTO will be able to issue a first action on the merits together with the decision granting reexamination. This proposed change is somewhat odd, given that the Patent Owner will have no time to review the decision granting reexamination before being asked to waive the statement.
The Notice outlines a number of additional, relatively minor proposed changes.
- Reexamination Requesters would be required to separately explain the newness of each SNQ relative to other prior examinations.
- A Request for Reexamination would have to explain how to apply the prior art to each claim limitation.
- Patent Owner evidence would be limited to the response to the first Office action (with some exceptions).
Each of these proposed changes is in line with current practices under the current rules, although they have not always been strictly enforced.
While it is difficult to evaluate the proposed changes without specific regulatory language to consider, the proposed changes as a whole seem likely to further improve the pace of the reexamination process.