On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent. The USPTO will consider written comments received by March 5, 2012. (The same Federal Register Notice also sets forth proposed rules to implement some of the estoppel provisions of the new inter partes review and post-grant review proceedings that I will address in a separate article.) 

The AIA Provisions

The proposed rules are designed to implement Section 6(g) of the AIA, which provides:

(g) CITATION OF PRIOR ART AND WRITTEN STATEMENTS.—
(1) IN GENERAL.—Section 301 of title 35, United States Code, is amended to read as follows:

§ 301. Citation of prior art and written statements
(a) IN GENERAL.—Any person at any time may cite to the Office in writing—
(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or
(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.
(b) OFFICIAL FILE.—If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.
(c) ADDITIONAL INFORMATION.—A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.
(d) LIMITATIONS.—A written statement submitted pursuant to subsection (a)(2), and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written statement or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude information that is subject to that order.
(e) CONFIDENTIALITY.—Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.

This section of the AIA takes effect September 16, 2012, and will apply “to any patent issued before, on, or after that effective date.”

The current version of 35 USC § 301 provides for the submission of prior art only:

Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent. If the person explains in writing the pertinency and manner of applying such prior art to at least one claim of the patent, the citation of such prior art and the explanation thereof will become a part of the official file of the patent. At the written request of the person citing the prior art, his or her identity will be excluded from the patent file and kept confidential.

The Proposed Rules

The proposed rules would amend 37 CFR § 1.501 to read as follows:

Citation of prior art and written statements in patent files.
(a) Information content of submission:
At any time during the period of enforceability of a patent, any person may file a written submission with the Office under this section, which is directed to the following information:
(1) Prior art consisting of patents or printed publications which the person making the submission states to have a bearing on the patentability of any claim of the patent; or
(2) Statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. Any statement submitted under this paragraph must be accompanied by any other documents, pleadings, or evidence from the proceeding in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to an applicable protective order. Submission of a statement of the patent owner made outside of a Federal court or Office proceeding and later filed for inclusion in a Federal court or Office proceeding is not permitted by this section, and such a submission will not be entered into the patent file.
(b) Explanation included:
A submission pursuant to paragraph (a) of this section:
(1) Must explain in writing the pertinence and manner of applying any prior art submitted under paragraph (a)(1) of this section and any written statement and accompanying information submitted under paragraph (a)(2) of this section to at least one claim of the patent, in order for the submission to become a part of the official file of the patent; and
(2) May, if the submission is made by the patent owner, include an explanation of how the claims differ from any prior art submitted under paragraph (a)(1) of this section or any written statements and accompanying information submitted under paragraph (a)(2) of this section.
(c) Reexamination pending:
If a reexamination proceeding has been requested and is pending for the patent in which the submission is filed, entry of the submission into the official file of the patent is subject to the provisions of §§ 1.502 and 1.902.
(d) Identity:
If the person making the submission wishes his or her identity to be excluded from the patent file and kept confidential, the submission papers must be submitted anonymously without any identification of the person making the submission.
(e) Service of the submission:
A submission made under this section must reflect that a copy of the submission has been served upon the patent owner at the correspondence address of record in the patent, in accordance with § 1.248, or that a bona fide attempt of service was made. A submission that fails to include either proof of service or a sufficient explanation and proof of a bona fide attempt of service will not be entered into the patent file, and will be expunged if inadvertently entered.
(f) Consideration of statements of patent owner:
Statements of the patent owner and accompanying information submitted under paragraph (a)(2) of this section shall not be considered by the Office for any purpose other than as provided for in 35 U.S.C. 301(d). If  reexamination is ordered, the patent owner statements submitted pursuant to section 301(a)(2) will be considered when determining the scope of any claims in the patent subject to reexamination.

These proposed amendments to 37 CFR § 1.501 reflect the new ability to submit “claim scope statements” in addition to prior art, and related provisions of the amendments to 35 USC § 301.

The proposed rules also would make the following changes to 37 CFR §§ 1.510, 1.515, and 1.552 to permit the consideration of claim scope statements in ex parte reexamination proceedings that have been ordered, but not permit their consideration when deciding whether to order an ex parte reexamination:

1.510 Request for ex parte reexamination.
* * * * *
(b) * * *
(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement and accompanying information of the patent owner submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.
* * * * *

§ 1.515 Determination of the request for ex parte reexamination.
(a) Within three months following the filing date of a request for an ex parte reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications. A statement and any accompanying information submitted pursuant to § 1.501(a)(2) will not be considered by the examiner in the examiner’s determination on the request. The examiner’s determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be mailed to the patent owner at the address provided for in § 1.33(c) and to the person requesting reexamination.

§ 1.552 Scope of reexamination in ex parte reexamination proceedings.
* * * * *
(d) Any statement of the patent owner and any accompanying information submitted pursuant to § 1.501(a)(2) which is of record in the patent being  reexamined (which includes any reexamination files for the patent) may be used after a reexamination proceeding has been ordered to determine the proper meaning of a patent claim when applying patents or printed publications.

My Preliminary Comments

Several points raised in the Federal Register Notice and reflected in the proposed rules caught my attention.

First, the USPTO is interpreting the amendments to 35 USC § 301 as permitting the citation of statements that the patent owner made in a Federal court or USPTO proceeding, and as not permitting the citation of statements that the patent owner might have made outside of such a proceeding, even if such statements are made of record in the proceeding by another party. The USPTO cites the following legislative history in support of this interpretation:

This addition will counteract the ability of patent owners to offer differing interpretations of prior art in different proceedings.
H.R. Rep. No. 112–98, Part 1, at page 46 (2011).

Stakeholders should consider whether they agree with this interpretation of the statute.

Second, the USPTO is interpreting the reference in 35 USC § 301 to a “Federal court” to include the U.S. Court of International Trade.

Stakeholders should consider whether they agree with this interpretation of the statute.

Third, the USPTO is interpreting the reference in 35 USC § 301 to proceedings under 35 USC § 314 as referring to inter partes review proceedings, but not in inter partes reexamination proceedings. As such, the USPTO is interpreting 35 USC § 301 as permitting the use of  claim scope statements in inter partes review proceedings, but not in inter partes reexamination proceedings that may be ongoing when the amended version of 35 USC § 301 takes effect on September 16, 2012. The USPTO bases this interpretation on the fact that the amendments to 35 USC § 314 that replace inter partes reexamination proceedings with inter partes review proceedings also take effect on September 16, 2012.

Stakeholders should consider whether they agree with this interpretation of the statute.

Fourth, the USPTO is interpreting 35 USC § 301(d) as not permitting the consideration of “claim scope statements” when the decision whether to order ex parte reexamination is being made. In particular, the USPTO interprets this language

in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324

as providing that a claim scope statement “may be relied upon in the ex parte reexamination proceeding only after reexamination has been ordered.” The comments in the Federal Register Notice explain that the USPTO will use “the broadest reasonable interpretation of the claims” when deciding whether to order an ex parte reexamination.

Stakeholders should consider whether they agree with this interpretation of the statute.

Finally, the proposed rule imposes a different “notice” requirement than the current rule, even though the statute does not appear to impose any notice requirement.  The Federal Register Notice includes a lengthy discussion of what is required to establish that “a bona fide attempt of service was made,” including a statement of facts and supporting evidence such as “certified/registered mail receipts, cover letters, [and] telegrams [!].”  The Federal Register Notice also suggests that a patent owner adopt a “best practice” of monitoring the image file wrappers of their patents on the USPTO website in order to “be aware of all information added to its patent files.”

Paperwork Reduction Act Estimates

The Federal Register Notice includes the following estimates under the Paperwork Reduction Act:

Estimated Number of Respondents: 1,000 per year

Estimated Time Per Response: 10 hours

Estimated Total Annual Respondent Burden Hours: 10,000

Estimated Total Annual Respondent Cost Burden: 3,400,000

Stakeholders should consider whether they agree with these estimates.

What Do You Think?

As noted above, the USPTO will consider written comments on this proposed rulemaking received by March 5, 2012. Members of the public can learn more and voice their comments at one of the sessions of the USPTO’s AIA roadshow being held across the country between February 17 and March 7.