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.  While I wrote about those changes previously, the same rules package includes proposed changes to the ex parte reexamination rules that I write about here. The USPTO will consider written comments received by March 5, 2012.

The AIA Provisions

The proposed rules are designed to implement certain estoppel provisions of Sections 6(a) and 6(d) of the AIA:

Section 6(a) of the AIA amends 35 USC § 315 to include the following paragraph:

(e) ESTOPPEL.—
(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

Section 6(d) of the AIA amends 35 USC § 325 to include the following paragraph:

(e) ESTOPPEL.—
(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

The changes to both 35 USC § 315 and 35 USC § 325 take effect September 16, 2012, although only patents encompassed by the transitional program for covered business method patents will be subject to post grant review before March 16, 2013.

The Proposed Rules

The following rule changes would amend 37 CFR § 1.510 to implement the estoppel provisions:

1.510 Request for ex parte reexamination.
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(b) * * *
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(6) A certification that the statutory estoppel provisions of both inter partes review (35 U.S.C. 315(e)(1)) and post grant review (35 U.S.C. 325(e)(1)) do not prohibit the ex parte reexamination.
(7) A statement identifying the real party(ies) in interest to the extent necessary to determine whether any inter partes review or post grant review filed subsequent to an ex parte reexamination bars a pending ex parte reexamination filed by the real party(ies) in interest or its privy from being maintained.

These procedures are said to be similar to the certification and identification practice currently set forth in 37 CFR § 1.915 for inter partes reexamination proceedings.

Implementing The Estoppel Provisions While Safeguarding Requester Anonymity

The Federal Register Notice recognizes that a third party ex parte reexamination requester still has the option of remaining anonymous. The comments in the Federal Register Notice outline the following procedures to protect anonymity:

In order to [remain anonymous], the requester must:
(1) Submit the statement identifying the real party(ies) in interest as a separate paper;
(2) title the paper as a statement identifying the real party(ies) in interest;
(3) request in the paper that the Office to retain the paper in confidence by sealing it; and
(4) include, in a clear and conspicuous manner, an appropriate instructional label designating the statement as a nonpublic submission, e.g., NOT OPEN TO THE PUBLIC FOR OFFICE USE ONLY.

According to the comments, the USPTO will “maintain the real party(ies) in interest statement as a sealed, non-public submission.”

Stakeholders should consider whether these procedures are likely to adequately protect their anonymity.

More Efficient Alternatives?

Currently, there are more than twice as many ex parte reexamination proceedings per year as inter parte reexamination proceedings. Assuming that the number of inter partes review and post grant review proceedings will be relatively small compared to the number of ex parte reexamination proceedings, the disclosure requirement of 37 CFR § 1.510(b)(7) may be unduly burdensome to the extent that most third party ex parte reexamination requesters–and most patents–will not be involved in inter partes review or post grant review proceedings. 

An alternative (or additional) approach to the universal disclosure requirement embodied in these proposed rules might be to permit a third party ex parte reexamination requester to anonymously certify that it has not been a party or privy to any inter partes review or post grant review proceeding, unless the patent has been involved in an inter partes review or post grant review proceeding, or becomes involved in such a proceeding during the pendency of the ex parte reexamination. Only in that case would the  third party ex parte reexamination requester have to disclose its identity under new 37 CFR § 1.510(b)(7).

What Do You Think?

As note 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.