At the House Judiciary Committee’s IP Subcommittee hearing on sovereign immunity, Chairman Issa had a simple request for Phil Johnson, one of the witnesses—to, for the record, “look at the various off-ramp possibilities” for PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. proceedings. An off-ramp is a way for a patent owner to take their patent and amend it in front of a patent examiner, instead of defending the validity of their claims in an inter partes review (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.).
Given the factual errors I found in Mr. Johnson’s testimony, I decided to take Chairman Issa up on his request and look at off-ramps in PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. proceedings. Not a new off-ramp—the ones that already exist and are already being used.
There Are Actually Multiple Off-Ramp Options
To start, there are multiple existing ways to take a patent out of IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. Which one a patent owner selects may depend, but a patent owner has the option of filing a reissue application, an ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, or a supplemental reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new. (If there’s another patent application in the same family pending, they could also file a continuationA second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or granted. Continuations are unique to the U.S. and are criticized for giving applicants endless opportunity to wear down patent examiners. See Lemley and Moore, Ending the Abuse of Continuation Practice., but that option won’t always be available.)
Each has a different role to play.
A reissue is when a patent owner says “there is something substantively wrong with my original patent, and I want to correct it.” At the outset of a reissue, you concede that there’s an issue with your patent, and that you want to correct it via new prosecutionPatent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO.. Effectively, a reissue is a way to reopen prosecutionPatent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO. of the original patent in exchange for surrendering the original patent.
Ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, in contrast, is when you present the Patent Office with new prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. that you think presents a patentability issue and ask the PTOPatent and Trademark Office, informally used interchangeably with USPTO. to decide if there’s a “substantial new question of patentability” raised by the new prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed.. If there is, you enter reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new; otherwise, you don’t. Unlike reissue, this is not conducted in the same way as original prosecution—you don’t even write your amendments to claims in the same format. But also unlike reissue, the portions of your claims that you haven’t changed aren’t re-reviewed. Instead, the focus is on amended claim language and how the amended claim overcomes the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed..
Finally, supplemental examination is a new procedure added in the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.. In supplemental examination, similar to ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, you submit new prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. to the Patent Office and ask them to consider it. If they determine that the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. raises a substantial new question of patentability, an ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new is initiated. This sounds a lot like ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, but supplemental examination has one advantage that no other post-grant procedure has—art submitted via supplemental examination cannot be used to allege a patent is unenforceable due to inequitable conduct.
So, we have three different off-ramp options, all of which already exist, and all of which are already being used.
What Happens When A Patent Owner Takes An Off-Ramp?
There are three possible paths.
- The IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. can go ahead, while the off-ramp is stayed.
- The off-ramp can go ahead, while the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. is stayed.
- Both can go ahead at the same time.
In order to understand which path is taken and why, I took a look at the PTAB’s published decisions regarding requests to stay a parallel proceeding in an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. I located 64 determinations on stay requests. (There are a few more but they are temporary determinations or requests for additional briefing.) Of these 64 determinations, 25 were initiated by petitioners, 14 by patent owners, and 25 by the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. sua sponte.
I can sum up the PTAB’s general rule in two sentences: if the off-ramp pertains to the same claims and art as the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., it will probably be stayed. If they cover different claims, both will likely proceed concurrently.
The PTAB’s general rule also provides clear guidance for how a patent owner can take an off-ramp to amend their claims; file a reissue application, and then either settle or request adverse judgment in the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. The IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. will terminate, and the reissue will proceed, allowing the patent owner to make substantive amendments. As an alternative option, the patent owner can file a supplemental reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new request. Because supplemental reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new cures inequitable conduct, something an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. cannot do, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. has disfavored staying supplemental reexaminations to avoid prejudice to the patent holder’s rights. But in either case, if the patent owner wants to escape the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. and amend their claims, they can already do so—they just have to give up their current claims, in favor of amending their claims, in order to guarantee that the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. won’t continue.
Patent Owners Have Taken These Off-Ramps At Least 50 Times
Those 64 decisions on stays were found using Docket Navigator. But they’re not the only cases where an off-ramp proceeding was requested while an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. was going on. In a number of cases, the off-ramp was taken and no stay was ever requested or decided on.
To find those other cases, I turned to another tool—Google’s BigQuery tool, along with their “patent public data” dataset. This tool is publicly available and the first 1 TB of queries each month is free. I’m excited about the potential of this kind of data being publicly available in a form that’s easy to query and analyze. For each search below, I’ve included my query parameters so you can reproduce my data.
First, I looked at how many patent owners have filed for reissues after an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. was filed. There are 57 unique reissue/IPR pairs (i.e., if there are two IPRs on the same patent and a reissue was filed, there are two reissue/IPR pairs), representing 45 unique reissue filings on 40 different patents.
[expand title=”Reissues”]
#standardSQL
SELECT parents.parent_application_number, parents.application_number, trials.TrialNumber
FROM ((`patents-public-data.uspto_oce_pair.continuity_parents` parents
INNER JOIN `patents-public-data.uspto_ptab.trials` trials ON parents.parent_application_number = trials.ApplicationNumber)
INNER JOIN `patents-public-data.uspto_oce_pair.application_data` appdata ON appdata.application_number = parents.application_number)
WHERE parents.continuation_type LIKE 'REI' AND appdata.filing_date > trials.AccordedFilingDate
[/expand]
Of these 45 reissue filings, 3 have issued as patents, the patent owner has decided to abandon 15, and the remaining 27 are still being examined. 18 were stayed at some point during reissue examination, but none are currently stayed.
I also looked at ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminations. While locating patent owner requested ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminations is a little harder, BigQuery again provided a starting point by searching for all ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminations that remain open.
[expand title=”Ex ParteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. – Currently Pending”]
#standardSQL
SELECT DISTINCT appdata.application_number, parents.parent_application_number, trials.TrialNumber, appdata.patent_issue_dateFROM ((`patents-public-data.uspto_oce_pair.application_data` appdata
INNER JOIN `patents-public-data.uspto_oce_pair.continuity_parents` parents ON parents.application_number = appdata.application_number)
INNER JOIN `patents-public-data.uspto_ptab.trials` trials ON parents.parent_application_number = trials.ApplicationNumber)
WHERE appdata.application_number LIKE '90%' AND patent_issue_date IS NULL
[/expand]
I could also search for matters where a reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new certificate issued after an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. was filed.
[expand title=”Ex ParteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. – Issued After IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. Filed”]
#standardSQL
SELECT DISTINCT appdata.application_number, parents.parent_application_number, trials.TrialNumber, appdata.patent_issue_dateFROM ((`patents-public-data.uspto_oce_pair.application_data` appdata
INNER JOIN `patents-public-data.uspto_oce_pair.continuity_parents` parents ON parents.application_number = appdata.application_number)
INNER JOIN `patents-public-data.uspto_ptab.trials` trials ON parents.parent_application_number = trials.ApplicationNumber)
WHERE appdata.application_number LIKE '90%' AND patent_issue_date > trials.AccordedFilingDate
[/expand]
Reviewing the results of these two searches, there have been 215 unique ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminations, although a few of them predate the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. system and are simply still pending (or marked as pending erroneously). Because an ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new can be requested by anyone, not just a patent owner, I attempted to determine which had been filed by the patent owner. Of those 215 unique ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexaminations, 11 appear to have been patent owner requested in response to an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.. Several were actually requested after an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. was settled, in order to confirm the patentability of the claims over the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed.. Others successfully continued in parallel to the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected., dealing with additional claims.
The Off-Ramp Is Already Built—But Patent Owners Don’t Want To Use It
Patent owners complain that they want to amend their patents and the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. won’t let them, and that they don’t want to re-prosecute their patents in front of the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.. But this data shows that when a patent owner wants to take an IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. off-ramp, they can; they simply need to file for a reissue or supplemental reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new and terminate the IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. via settlement or adverse judgment.
So the next question is “if these off-ramps to amendment and prosecutionPatent prosecution is the process of applying for a patent, along with any further proceedings before the USPTO. exist, why don’t patent owners take them?”
One reason might be a lack of awareness that they do exist, or a lack of confidence that they’ll be able to take advantage of them. However, the options clearly do exist, and when a patent owner requests cancellation of claims in order to pursue amendments in reissue or reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. has never rejected that request. (In one instance, the patent owner attempted to avoid the effects of cancellation in their request; the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. rejected the request until the objectionable language was removed, and then promptly granted the request.)
But the other, bigger reason is intervening rights, the concept that when a claim is amended after issue, actions taken in the intervening period between issue and amendment are no longer considered infringing. That’s because, as a matter of fairness and due process, no one can be held liable for infringing a claim that didn’t exist at the time of infringement. But intervening rights aren’t unique to IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.; they’re effectively required as a matter of due process. Any post-issuance amendment, by any mechanism, is going to require intervening rights. Any off-ramp is going to have this due process toll associated with it.
And as I wrote in response to the House Judiciary Subcommittee hearing back in July, this means that amending claims involves the patent owner giving up past damages for the amended claims. And that, not the PTAB’s rulings on amendments, is a big reason that patent owners don’t even try to amend claims in IPR—they don’t want to give up past damages. They’d rather take a risk that their patent, as drafted, is invalid.
There’s no need for a new off-ramp. The ones we already have could handle as much traffic as patent owners want to send their way.
