The U.S Patent and Trademark Office’s (USPTOUnited States Patent and Trademark Office. See also PTO.) Advance Notice of Proposed Rulemaking (ANPRM) has spurred a range of commentary and criticism—mostly the latter—from current and former members of Congress, former USPTOUnited States Patent and Trademark Office. See also PTO. officials, the private sector, and experts across the US patent landscape. The lengthy rulemaking proposal includes a wide range of sweeping changes, many of which appear to contradict the America Invents Act, so it is understandable that some components have received less attention than others. One topic that has flown somewhat under the radar, and deserves further discussion, are changes related 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. reexaminations.
The ANPRM proposes two primary changes related 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.
First, the ANPRM suggests taking away 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.) petitioner’s ability to request a later 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. Specifically, the ANPRM proposes “requiring petitioners to file a stipulation that neither they nor their privy or real parties have filed prior post-grant proceedings (PGRs, IPRs, CBMs or 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) on the challenged claims; and that if their post-grant proceeding is instituted, neither they nor their privy or real parties in interest, will challenge any of the challenged claims in a subsequent post-grant proceeding (including PGRs, IPRs and 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).”
When Congress wrote 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. and created 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. trials, they knew how to set limits on what proceedings a petitioner could pursue. These rules appear in 35 U.S.C. § 315 and § 325. Congress was quite clear about when a petitioner was barred from pursuing an IPR—when they had previously filed a civil action challenging the patent, or after a final written decision on that patent that the petitioner was involved in. Litigation other than a civil action challenging the patent? Not on the list. 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? Also absent from the list. Congress set the scope of what conduct would bar petitioners from filing 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., and the Director shouldn’t be trying to expand that list in order to protect invalid patents.
And that’s all that’s needed—if the petitioner 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. wins, then obviously there’s no need for them to request 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. reexam. And if the petitioner loses, then they’re barred from seeking 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 on any issue the petitioner raised or could have raised 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.. So the only area in which a petitioner might request a reexam is if either they do it 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 pending, or if they later find new and unrelated art they couldn’t previously have reasonably located which is sufficient to raise a new question regarding whether the patent is valid.
Congress thought of the simultaneous request issue, though. In § 315(d) and § 325(d), Congress said “if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.”
In other words, this provision is totally unnecessary. It either protects a patent that shouldn’t be valid, by blocking a future 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 on newly discovered art, or it’s just unnecessary because the Director can handle the 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 whatever way they feel is appropriate. But Congress assigned that responsibility to the Director, not to petitioners, and the Director should not seek to avoid political accountability for their decisions in this way.
Second, the ANPRM seeks to further expand the Director’s discretion to deny IPRs, to include cases where the USPTOUnited States Patent and Trademark Office. See also PTO. has previously adjudicated a patent claim’s validity through 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. After a discussion of parallel and prior district court cases that states “changes under consideration would provide that prior final adjudications by a district court or by the Office in 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. post-grant proceedings upholding the validity of claims that substantially overlap the challenged claims will result in discretionary denial” (except in in instances where additional standing requirements are met), the ANPRM goes on to say that “the Office is also considering whether to extend this proposal to including prior adjudications of validity through 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 requested by a third party other than the patent owner or the patent owner’s real party in interest or privy.”
This is, in essence, an expansion of the USPTO’s failed NHK–Fintiv rule and is incompatible with current law. Again, the statute indicates that Congress considered cases where a petition for 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 filed after 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, noting that “if another proceeding or matter involving the patent is before the Office” then the USPTOUnited States Patent and Trademark Office. See also PTO. may provide for “the stay, transfer, consolidation, or termination of any such matter or proceeding.” The law is plain that IPRs may be filed after 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 on the same patent, with the Director retaining authority to address the parallel proceedings in an accountable fashion.
In addition to being an overreach of agency power, some experts have smartly pointed out that the proposed changes to 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 could also open up a dangerous new loophole. 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 can be filed anonymously. As a result, sophisticated non-practicing entities (or any other patent owner who wished to game the system, or even the patent owner themselves) could purposely file a poor-quality 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 petition. Under the new rules, the USPTO’s validity adjudication based on that poor-quality 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 petition would then protect the patents in question from further post-grant scrutiny. This isn’t a new point—I made this point when testifying to Congress about the STRONGER Patents Act, which had a similar provision barring IPRs based on proceedings filed by other parties. And you can go even further back—Thomas Jefferson explained why this sort of provision is a bad idea in 1791!
For an agency that is seeking to make rules consistent and discourage attempts to game the system, this appears to be a significant vulnerability.
The more you peel back the ANPRM’s layers, the more problems you find. 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 hasn’t been the largest topic of discussion to date, but it deserves attention alongside issues like new standing requirements and higher review thresholds.
