AIA Monitor

Today is the last day to submit your comments to the USPTO in response to the USPTO’s notices of proposed rule making regarding amendments to:

1. Third-party submission of prior art in a patent application,
2. third-party submission of prior art and statements by the patent owner regarding the scope of the claims in issued patents,
3. ex parte reexamination procedure and
4. implementation of the extended statute of limitations for filing a complaint against a patent attorney or agent.

Click here to see my post regarding third-party submissions in pending patent applications.  Click here to see the notice of proposed rule making regarding amendments to the rules for third-party submissions in issued patents and ex parte reexamination.  Click here to see the notice of proposed rule making regarding implementation of the extended statute of limitations for filing a complaint against a patent attorney or agent.

The USPTO proposes to amend 37 CFR §1.501 as shown here to expand the information that can be submitted post grant to include statements made by the patent owner before a federal court or the USPTO regarding the scope of any claim in a patent in order to implement the corresponding amendment to 35 USC §301 under the AIA.

The amendments to 37 CFR §1.501 closely track the wording of 35 USC §301 as amended, except that the USPTO proposes that the third-party submitter serve the information on the patent owner.  This may discourage the making of such submissions by anonymous third-parties due to the risk of compromising anonymity and the additional expense of service.

Since the apparent intent of Congress in amending 35 USC §301 is to encourage third-party submissions, the service requirement seems to be somewhat contrary to that intent.  An alternative would be for the USPTO to send out a notification to the patent owner of record that a submission has been made, advising that the details may be found in the electronic file history of the patent.

35 USC §301(d) as amended under the AIA limits the use of third-party post-grant citations to proceedings initiated under §304 (initiation of ex parte reexamination), §314 (initiation of inter partes review) and §324 (initiation of post-grant review).  The USPTO proposes to amend 37 CFR §1.510(b)(2) as shown here to allow for comment on a citation of claim scope statements by patentee submitted under 37 CFR §1.501 in a request for ex parte reexamination.  The requirement that the requestor express a position with regard to claim interpretation appears to be premature as appears to be acknowledged in proposed amended 37 §1.515, discussed below, in which such statements are not to be considered for the purpose of determining whether to initiate ex parte reexamination.  If the examiner decides not to initiate proceedings, compliance with this requirement was wasted, which appears to be contrary to the Paperwork Reduction Act.

New 35 U.S.C. 315(e)(1) and 325(e)(1) under the AIA include estoppel provisions which bar a request for ex parte reexamination (or maintenance of an ex parte reexamination) by a third-party requester, the requester’s real party(ies) in interest, or a privy, where the requester petitioned for an inter partes review or post grant review of a claim in the patent that resulted in a final written decision with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review or post grant review. The USPTO proposes to amend 37 CFR §1.510(b) to add subparagraph (6) requiring certification that the request for ex parte reexamination does not violate the foregoing estoppel requirement and subparagraph (7) requiring submission of identifying information regarding the real party in interest to allow the USPTO to check whether estoppel requirements are being met.  Identification of the real party in interest under subparagraph (7) seems to be unnecessary if the USPTO intends to rely on the certification under subparagraph (6).

The USPTO proposes to amend 37 CFR 1.515 as shown here to make clear that any statement regarding claim scope submitted under 37 CFR §1.501(a)(2) will not be considered until after ex parte reexamination has been initiated.  This amendment is complemented by the proposed amendment to 37 CFR §1.552 shown here in which the USPTO states that such statements may be relied upon once ex parte reexamination proceedings have been initiated.

As mentioned above, it does not seem to make sense to require submission of that statement under proposed amended 37 CFR §1.510(b)(2) only to have it ignored at the request stage.

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This is your chance to influence the development of the rules implementing the AIA. The USPTO appears to be sincere in its willingness to take every comment into consideration.  I encourage you to submit your comments to the USPTO.

To submit comments regarding proposed amendments to the rules for third-party pre-grant submissions, use e-mail address preissuance_submissions@uspto.gov.

To submit comments regarding the proposed amendments to the rules for third-party post-grant submissions and ex parte reexamination, use e-mail address post_patent_provisions@uspto.gov.

To submit comments regarding the proposed amendments to the rules relating to the statute of limitations for filing a complaint against a patent attorney or agent, use e-mail address OED_SOL@uspto.gov.